For a few months now, the Minneapolis skyway system has been flooded with a variety of fresh, creative, eye-popping advertising to promote Pepsi’s new bubly sparkling water collection:

Although not a lie (the bottles I’ve seen clearly reference Pepsi), you’d never know from this ad or the trademark registration that Pepsi is behind bubly, since an Irish entity located in Bermuda owns the mark.

Thoughts about Pepsi’s line of reasoning for having ownership rest with an Irish entity located in Bermuda? Taxes maybe?

Yet, it is clear the market knows this is a Pepsi launch, wonder what Coke, owner of Tab, thinks?

Sipping a bubbly drink, like sparkling water, necessarily has bubbles, explaining why the USPTO required a disclaimer of the word “bubbly,” even though the mark includes bubly, not bubbly.

Although it might be nice to own a standard character registration for the misspelled and un-disclaimed wording bubly, that hasn’t been attempted, as the misspelling is likely not distinctive.

Holding a word only registration for bubly doesn’t appear possible any time soon, since the double entendre is only apparent from the stylized bubly sparkling water mark, not bubly standing alone.

Double entendre? Yes, the description of the stylized mark notes the “u” in “bubly” is “depicted as a smile,” which ties into the additional meaning of “bubbly” — lively, cheerful and talks a lot.

If the words “bubbly” and “bubly” can’t be owned here, may that inspire a truncation to bub, especially given this pending intent-to-use trademark applications for bub and Bub Sparkling Water?

SaveYourAssBillboardIt has been a while since I’ve seen a billboard in the Twin Cities worth writing about, but this one engaged my attention. Let’s hope for more as our weather turns for the better.

It appears the Minnesota Department of Health is continuing its billboard campaign prodding folks to get a colonoscopy, remember these gems from two years ago?

CoverYourButtMDHAdSkirtMDHAdPullYourHeadOutMDH AdComparing the currently running “Save your Ass” billboard (there I said it) at the top of this post, to those from two years ago, illustrates the point that sequels rarely better the original.

Interesting to me is that MDH’s “Cover Your Butt” billboard uses softer words, but a harsher image, and this season it chose to flip the proposition in favor of covering the harsher word with a softer image of a playful donkey, to bring the double meaning to life.

The billboard campaign is not without controversy, so marketing types, what say you, and which of these is your favorite and why?

–Dan Kelly, Attorney

As evidenced on these very pages over the past year or so, there does seem to be a general divide between legal types and marketing types about the desirability of descriptive trademarks and brands.  This is understandable.  There is a direct tension here.  More descriptive marks and brands carry more information to a consumer and tend to be easier to market, but more difficult to protect.  Conversely, less descriptive marks and brands convey less information and require more explaining, but they are easier to protect legally.  For a new product or company, the trade off may amount to whether the company wants to spend its dollars in the marketing department or the legal department, because a savings in one place may well have a corresponding cost in the other.

One product market that seems to gravitate towards descriptive brands is the barbecue grill market.  As grilling season is upon us, one recent retail flyer advertised a full page of grills.  The brands?  AUSSIE, CHAR-BROIL, CHAR-GRILLER, GRILLPRO, SUREFIRE, and BIG STEEL KEG.  A little online shopping yields others:  WEBER, BRINKMANN, UNIFLAME, GRILLMASTER, BBQ GRILLWARE, BROIL KING, and BIG GREEN EGG.

By way of refresher, a trademark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods.  In contrast, a trademark is suggestive if it requires imagination, thought, or perception to reach a conclusion as to the nature of the goods.

Here’s my stab, admittedly subjective, of ranking the above brands from most distinctive to least distinctive on the spectrum of distinctiveness, with some comments and annotations:

  1. AUSSIE (Arguably arbitrary–suggestive insofar as Australia is associated with “barbies.”)
  2. WEBER (Arbitrary for grills–it is a surname and therefore had a hurdle to registration.)
  3. BRINKMANN (Ditto.)
  4. SUREFIRE (A possible double entendre–usually considered suggestive.)
  5. UNIFLAME (Was not refused by the US Trademark Office for descriptiveness.)
  6. GRILLPRO (Ditto.)
  7. GRILLMASTER (Ditto.)
  8. BROIL KING (Ditto–“BROIL” disclaimed.)
  9. CHAR-BROIL (Registered–admitted descriptive, but has acquired distinctiveness.)
  10. CHAR-GRILLER (Amazingly was not refused for descriptiveness.)
  11. BIG GREEN EGG (Ditto.  The applicant admitted that the grill is big, green in color, and in the shape of an egg.)
  12. BIG STEEL KEG (Currently refused as descriptive.  The examiner observed, “Applicant’s barbecues and grills are in the form of a keg and are big and made of steel.”  I could also see this application being opposed by the Big Green Egg folks.)
  13. BBQ GRILLWARE (Registered in stylized form with the words “BBQ GRILLWARE” disclaimed, essentially admitting that they are descriptive for grills.)

Despite the histories of some of these trademarks in the registration process, I would be inclined to draw a line in this list between SUREFIRE and UNIFLAME.  The four trademarks above the line being definitely suggestive or arbitrary, the rest potentially descriptive.  I freely admit room for argument here–the Trademark Office’s line for “merely descriptive” falls roughly between BROIL KING and CHAR-BROIL, though not perfectly.  This is a useful exercise to see, too, that marks falling into the “suggestive” category, while immediately protectable and registrable, are not necessarily strong, as I would argue that GRILLPRO and GRILLMASTER are fairly weak, although I can see the argument that they are suggestive and not merely descriptive.

Of course, getting a descriptive or weak suggestive mark registered is just the start.  Once registered, a trademark, especially a weak trademark, must be defended, lest it shrivel up and die.  Could any of the owners of these marks do anything to stop the market entry of, say, CHARPRO Brand grills?  (Incidentally, a name I just made up, only to find an application for it pending at the Trademark Office–honor bright!)  How about a brand called CHARCO GRILL?

Taking the positive approach, which of these represent strong brands?  I mean, “household name” kind of strong?  I’ll put my money on WEBER — and that’s about it.  CHAR-BROIL has a long history, which is possibly its only saving grace, and BIG GREEN EGG, despite accurately describing its own goods, is somewhat arbitrary as applied generally to grills and unique enough that it just may have staying power.  AUSSIE and BRINKMANN have potential strength, too.  The rest, I fear, may go up in smoke!