Well, here we are — a mere ten years ago today — when we dove head first, or at least, dipped our collective toes into the vast intellectual property blogging pond.

Intellectual PropertyIP — is italicized today, because there is currently a belief among some of those we respect, that trademarks aren’t intellectual property.

According to our friend Ron Coleman of the Likelihood of Confusion blog:

“[N]othing about trademarks is brain-born other than what we might fairly call the ministerial choice to associate a given trademark with a good or service. That process may involve, and often does, a lot of thinking, creativity and intellection. But none of that invests the trademark itself — which may, in fact, be completely lacking in creativity (“Best,” “Ford,” “American”) — with the quality of intellectual, mental, creative or original content such that it should be deemed ‘intellectual property.’”

There’s a lot to unpack there, but until then, just so you know, I’m firmly on the other side of the fence, viewing trademarks as being a recognized subset of the convenient category label commonly referred to as “intellectual property.”

Stay tuned on this topic, there is much more to say, much more than there is time left in this 10th birthday to do the topic justice, but for now, I’ll simply rest with a notable quote from branding icon, Walter Landor:

“Products are made in the factory, but brands are created in the mind.”

While trademarks aren’t brands, not only can trademarks be bought, sold, licensed, and leveraged as property, trademarks protect brands, and they embody all the intangible goodwill of the portion of a business associated with a particular mark.

Dare I say there is nothing ministerial about the brain-born brilliance Landor brought to his craft as a designer, nor is there mere ministerial contribution to the brilliance and creativity that our many non-lawyer guest bloggers have brought to their work over the last decade. Aaron? James? Mark? Agree?

We’ve written a lot over the years about picking a side, the art of taking a position, not waffling; one of the things we love about Ron is he is unafraid to take a position, to plant his flag firmly in the ground — that’s what we’ve tried to do too, and what we intend to continue to do going forward.


 

Here’s a question, what purpose is served by excluding trademarks from the definition of what constitutes intellectual property? Here’s another, who gets to decide?

If you don’t mind the wait, a crowded parking lot is often a good strategy when hunting for an excellent restaurant while you’re in unfamiliar territory. Similarly, a large crowd lining up outside a retail store is typically a good sign that the business is doing something right, or perhaps, they just happen to have something rare that everyone wants.

Parties are often said to be happening — and have more energy — when crowds of people descend upon them. But, what about when there is a crowded field of trademarks, as appears to be the case with a collection of highly similar brand names for retail party supply stores? Is the usually beneficial crowd phenomenon in this context, a good thing, or not?

   

As you might have imagined, it depends on your perspective and what you happen to be looking for in a retail store brand name.

If, for example, you’re wanting — or your client is wanting — to open a party supplies store, using a two word name, with PARTY being the first term, you might be inclined to start the music and begin to party when your trademark counsel advises that:

  1. PARTY LAND is federally registered in  connection with "retail party supplies, paper goods, gifts and balloons store services";
  2. PARTY CITY is federally registered for "retail party supply store services";
  3. PARTY FAIR is federally registered for "retail store services in the field of party goods";
  4. PARTY SUPERMARKET is federally registered for "retail store and distributorship services in the field of party supplies, party favors and novelty items";
  5. Federal registrations for PARTY UNIVERSE, PARTY WORLDPARTYTIME U.S.A., PARTY AMERICAPARTY PLACE, PARTY DEPOT, PARTY PLAZA, PARTY MART, PARTY TIME, PARTY GRAS, and PARTY ANIMAL, all have expired or become cancelled; and
  6. PARTY AMERICA, PARTY PRODUCTSPARTY CELEBRATION, PARTYCHEAP.COMPARTYSECRET.COM, and PARTYPRO.COM, among others, all appear to peacefully coexist in the marketplace and at common law.

Before you break out the bubbly, however, consider a couple of cautions, some legal, some not:

  • While on the one hand, given the commercial landscape described above, there are reasonable arguments of coexistence for yet another PARTY _____ retail store, on the other hand, there also are a multitude of possible plaintiffs just waiting to take an unrealistic view of the scope of their rights, around the time your venture looks like it might be successful;
  • The expiration and/or cancellation of registered trademarks doesn’t necessarily signal that any underlying common law and unregistered rights have been abandoned;
  • Assuming you are able to coexist, is that really what you want with a new business venture? Isn’t it better to stand out from the crowd to facilitate your ability to differentiate? and
  • Instead of simply blending into the existing commercial landscape, isn’t a more unique and distinctive name with more potential for owning a broader scope of rights, better?

Finally, at the risk of taking the party theme just a bit too far in illustrating these important points about the pros and cons of adopting trademarks in a crowded field, you might want to refer to my post from last year entitled Taking the Cake with Suggestive Trademarks, where the coexistence of General Mills’ Super Moist, Pillsbury’s Moist Supreme, and Duncan Hine’s Moist Deluxe cake mixes all peacefully coexist (in direct competition) on the very same grocery store shelves.

To me, it’s one thing to have a weak product mark, when the house mark is strong or even famous, as is probably the case with General Mills, Pillsbury, and Duncan Hines, since they likely are what carry the bulk of the goodwill associated with each product, but it’s quite another to knowingly adopt a weak name in a crowded field, when that name is the name of the business and intended to carry the bulk of the goodwill associated with the business.

What do you think? When can a weak and crowded trademark play a valuable role in the overall branding strategy for a business?

Tiger Woods drives by Allison.jpg

The impact of the Tiger Woods scandal in branding can be viewed from two different perspectives. The first perspective comes from the point of view of the companies that paid Woods to endorse their products. The second perspective is how the personal brand of Tiger Woods will be impacted as the smoke clears from this series of events.

Two professors in University of California-Davis’ Economics Department attempted to measure the impact from the first perspective. They claimed that shareholders in publicly traded companies that Woods endorsed lost $5-12 billion in the weeks that followed the car accident in Florida that set off the scandal. They undoubtedly have an interesting perspective, but there are limiting factors in their research. However, an undisputable fact of the Tiger Woods scandal is that it put a lot of brand management teams in a very delicate situation. Brand managers at firms where Woods served as an endorser had to consider how their brands would be perceived by their target consumers if they were to continue the relationship. It is not an enviable position. 

When a brand chooses to link arms with a celebrity endorser, it must consider which celebrities will be effective endorsers. It is essential to select celebrities that will positively contribute to revenue growth and profitability. I believe that a celebrity endorser is most effective when the target consumer perceives them as attractive or desirable in some fashion and the product is related to the expertise of the celebrity. For example, Michael Jordan was an effective endorser of both Nike and Gatorade because of his status as an elite athlete and the fact that both brands are related to athletic performance. Gisele Bundchen is an effective endorser for Dolce & Gabbana fragrances because scent is an important aspect of appearance and she is the embodiment of phenomenal appearance. She would be far less effective as a celebrity endorser for the Toyota Camry. With regards to Tiger Woods, he is most effective in endorsing Nike Golf products and any other golf related brands. His effect is diminished for brands like Gillette and AT&T.

Continue Reading The Roar of Tiger Woods in Branding