When ideas from different realms converge in a single moment of time, a new blog post is born.

Catcalling” — albeit a rebranded, reimagined, or redefined version of it — recently has been front and center in a political Twitter storm and remains a lightning rod in the non-stop news cycle.

So, imagine my surprise also to see the sturdy Cat construction-oriented brand calling my fashion-forward daughter to select it for her brand new, back-to-school footwear look this coming Fall:

 

Photo credit: G. Baird

This isn’t our first rodeo with Cat footwear. We previously kicked heels with my son’s steel-toe boot choice, also covering the careful timing of Cat’s truncation from the four-syllable Caterpillar.

While the brand extension from construction and earth-moving equipment to boots makes perfect sense, especially the steel-toe variety, here is the explanation for women’s casual dress shoes:

Photo credit: G. Baird

Marketers, the extension seems unnatural and forced to me, but I’d love to hear from our readers who have a stronger vantage point on whether this brand extension will work long term for Cat.

What called me to create this story for you is the hidden trademark strategy to be unearthed.

“Footwear” is one of those broad descriptions of goods that the USPTO will accept as sufficiently precise. Selecting it facilitates and better positions your brand for line extensions yet to come.

In other words, narrowly selecting “slippers” or “steel-toe boots” over “footwear,” in trademark filings may leave you boxed in when seeking to expand or extend the lines of your present brand.

Not sure when Caterpillar first introduced women’s casual dress shoes under the Cat brand, but it has owned federally-registered rights in the word CAT for “footwear” for more than a decade.

Caterpillar likely began using CAT with steel-toe boots, but given its broader registered rights, I’m guessing it didn’t lose much sleep wondering if it could grow into those broader registered rights.

In fact, this Cat has become quite active enforcing its broader rights at the USPTO’s TTAB, here.

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?

SteepTea

The grocery aisles are fertile grounds for my keyboard, as you know. And, while I’m generally far more interested in coffee grounds than tea leaves (unless we’re speaking of the iced variety or reading between the lines of court decisions), the above shown box of tea bags caught my eye.

What initially captured my interest is the large yet engaging lower case branding of the word “steep” followed by the diminutive signature line “by BIGELOW” in all caps.

Given the descriptive character of the visually-emphasized word “steep” in connection with tea, and the “by” signature line of the well-known BIGELOW tea brand, my instincts told me a USPTO search would reveal a crowded field of marks containing STEEP, likely fueling my assumption that “steep” couldn’t be owned as a trademark for tea standing alone.

Turns out, STEEP was federally-registered back in 2004, for tea (as a single word mark with no style limitations), pursuant to an apparent showing of acquired distinctiveness under Section 2(f) of the Lanham Act, but the registration expired in 2010 and was cancelled under Section 8 of the Lanham Act in 2010, making way for the crowded field I imagined.

It also turns out, there is more to the story than I have time today to turn over every tea leaf of this one: The apparent principal behind the expired registration is back at the USPTO with a new STEEP application, claiming continuous use of STEEP for tea since 1994.

The irony is that the STEEP BY BIGELOW registration (first use in 2015) is now barring registration of the new STEEP application, here is the recent likelihood of confusion refusal.

So, I’ll leave you with a few questions that come to mind.

First, what’s the next move for the STEEP applicant?

And, looking back in time, did Bigelow add the signature line underneath the prominent use of “steep” to facilitate registration of STEEP BY BIGELOW and perhaps reduce the perceived risk of a trademark conflict with the prior registrant of STEEP for tea?

If so, will Bigelow regret not volunteering a disclaimer of the descriptive word “steep” since the USPTO oddly didn’t ask for one?

Assuming there are prior common law rights in STEEP and Bigelow wants to explain the lack of a disclaimer, might it point to the unitary mark theory?

Better yet, will the ineffective opposition (filed by the apparent principal of the prior registrant of STEEP) bar a future petition to cancel STEEP BY BIGELOW (to clear the path for re-registration of STEEP standing alone)?

If there are, in fact, prior common law rights in STEEP and the principal behind the STEEP application finds a way to federal court, has Bigelow relinquished a classic fair use defense in making “steep” part of its trademark use?

Finally, if risk avoidance is the goal (hoping for a steep slide into neutralizing a likelihood of confusion claim), might it be more effective to play with the meaning of the marks element of a likelihood of confusion claim, perhaps by adding graphic elements that invite other meanings of “steep” as compared to the more obvious one for tea?

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?