Aaron Keller, Principal at Capsule

From our inception, Capsule has been seeking a definition of good design. You may even say we’ve been a bit obsessed.


If we can define what good design is, we may be able to more readily identify bad design. It means saying one thing is good and one bad, and be able to provide evidence. But, much of our community sees shades of grey and therefore most are unable or unwilling to say "that’s bad design."

Yet, there are good signs on the importance of good design:

One: We’ve seen design institutions in the UK use a stock portfolio approach to show the value of design driven companies.

Two: We’ve seen companies like P&G, Target, Apple and Philips proclaim the importance of design and even incorporate it into their strategic platform.

Good design is valuable, but we are yet unwilling to call out bad design.

Why does Capsule care?

We spend a fair amount of our waking hours coaxing people see the value of design. Directly translated: how much design is worth to your business. Some say this is moving design closer to a profession, which is an amusing phobia because much of the product and graphic design world came from the profession of architectural design. In contrast, we see this move as a great method to distinguish between someone using the word "design" and someone having permission to practice in the field of design. Directly translated: removing the unprofessional behaviors we all know exist.

Why should a member of the intellectual property community care?

There is likely a direct correlation between the value of design and how much a client is willing to pay to protect it.  We’ve seen the rise of "design thinking" to strategy conversations and hopefully it will be a leadership position in many companies. Directly translated: we design the intellectual property you protect, and we believe good design creates more economic value for everyone attached to it.

What can you do?

We propose three simple things you can do to get the good design ball rolling.

One: seek out design partners who believe in the profession of design and the economic and social value it offers our world.

Two: speak up for good design and call out what you believe to be bad design when it happens. Our industry is (unprofessional) not as likely or maybe unable to see the forest from the trees.

Three: vote Jank or Swank.

Yes, you read it right. Vote "swank" good design and vote "jank" for bad design.

We have been speaking on this topic for years. We have found it removes the intellectual challenges and makes it easier to just vote with your gut.

VOTE HERE and in this case, vote often.

Look to the right when you reach the blog.

More detailed definition.

Jank [def]: broken, superfluous, or meaningless; stupid or ridiculously moronic; bootleg or of questionable quality.

Swank [def]: combine swagger and lank; extremely tall and extremely long limbs compared to your torso while still having great style and confidence; very classy, tasteful; extremely cool; dope.

Aaron Keller, Principal, Capsule

We partook in the sharing and enjoyed the conversations.

The FUSE Conference, is not about splintering. It also isn’t about specialization or close-minded thinking. FUSE is about the disciplines of design, marketing, brand and research being brought together in a way that makes for a more engaged consumer, audience or customer. We partook in this fusion of ideas, conversations and felt right at home with the idea. Capsule was framed this way since our inception, hence we believe in Duets and the understanding around creativity and the law. This conference was like wading into a warm familiar body of water, something we know as well as Mr. Baird knows his hot tub. Our participation was both physical and digital, we wrote for their blog, tweeted and met with friends, colleagues and potential clients.

You can enjoy the topics discussed on their blog post or Twitter feed (#FuseDesign), even after the event. The posts are a great way to catch up on a world that took place while you had your nose deep into other work. You’ll find some interesting perspectives and perhaps some thoughts you’ve heard before. On a whole, you’ll get a feel for the energy around a conference like FUSE.

So what? Who doesn’t want a better designed world? This may be true, but we wonder how many people are changing behaviors in this direction. For instance, if you’re an IP lawyer, have you ever considered attending the FUSE Conference? We would suggest anyone in the practice of protecting original content (read Intellectual Property) spend some time with those who create it. The FUSE Conference is a high-level blend of people who design content for clients. We believe you’ll walk away inspired, at a minimum, and highly connected with people creating tomorrows design content on the maximum side.

We would like to reach out to those thinkers who believe in the idea behind FUSE and ask them to connect with Capsule. We enjoy connecting with like-minded individuals and find the digital mediums are great to start a conversation that will eventually result in a handshake and eye-to-eye conversation. Reach out to us and we’ll share more about FUSE and the effort we made to digitize a conference experience through the social tools available to us. If it takes you a few minutes to craft a sentence, this digitizing approach to a conference isn’t for you. But, the conference itself is.

Thank you to Mr. Baird and the firm of Winthrop & Weinstine for promoting the fusion of creativity and the law. We believe in it. We live it.

 —Aaron Keller, Managing Principal at Capsule

The pattern of our society evolving from agrarian to manufacturing to service economy has been identified by many authors (Joseph Pine and Joe Gilmore being my favorites). Now, the next economy has been predicted to be everything from the information economy, the digital economy, the experience economy and many others. No one will know until we can look back after a few decades, so until that time we should all enjoy ourselves and make some predictions. Here is my view and prediction on the basis for our next economy. 
Design has become the word people use to describe something that is better. Sounds simple, but better is not a commodity. Better means something deserves to earn more margin. So, those of us in the design community have started to connect the subject of design with higher margins for anything. Connecting the idea of design thinking with a better product, name, logo, package, web site, or customer experience. Anything can be designed and my view is the defining element is whether someone put deliberate and thoughtful time into considering the audience, use and context.
The audience gets a fair amount of attention from segmentation of mass audiences to ethnographic studies of social groups. Use also gets a fair amount of attention, but likely isn’t as understood. How something will be used is hard to predict, consider all the uses of duct tape today, the original designer certainly didn’t consider their tape would be used to make fedora hats and wallets. Of these three, context is the least understood and leveraged. But, with all that is happening in mobile marketing the attention is coming soon to a location near you. The right consideration of these three results in something "designed." Why is this the case?
Design originates with architecture and the design of buildings. This kind of heritage means the discipline of design considers the long view. This kind of thinking has to consider use, context and audience. This kind of thinking doesn’t work as well with disposable, temporary or short term. This kind of thinking makes things better. And, as we know, just a bit better can be a really good thing in an economy where everything is being forced into a commodity position. 
Design thinking is better. The more things designed the better we will be. Consider the design of everything.
Design a better economy.

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:

The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen — and on that basis alone — concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:

Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).

I respectfully submit that these kinds of determinations — especially since they are admittedly and "necessarily subjective" — are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).

Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?

Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant’s product by the claimed trademark, given what actually appears on the specimen.

In other words, how might consumers request applicant’s sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:

  1. The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
  2. They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
  3. They form the dominant portion of the label since the design elements can’t be spoken;
  4. The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
  5. There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
  6. Consumers familiar with applicant’s products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
  7. Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).

Continue Reading Trademark Specimens of Use: A “Necessarily Subjective” Standard

Yesterday, Under Consideration’s Brand New Blog discussed the redesign of the Nickelodeon trademark. Nickelodeon has decided to drop the well known splat design that encapsulated the NICKELODEON term. As reported by Under Consideration, Nickelodeon’s “splat” has existed in one form or another for over 15 years. Although the orange “splat” has evolved over the years, it was a recognizable symbol of a Nickelodeon product. 

This leads to an important issue, designs are important branding tools. Trademark law argues that the words are the most dominant portion of a trademark because it is the element that consumers use to ask for the goods or services. However, this is not always true. Often times, the word portion of a mark is subordinate to the design component and consumers rely on the design or other matter to identify the source of the goods or services. Good examples include the Nike swoosh or the Under Armour “UA” design. But a design or non-traditional trademark does not need to reach the status of Nike of Under Armour to have a significant market affect. A good example is Christian Louboutin women’s shoes. Most people do not know the brand of any women’s shoe at first blush, but most people recognize the red sole. Well, Christian Louboutin has federally registered the red sole of these shoes. Therefore, it is important not to overlook or discount the branding power a design can have and it is worth considering the highest level of protection for this element of a trademark.

Under Consideration’s Brand New Blog has on two recent occasions commented about the trend in using white as the color for product packaging of consumable goods. Wal-Mart was the first to use this color packaging for its private label brand and the European community appears to be following suit. Using a white background has its marketing appeal, but consumers are unlikely to rely on the color white to distinguish between two different consumable goods. Additionally, it is unlikely that the user of a white background will be able to obtain a federal trademark registration for this color. However, product packaging backgrounds can be another way for companies to distinguish their products from their competitors, and it is possible to obtain a federal trademark registration for the product packaging background.

Background designs can be registered as trademarks even if they are to an extent ornamental and aesthetically pleasing. The key is whether a background design creates a commercial impression separate and apart from the other elements that appear on the product packaging. If the background design creates a separate commercial impression, it can be registered as a trademark. In fact, a background design can be inherently distinctive. In other words, consumers can immediately rely on the background design to distinguish between two sources of goods.

Unless business reasons dictate using an ordinary background, why waste an opportunity to connect with your consumer. Therefore, keep in mind that the background design of your product packaging can function as a trademark and help you further distinguish your goods from those of your competitors.