One of my passions is to find common and favorable ground between legal and marketing types.

One of the readings during week three of Seth Godin’s intensive altMBA workshop reminded me of a great example to illustrate how a valid marketing goal can align with strong legal protection.

An excerpt from Seth’s All Marketers are Liars book was part of the reading material for a project on How Organizations Change, and this portion of that excerpt made me think of trademark types:

Great stories are subtle. Surprisingly, the less a marketer spells out, the more powerful the story becomes. Talented marketers understand that the prospect is ultimately telling himself the lie, so allowing him (and the rest of the target audience) to draw his own conclusions is far more effective than just announcing the punchline.”

Trademark types can learn a valuable lesson here about the protection of traditional trademarks: Subtlety can yield immediately protectable, inherently distinctive and inherently strong marks.

We’re talking about the difference between suggestive marks on the one hand, the favored hand, and descriptive marks or generic terms on the other hand, the less favored trademark hand.

Let’s keep in mind though, when we’re operating in the realm of non-traditional marks, subtlety may not be your friend, as the story told there needs to be far more blunt, direct and obvious to build and enjoy trademark rights.

In searching our vast content on DuetsBlog, I’m reminded of something similar I wrote more than seven years ago now, and I’m not sure I can say it any better now, so here it is, again:

“We have spoken and written about not “hitting the consumer over the head” in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.”

So, some subtle stories told in a name can make powerful trademarks with a broad scope of immediate protection. And, some will still require the help of an obvious and blunt instrument.

The key is knowing the difference and when each approach is required. My fear is that the USPTO’s growing obsession with failure to function refusals (here, here, and here) and mere information refusals will begin to spill more prominently into traditional trademarks?

Does anyone else see this happening before their very eyes?

In other words, to please the USPTO, are we needing to move toward being more blunt about whether even a traditional word mark is actually designed to perform as a trademark?

Let’s hope not.

Oh, and by the way, I was speaking above with subtlety about being past the half-way point (the dip) in Seth’s altMBA workshop, so I’ll be blunt now, it is amazing, it is transformative, do it!

For those of you who have been with us since the beginning of this wonderful collaboration of legal and marketing types, known as DuetsBlog, you also know we have a mascot dubbed Duey — he’s depicted in the squirrel graphic at the top of this page. Here is his story, as told by Aaron Keller on behalf of his creative team at Capsule, who brought Duey to life.

Unsurprisingly, Duey is all about protecting his nuts and the nuts of those he cares deeply about, especially those of the clients he steadfastly protects. We have embraced the graphic as a nice metaphor of what we’re best at, but we’ve only told the complete story once before, as Duey is a relatively shy little guy, and actually we prefer to see the subtlety of the graphic communicate a metaphor instead of hitting our gifted readers over the head with a coarse tagline.

More to that delicate point, spending the week in Las Vegas — the city that knows no such thing as subtlety and proud home of the SHOT Show 2015 — has unearthed lots of blog fodder, so here’s the first we’ll share:

The harshly worded tagline reminds me of a topic we have talked about more than a few times here: The art of subtlety as compared to “hitting the consumer over the head” with an idea.

Subtlety is more often rewarded in the world of predicting the existence and scope of trademark rights, that’s one reason we favor suggestive over descriptive trademarks, and we have reminded marketing types to avoid the D-word at all cost.

Perhaps the one time when subtlety should be discarded is when you’re operating in the world of non-traditional trademarks, given the benefits of using overt “look-for” advertising.

By the way Duey, is coming up on his sixth birthday March 5th, right on the heels of his golden birthday celebration last year, any ideas on what he might enjoy doing this year?

– Mark Prus, Principal, NameFlash

Almost everyone loves a good magician. The magician’s sleight of hand technique in making a coin or playing card disappear delights us, as we usually take pleasure in being fooled in this manner. Once fooled, our brain rapidly kicks into gear and tries to figure out how he or she did the trick. Sometimes you figure it out, and then you get even greater pleasure. But even when you can’t figure it out, you are amazed!

Magic tricks only work if two things occur. First, the magician must divert your attention away from where the actual trick is happening, and second, your brain must fill in any missing information by combining what you already know with whatever you perceive at that very moment.

The science behind this “filling in process” by the brain is fascinating (read the Discover magazine article referenced at the end of this post). The sub-headline of the article says it all…“The eye and brain work in a partnership to interpret conflicting signals from the outside world. Ultimately, we see whatever our brains think we should.” 

Truth be told, the magician is not creating the illusion–your brain is creating the illusion that something has happened (when in reality the magician has done something else). Using this technique from magic can lead to powerful branding.

This “filling in” process has been shown in numerous studies to be important to generating lasting recall and favorable persuasion. If the person’s brain is engaged and filling in the gaps, then the person will remember the experience and be favorable towards it.

Let’s say you want to name a new product (or it could be a service or a company or something else). A strong name for this product would give the consumer enough information about the product so that the consumer’s brain is engaged and starts to fill in the missing information, just as it would if you were viewing a magic trick. This was validated in a study in The Journal of Consumer Research in 2005 where the investigators looked at differences in names for crayons. The findings indicate that consumers preferred “slightly ambiguous” names such as “Blue Haze” or “Alpine Snow” to plain descriptive names such as “Blue” or “White” because the engagement of the brain with a slightly ambiguous name causes the brain tries to complete the “puzzle,” which leads to stronger recall and persuasion.

A great brand name will provide some sense of perspective to the target customer and the product itself, but it won’t provide the whole story. A great name leaves enough to the imagination so your brain gets engaged in the product/name combination and makes you curious about a product and willing to investigate it further. Just as a magician would tantalize your brain with enough “facts” and cause your brain to “fill in” the rest of the story, a great brand name is magical.

What best describes your work? Inexpensive? Cost effective? Robotic? Low budget? High volume?

Or, do you deliver excellence — unique, distinctive, valuable, sculpted, tailored, and handmade  solutions with your wealth of professional skill and expertise?

If your main focus is on delivering the lowest possible cost, you best be selling a commodity.

Creating and protecting valuable intellectual property is not commodity work for assembly lines.

So, what level of craft would you say was involved in creating this chocolate-flavored tagline?

Might the answer be different depending on whether you’re a marketing or trademark type?

At least from the perspective of a trademark type, “Handcrafted in Small Batches” is hopelessly and most certainly merely descriptive of chocolates (assuming it is not deceptive or misdescriptive), which explains why the registration symbol, in this case, signifies registration on the Supplemental Register as opposed to the Principal Register.

When it comes to protecting intellectual property, creative counsel with a handcrafted approach is required, especially when corners are cut during the creation of a merely decriptive tagline.

Any predictions on how easy it will be to move the “Handcrafted in Small Batches” tagline from the Supplemental Register to the Principal Register with this kind of reinforcing merely descriptive use?

Here’s to celebrating and rewarding the handcrafted creation and protection of valuable intellectual property assets, especially those made and protected in small batches, in 2014!

 

 

 

 

 

 

 

 

A hot dog is a type of sandwich, and “footlong” denotes a type, category, or class of sandwiches (those measuring about a foot in length), making “footlong” a generic term and part of the public domain — incapable of serving as a trademark for any kind of sandwich.

This is true despite Subway’s claimed use of FOOTLONG since 1967, the more than four billion FOOTLONG sandwiches sold between 2000 and 2009, and the near doubling of annual FOOTLONG sales from $541 million to $936 million, following its highly successful $5 FOOTLONG marketing campaign which started in 2008.

Any secondary meaning in FOOTLONG that might have resulted from the extensive marketing campaign, is de facto, so it doesn’t count for distinctiveness — it doesn’t create enforceable rights, because purchasers readily understand that FOOTLONG identifies 12 inch sandwiches.

These are some of the findings and conclusions by the TTAB last week in the long-anticipated decision Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., rejecting Subway’s desire to own FOOTLONG as a federally-registered trademark for “sandwiches, excluding hot dogs.” For a more complete analysis of the 61-page decision, check out John Welch’s coverage over at the TTABlog.

If you’ve followed my writing on the subject, you’ll fully appreciate that the TTAB’s decision finding FOOTLONG generic for sandwiches — even if hot dogs are excluded — is not surprising:

The decision was written to be bullet-proof on an appeal that the TTAB assumes Subway will file. So, for the sake of completeness, the TTAB decided that even in the unlikely event it is wrong about genericness and FOOTLONG is actually descriptive, the evidence still does not show acquired distinctiveness. If there is an appeal it will be interesting to see whether Subway pursues a de novo federal district court trial (which would permit the introduction of new evidence) or whether it takes the existing record up to the Court of Appeals for the Federal Circuit (CAFC).

My prediction is it won’t make a difference, the result will be the same, FOOTLONG is generic for sandwiches, just like LIGHT and LITE is for beer. In my opinion, Subway’s pursuit was doomed from the start with its initial specimen of use from November 2007:

As the TTAB noted: “If the above-noted specimen shows trademark use of “Footlong,” then it must also show trademark use of 6″ Sub and Wrap.  As used in the specimen all three terms are displayed in the same manner (font, size, color, position), and used in the same way (i.e., to identify a type of sandwich).”

Of course, as shown at the top of this post, now when you see Subway’s FOOTLONG advertising (and in-store signage) it is littered with TM notice symbols closely associated with the term FOOTLONG. I’m not sure when that tactic started, but I believe it has been going on now for at least a couple of years. I remember being struck by the tiny after-the-fact TM stickers applied to the menu signage at the Subway located in the Minneapolis – St. Paul airport when I started following the Subway trademark bullying story a few years back.

With more than 26,000 Subway locations throughout the United States, and all the advertising done on the local and national level for the largest restaurant chain in the world, I shutter to think how many errant TM symbols are swinging in the wind, must be millions upon millions.

Even if an appeal of this decision would be hopeless for Subway, it might be worth filing one to at least avoid immediately facing the decision of whether to remove the multitude of stickers and the millions of false or misleading TM notices in advertising and on signage, given the TTAB’s ruling that FOOTLONG is not and cannot be a trademark for sandwiches.

Having said that, if an appeal over-turned the genericness part of the ruling, that would avoid the need for removal, even if the lack of acquired distinctiveness portion of the decision were affirmed, since it would keep the door open for Subway proving acquired distinctiveness down the road, and surely it would be able to freely use the TM symbol while it is still making that effort.

I’m just not seeing it though, I believe the genericness ruling will stand, but what do you think?

What does Google have in common with Sasquatch? Well, perhaps one possible point of similarity is that if you mess with either, you might get yourself seriously messed up in the process.

With respect to the defensive power of Sasquatch, a local Wisconsin business success story, Jack Link’s Beef Jerky, has gotten much notoriety with its series of hilarious 30-second television commercials, featuring their own character and version of the Sasquatch who firmly retaliates when he is bullied, teased and humiliated, this golf-themed commercial being my favorite.

Admittedly Google doesn’t tip over golf carts or send irritants to the hospital, but it is predisposed to tip over your claimed trademark rights, where possible, especially if the irritant unwittingly offers them up for attack while aiming them at Google and asking for lots of money in the process. 

As you may recall, last February I discussed the Firefly Digital Inc. v. Google Inc. trademark infringement lawsuit in the context of why marketing and business types should remove the D-word from their vocabulary, and I warned that Google would not likely overlook the admission by the CEO and President of Firefly that its GADGET and WEBSITE GADGET trademarks "are descriptive of our products on many levels":

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning.

As it turns out, a couple of weeks ago, the federal district court judge assigned to the case in Louisiana, summarily dismissed all of Firefly Digital’s claims against Google, and then it went a step further and ordered the USPTO to cancel both federal trademark registrations owned by Firefly Digital –for GADGET and WEBSITE GADGET — as either generic or merely descriptive without secondary meaning (copy of decision is here).

So, after pursuing about twenty months of vigorous litigation with Google, it appears that Firefly Digital will be leaving the case with less than it brought, in more ways than one.

In the wake of all the discussion and debate over “trademark bullying,” NFIB (National Federation of Independent Businesses), the self-proclaimed Voice of Small Business, recently offered its members and followers “5 Steps to Avoid Corporate Trademark Bullying“:

  1. Do Your Homework;
  2. Choose a Descriptive Business Name;
  3. Use Common Sense;
  4. Consider Buying Intellectual Property Insurance; and
  5. When in Doubt, Consult an Attorney.

I suppose it’s kind of hard to argue, in general, with doing your homework, using common sense, buying insurance, and when in doubt, consulting an attorney, but choosing a descriptive business name to avoid a trademark conflict? That’s taking it a bit too far, don’t you think?

Actually, when you drill down below each step, there is much more to say about each of them, and I’ll make sure to do so later, but for today, I’ll focus on what I call, “dreadful Step Number 2.”

As you know, we don’t like the D-word here, and as you will recall from a couple of years ago in my prior posts, “A Legal Perspective on the Pros and Cons of Name Styles,” and “Staying on the Right Side of the Line: Suggestive v. Descriptive,” we established the strong preference for suggestive as opposed to merely descriptive names and marks, and we addressed the all-important Spectrum of Distinctiveness for trademarks:

Nevertheless, NFIB, in support of mere descriptiveness, indicates:

If you’re deciding what to name your business, you’re more likely to prevent a trademark infringement lawsuit if you pick a general name that describes your business’ services—Plumbing Contractors Inc. or Accounting Services LLC, for example—instead of something more specific. While your business name may overlap with another’s, there is less chance for them to stake a claim on those terms. Just make sure that your business name still stands out.

Putting aside the unanswered question of how a small business may hope to “stand out” if it follows “dreadful Step Number 2,” let us not forget, Subway recently convinced the U.S. Trademark Office it has exclusive rights in the term “footlong” for submarine sandwiches, claiming that it has acquired distinctiveness in the “merely descriptive” term, and is asserting those claimed rights against Casey’s General Store, among others.

If a small business really wants to have a hope for avoiding any and all possible trademark conflicts, it needs to live in the generic category (Dan’s take, here), not the descriptive one (where there is the real potential for the acquisition of exclusive rights by others and where there are naturally more legal claims that actually surprise their targets), but who wants to be generic?

I can’t and don’t embrace the message of waving the white surrender flag, conceding any hope of naming creativity or any hope of clearing and adopting a truly distinctive name or mark. Even small businesses with limited budgets can and should do better.

If a small business uses common sense, does its homework, and consults a competent and experienced trademark attorney, there is no reason to limit itself or place false hope in pursuing “dreadful Step Number 2.”

If nothing else, I think we may have found another D-word.

Hat tip to Mark Prus who flagged this topic for me and even offered up a portion of the title, minus the question mark.

Welcome to another edition of AlphaWatch (the next one in our queue), where we explore the reach of single-letter trademarks, this time focusing on the letter Q and the single-letter branding cues it might suggest to consumers:

Are you able to name the un-truncated version of this single-letter mark and brand?

My daughter could. The answer is below the jump.

Continue Reading Taking Branding Cues from Q in the Single-Letter Trademark Queue

Seth Godin’s recent post entitled Subtlety, deconstructed, struck a chord with me, and should strike a chord with all trademark types and the brand owners they represent. Here is my favorite excerpt:

Subtle design and messaging challenge the user to make her own connections instead of spelling out every detail. Connections we make are more powerful than connections made for us. If Amazon and Zappos had been called "reallybigbookstore.com" and "tonsofshoes.com" it might have made some early investors happy, but they would have built little of value.

As you may recall, I have been tough on Seth Godin’s trademark advice in the past, but I couldn’t agree more with his view set forth above on naming and building powerful consumer connections and a resulting asset of significant value, by utilizing subtle design and messaging.

We have spoken and written about not "hitting the consumer over the head" in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.

Guest Blogger Anthony Shore of Operative Words, recently wrote about the naming pendulum swinging away from arbitrary names and back toward brand names having an honest, straightforward, and even humble quality, in Truth is Stronger Than Fiction.

Another way of saying it might be: naming is going back to the basics. I recently came across a good example in Vista, California, a great pizza place called Urbn Pizza, and another in San Diego, called Basic Pizza

OK by me for the naming pendulum to swing back a bit, so long as the names suggest instead of describe. Both of these examples are probably inherently distinctive and suggestive marks, even if barely so, do you agree?

My favorite example of a great local pizza place and name is Black Sheep Coal Fired Pizza, located in the North Loop District of Minneapolis.  Black Sheep takes its pizza back to the basics while resisting the naming pendulum swing observed by Anth, settling with an uncommon and arbitrary name.