Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:

Before:

 

During:

 

 

After:

Steve Baird, Amanda Blackhorse, Joel MacMull, Simon Tam
Professor Lisa Ramsey, Steve Baird, and Professor Christine Haight Farley whispering in Steve’s ear

Highlights:

Amanda Blackhorse:

Message to Daniel Snyder: “You cannot force honor on someone.”

Steve Baird:

“Federal trademark registration is a giant exception to Free Speech.”

Other messages drawn from here, here, here, here, and here.

Simon Tam:

Interpreting USPTO: “They said we were too Asian!”

Joel MacMull:

The Tam case never should have been decided on Constitutional grounds!

Great questions from the engaged crowd, wish there had been much more time!

What were your highlights from the panel discussion?

UPDATE: Simon Tam, writing about Paper Justice, here.

Last Friday was a big day for Erik Brunetti. He won his appeal at the CAFC, opening the door to federal trademark registration of his four-letter-word “fuct” clothing and fashion brand name.

The same door swung wide open for all other vulgar, scandalous, and immoral designations used as trademarks, because the 112-year old registration prohibition was found to violate free speech.

You may recall where I take a knee on the free speech argument as it relates to the government’s issuance of federal trademark registrations, see here, here, here, here, here, here, and here.

I’m continuing to believe Congress has the power under the Commerce Clause to distance itself from and not be viewed as endorsing certain subject matter on public policy grounds, especially when Certificates of Registration are issued “in the name of the United States of America.”

Having said that, I’m thinking the federal government has done a less than stellar job of articulating and advocating for this right, which may very well explain the current state of affairs.

What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.

The CAFC did not decide whether the “scandalous and immoral” clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.

The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.

Asked before, but will dilution by tarnishment survive this kind of strict free speech scrutiny? According to the CAFC in Brunetti, strict scrutiny applies even without viewpoint discrimination.

All that leads me to explore with you Brunetti’s line of “fuct” clothing, and in particular, this t-shirt which is surprisingly for sale online, here.

We’ll see for how long it’s available online, or whether Mr. Brunetti will need to Go Further, to get another brand’s attention, hello, Ford:

It’s hard to imagine the famous Ford logo, consisting of the distinctive script and blue oval, not being considered sufficiently famous and worthy of protection against dilution — without a showing of likelihood of confusion. But, given Tam and Brunetti, is a dilution by tarnishment claim even viable, or is it just another federal trademark provision about to fall, in favor of free speech.

Just because Mr. Brunetti may be anointed with a federal registration for the word “fuct” doesn’t mean his depiction of the word in the above style and design is lawful for use or registration.

So, if Ford does pursue the Brunetti t-shirt, under a dilution by tarnishment theory, and if it were considered to be a viable claim, in the end, might Mr. Brunetti be the one, let’s say, uniquely suited — to vanquish tarnishment protection from the Lanham Act?

Or, will another potty-mouth brand be the one to seriously probe the constitutionality of dilution protection against tarnishment?

Last but not least, and sadly for me, last Friday also was a big day for Mr. Daniel Snyder too.

One of the biggest issues facing electric car manufacturers is how quiet they are.  So quiet in fact that 60 Minutes edited in an engine roar to its Tesla story.  The quiet can have dangerous consequences for pedestrians and others.   Riding my bike, I often listen for the sound of an engine roar near me before turning my head to see if it’s safe to move into the adjacent lane.

Tesla

Notwithstanding the electric car issue, some manufacturers are even adding sound to smaller engine vehicles in an effort to promote fuel economy.  I mean, who doesn’t like to rev up their engine a little bit?  Ford has even patented a method of generating engine noise during a period between “two successive ignition events of an internal combustible engine.”

fordenginenoise

So with this modification of engine noise disengaged from the car’s actual function, or an enhancement thereof, are we entering the era of cars with distinctive engine sounds as a trademark?   Historically, obtaining trademark protection for engine noises proven difficult.  Harley-Davidson tried to get one for their distinctive “potato”-like sound.  If you own a Harley, or if you’ve ever been to Harley Fest another Harley rally, you know that sound well.    Part of the issue with Harley’s application was that the sound mark was a function of its V-Twin design.  Unlike other fixed sounds like the NBC chimes, it also varied depending on the type of motorcycle, the way the rider revved the engine, and potentially even in the use of aftermarket parts.  But in the case of a sound applied to an electric car or as suggested by the Ford patent application, the particular sound may have distinctive qualities, would be fixed, and would not be purely a function of its design.  A user would likely be able to upload sounds so that it’s Prius sounded one day like an Audi R8 and another day like an early 20th century roadster.  If not available for trademark protection, the recorded sounds would certainly be eligible for copyright protection.

Keep listening for this trademark trend soon.

 

 

— Jessica Gutierrez Alm, Attorney

Last week, a press release announced that Ford would “Open[] [its] Portfolio of Patented Technologies to Competitors to Accelerate Industry-Wide Electrified Vehicle Development.”  Media outlets were quick to report that Ford was joining Tesla in opening its patent portfolio, referencing Tesla’s widely publicized promise last year not to enforce its patents.  But Ford’s announcement is not quite as revolutionary as many media sources would have us believe.

Tesla was heralded last year for announcing an open source plan for all of its patents (“All Our Patents are Belong to You”).  With its announcement, Tesla promised to allow anyone to freely use its technology in “good faith.”  Tesla’s purported goal was the “advancement of electric vehicle technology.”  Earlier this year, Toyota jumped on the bandwagon and announced at the 2015 Consumer Electronics Show that it would grant limited free licenses for several of its hydrogen fuel-cell technology patents.  With this apparent trend of automobile manufacturers giving away patented technology, it’s no wonder many assumed Ford’s press release signaled the same.

Below are a few of the early media responses likening Ford’s announcement to Tesla’s earlier move:

These and other headlines leave us with an impression that Ford is casting aside its greed-fueled patent rights in favor of a more communal approach for the betterment of all.  Unfortunately (or fortunately, depending on your take), it’s not true.  A closer look at Ford’s announcement reveals that the company is not at all following in Tesla’s patent strategy footsteps.  Instead, Ford is offering a fee-based licensing system, which is exactly the way many companies leverage their patented technology.  Citing lofty goals of innovation and industry-wide advancement, Ford is merely marketing the fact that it has electric vehicle patents available for licensing fees.  While it is perhaps a step forward that Ford is explicitly offering to license its electric vehicle technology, rather than keeping it entirely off limits from competitors, and the company suggested that fees will be relatively low, the move is nothing akin to Tesla’s open source plan.  If an unauthorized individual or company attempts to practice Ford’s patented electric vehicle technology, Ford will surely take action.

Much of the misconception in the media seems to stem from another false perception—that patented technology is secret.  It’s understandable, given how secretive companies often are when it comes to new tech.  But let’s be clear: patents are publicly available.  The American patent system was developed on the notion that in order to receive a patent, an inventor must tell the world exactly how his new invention works.  The very purpose of requiring a disclosure of the invention is to teach the world how to design around it, and thus promote innovation.  Issued patents and published patent applications are available for free from the U.S. Patent and Trademark Office.  They’re even searchable on Google.  Anyone, including Ford’s competitors, can already access Ford’s patents and published patent applications.  There may also be some confusion surrounding the difference between the patent document, which describes Ford’s patented technology (freely available) and the technology patented (Ford can exclude others from, or charge a license fee for, practicing its invention).  While a competitor cannot make, use, or sell the patented invention without a license, competitors are free to design around the patented invention, or build on the invention with non-obvious improvements.

Later headlines reported a more accurate depiction of the announcement:

Indeed, as Fortune Magazine’s Kirsten Korosec suggests, the most striking aspect of Ford’s announcement may be the very last line of the press release.  Slipped in almost as an afterthought, the announcement states that the automaker intends to hire 200 electrified vehicle engineers this year, signaling what may be a shifting focus for the company.

It’s a rare phenomenon in the 21st century when a US start-up car company can make commercially viable vehicles essentially from scratch, let alone one using new technology and bucking the dealership model.  Tesla’s been in the news a lot recently – fires, new lithium battery factories in the US (curiously the largest lithium deposits in the world are believed to be in Afghanistan), and a 60 Minutes feature story that edited in an engine growl to a nearly silent vehicle.

Even minus a growling engine, Tesla models are S-E-X-Y.  Seriously, they applied for federal trademark protection for Model S, Model E, Model X, and Model Y.  No branding expert can convince me that that’s a coincidence.

However, despite the cute branding, Tesla recently abandoned its Model E mark.  Several car articles on the matter (here, here, and even The Hollywood Reporter here) left it to speculation as to why the mark was abandoned.  The publicly available record though suggests an interesting story.

My initial reaction was that maybe it had faced a descriptiveness refusal as an electric car.  However, upon looking at the file histories for the three MODEL E applications (here, here, and here), they all had been approved and published for opposition.  In other words, the Trademark Office did not find a reason to reject the applications, including on the basis of descriptiveness.  Tesla did not let these applications as we trademark nerds like to say “die a natural death,” instead it expressly abandoned the applications, which normally only happens when there is a dispute.

Who would have thought that dispute would be between the car company most aligned with a flashy mass-produced electric car and the original production car?

As shown in the file histories, extensions of time to oppose were filed by Ford Motor Company, who happens to still own active registrations for the well-known and antiquated MODEL T.  But these registrations are still alive for some ancillary products: hand tools, namely, pocket knives; children’s activity books and various desk items; key fobs and plaques; clocks and collector coins; banks; and toys.

Ford however filed a new intent-to-use application on May 29, 2013 for MODEL T for “automobiles”.  The Tesla intent-to-use applications were filed August 5, 2013, including Tesla’s application for MODEL E in connection with “automobiles and structural parts therefor”.   Therefore, Ford’s application has priority.  Arguably, MODEL T and MODEL E sound similar and were applied for with respect to identical goods.  Where the goods are identical, “the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.” See TMEP 1207.

Ford has prior use and registration of the identical MODEL E mark for various electrically powered vehicles, which was cancelled in May 2010.   Ford also applied for MODEL E for “automobiles” in December 2013, yet the application was surprisingly not refused registration over Tesla’s prior filed and still pending MODEL E application, despite being an identical mark for identical goods.

Given Tesla’s express abandonment,  Ford and Tesla likely reached some agreement regarding the MODEL E mark and perhaps this only fuels further speculation that Ford is interested in buying, or at least partnering with, Tesla.  Depending on that agreement, Tesla may be bringing S-E-X-Y back after all if Ford is licensing it back to Tesla.

 

 

By now you know how much I love the Coca-Cola brand and advertising, and this beautiful gem of a billboard is no exception:

What I’m left wondering is whether consumers might view this as a co-branding campaign between Coca-Cola and Ford, and whether Coca-Cola felt the need to obtain permission from Ford to depict the back half of a candy red 1966 Mustang convertible (the detail to the left of the wheel was the give away for me on make and model, in case you’re wondering).

No Ford logos are visible, but there is enough of the vehicle shown for at least certain consumers to recognize it as a Ford Mustang convertible, whether or not they can identify the year.

We had to dig deep into the DuetsBlog archives to find our discussion of a similar billboard ad featuring the front portion of a Chevrolet Corvette in a Schlitz Beer advertisement: Using Another’s Body to Sell Your Products? The Problem of Airbrushing Non-Traditional Trademarks.

Let’s assume no permission was obtained, since no logos from the vehicle are visible, but what are your thoughts about whether Ford can control the use of this much of a classic Ford Mustang to help sell another’s products? And, if Ford has enforceable rights, does this constitute fair use?

I’m a car aficionado, but in my opinion and without mincing words, car commercials are boring.  With few exceptions like the Young Vader ad from VW from the Super Bowl a few years ago, car commercials are stale and, more than any other genre, lack what I consider to be the “umami” of ads – “truth, wit, intelligence and charm” (cite: Peter Engel).  In general, most car ads can easily be applied to their competitors.  To illustrate this, try watching a figure skating, air guitar, or dancing competition on mute and turning on the radio.  Almost inevitably it will seem just as good with the new music.  Try it out; it’s kind of fun.  Now think about that with car commercials – replacing the featured vehicle with one from another manufacturer.  Would there be a clear difference or, like the skating routine, would it be a seamless change?  I’d argue the latter.

Now it seems that competing truck manufacturers are using very similar, new slogans.  This month, AdWeek had an article about Chevrolet abandoning “CHEVY RUNS DEEP” for “FIND NEW ROADS.”  The new slogan had two audiences:  consumers and its employees.  After finishing the article, I was struck by how common that new tagline seemed when applied to trucks.

I also couldn’t help but compare this to one of Chevy’s rivals, Ford, which has recently been using GO FURTHER.  And, like the article says about Chevy’s new slogan, Ford’s slogan is likewise intended to be a mantra for its employees.

Another rival of Chevy in the truck market is Toyota, which has recently introduced the similarly themed LET’S GO PLACES.

Seems like pathways to the future are ruling the slogans of the truck genre.  What do you think about Chevy’s new theme in view of its competitors?

 

Last week, Jack Ellis of World Trademark Review, did a very interesting piece on something called “invisible branding”: “Trademark-free marketing: should other companies follow Ford?”

In it, Ellis explores Ford Motor Company’s recent decision to utilize no trademark or brand references in Ford’s “Go Further” advertising campaign.

It is interesting timing for Ford to go stealth without its brand name and logo, since it was reported just days ago that Ford has gotten its blue oval trademark back (it had been posted as collateral and security for loans to avoid bankruptcy back in 2006), but that’s another story, apparently an emotional one for the Ford family.

In any event, truth be told, and assuming no non-traditional product configuration trademarks are present, there is actually one visible brand reference (Ecoboost) in the “Go Further” ad, but apparently, no one appreciates that it is linked to Ford. I suspect they will now (perhaps this a significant secondary benefit of the campaign in favor of the Ecoboost sub-brand).

But, back to Ellis, he captured my off-the-cuff perspective on the moving topic last week:

“Steve Baird shareholder attorney at Winthrop & Weinstine and an author at the Duets Blog, believes that such a method is not necessarily a bad idea: ‘It creates some mystery and intrigue about who put out the ad, possibly generating more interest than a branded spot might enjoy. This is especially so for those who might normally ignore a Ford spot for whatever reason.’ By using an anonymous approach, Ford may well be able to gain the attention of a potential new consumer base that would otherwise be inaccessible.”

And, now I see, William Lozito over at Name Wire confirms that the “Go Further” campaign is designed to “overcome negative perceptions” about the Ford brand. He goes on to say: “The idea is that Ford is so well known — but so misrepresented — that the brand can now quietly reposition itself. Will this happen without constant reminders to consumers about who they are? Time will tell.”

I suspect time will also tell whether, on balance, consumers will appreciate the unconventional marketing effort as an innocent attempt to reintroduce Ford or more like unwelcome manipulation of skeptics to generate coveted click-through hits at www.gofurther.com (3 Million the first week), and if the latter, will the brand suffer the consequences of further hardening the critics and skeptics?

This isn’t Ford’s first marketing effort to win over skeptics of the Ford brand, as Mike Rowe and Ford’s “Swap Your Ride” campaign has been going on for some time now, and it apparently is expected to continue alongside the “Go Further” campaign.

Some have likened the “invisible branding” approach to the well-established trend of a few well-known and famous brands to focus their visual identity on non-verbal logos that stand alone, for example the Nike swoosh or McDonald’s golden arches.

I see them as quite different. Brands that are able to shed their name in favor of a wordless symbol do so from a position of power (as these examples demonstrate). These brands shed their names because they want to and they can communicate through a stand-alone visual icon, not because they are trying to avoid being ignored by critics, and not because they are trying to displace existing negative associations with the brand.

In contrast, the Ford plan could be viewed by some as an invitation to a masquerade party where at least one possible outcome is an angry guest who goes home frustrated after his or her date removes the mask (and then blogs or tweets about it).

It certainly is an interesting approach — to mask or obscure a brand — in order to buy a second chance with a consumer, especially when the buzz word among social media evangelists is the importance of brand “transparency” — so, as I think about this issue more, Ford’s decision to embrace “invisible branding” in the “Go Further” campaign could be considered in conflict with the necessary transparency that successful social media demands.

It seems to me, the real question could boil down to whether Ford wins over more skeptics than it alienates by temporarily wearing a mask and obscuring its identity in the initial “Go Further” ads. I assume Ford has done this calculation, and it’s comfortable with the risk, so it will be interesting to see how this decision may impact the Ford brand going forward.

What do you think? Is invisible branding a good idea? And, if so, when might it make the most sense?

Absorbing all the television commercials in between football action on the field can be as much fun on Super Bowl Sunday as the actual game itself, at least for trademark and marketing types, especially when your favorite team isn’t even on the field.

One of my personal favorites from this past weekend’s Super Bowl XLVI was the above “Chevy” Apocalypse advertisement, and not because it reminded me about GM’s Chevy trademark dodging the fatal lyrics: “This Will Be The Day That I Die”.

Instead, what caught my attention — beyond the controversy surrounding how Chevy called out Ford by name — were the other unrelated food brand references (Twinkies and Big Boy), leaving me wondering whether GM obtained advance permission for the use of these marks and/or whether GM might have shared the cost of the spot with these brands appearing as possible paid placements.

No need to wonder whether GM obtained advance permission from Ford, obviously it didn’t, and we’ll see whether a false advertising lawsuit results from it.

But, back to the third party food brands, could it be that the Twinkies appearance in the Chevy Apocalypse ad served as an additional jab at the perhaps indestructable ingredients of the snack food, recognizing that the bankrupt Hostess brand may not be in the best position to object? And, what about the charred Big Boy restaurant signage?

By all accounts, this must have been an interesting ad to clear — attempting to dodge and/or minimize the risk of potential claims from Ford, Hostess, and the various concurrent owners of the Big Boy mark.

What are your thoughts about these third party brand references? How would you have navigated this one? Permission necessary for some or all? Nominative fair use for some or all?

John Reinan, Senior Director at Fast Horse, a Minneapolis marketing agency

I love “orphan” cars — the marques that have gone out of business. Most of them are barely remembered by Baby Boomers, much less anyone younger. Packard, Hudson, Nash, Studebaker, Willys – these and other automakers often were stylistically and technically more advanced than Detroit’s Big Three, but they just couldn’t match the economies of scale that Ford, Chrysler and General Motors enjoyed.

I saw a number of orphan vehicles at the annual classic car show at Lake Harriet over the Memorial Day weekend, and it got me thinking: Could someone resurrect these old brands and use them in a modern marketing program?

Looks like I’m not the first one to have that thought. In researching the issue, I discovered an interesting recent case from the TTAB. It seems that an entrepreneur had been floating some design concepts for a custom-built car, to be called the Rambler. The last Rambler was produced in 1969 by American Motors, later absorbed by Chrysler.

Chrysler objected to the use of its predecessor brand mark. And, in a decision somewhat mystifying to a layman, the TTAB agreed – even though it smacked down Chrysler on nearly every aspect of the case.

The board found that Chrysler had abandoned the Rambler mark for autos; had no plans to ever build another car by that name; didn’t sell parts or services using the name; and had not established rights in the mark relating to some replica models marketed by the Franklin Mint and others.

All Chrysler could show was that a third-party licensing agency had produced and marketed a few tchotchkes using the Rambler name: key rings, calendars, decals and assorted other items. But those tchotchkes saved Chrysler’s bacon.

The TTAB held that those items created a likelihood of confusion — that the buyer of a newly reborn Rambler automobile would ascribe a single source to the products.

Thus, even though the board specifically found that Chrysler had abandoned the Rambler mark for automobiles, its preservation of the mark in the form of third-party key rings was enough to prevent anyone else from using the mark in the arena in which Chrysler had abandoned it.

The likelihood of anyone successfully building and selling a custom car is pretty small, no matter whether they call it a Rambler or anything else. So I don’t see this decision as a horrible miscarriage of justice. Still, it does seem a shame that these old brand marks can be retained by companies that have let decades go by with no evidence that they give a damn about them.

The people who care most about Ramblers and Packards and Studebakers are the ones who have invested their own time, money and sweat in keeping alive the memories – and the physical manifestations – of these once-great marques.

Who’s got a better moral right to these brand marks: the people who killed them or the people who are keeping them alive?