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?

Can you believe it? Nine times, we’ve celebrated our birthday with you (our amazing readers and supporters) — it all started with Dr. No and the Parade of Horribles; then a Seth milestone here.

A Ron milestone there. We’ve hardly taken a day off, much less skipped a class, or been called out as absent from any serious discussion on any of the many IP topics we’re truly passionate about.

Let’s be clear, this is no fool’s paradise, we won’t be led down the primrose path, it’s time to wake up and smell the coffee — are those enough hints to the first link in this blog post, Mr. Rooney?

Heartfelt thanks to all our regular writers (past and present), our guest bloggers, and also those who generously share their insights by posting comments or spreading the news in other ways.

What you’ve done over the past nine years to support our passion and to help make this dialogue and graceful collaboration a remarkable success, is not unnoticed, we appreciate each one of you.

By the way, we’ll be cutting more than virtual birthday cake on Thursday, at our Creative Brand Protection event, so here is your last chance to request an invite for a few remaining open seats.

That was the substance of my talk last Friday in St. Louis at the Public Relations Society of America’s 2015 Midwest District Conference. A great conference, lots of talent in the house.

One of the attendees had very high praise, remarking afterwards that it was “the best presentation on IP” she has experienced — “very substantive, but understandable.” Thanks!

If you’d like a copy of my slides, just let me know. Better yet, if your organization would like to have a lunch and learn around this topic, let’s try to get it on the calendar soon.

The highlight of the two day conference, for me, was Fred Cook’s keynote address called “Improvise: Unconventional Career Advice from an Unlikely CEO,” — Cook is CEO of Golin.

Loved Cook’s advice to “play it by ear,” “go all in,” and “improvise” by taking something ordinary and making is special, and the Golin “unternship” was nothing less than inspiring.

Tom Wilson, Monsanto VP Global Communication and Corporate Marketing, also delivered a powerful and candid presentation about “Engaging With Audiences Beyond Your Customers.

Sandi Straetker, APR, Principal of PRiority Relations, LLC pitched high energy and practical advice on “How to Win with the Media,” complete with numerous baseball metaphors.

Kate Bushnell, President of the Grossman Group gracefully delivered helpful advice and valuable insights in her “Top Ten Consulting Mistakes Communicators Make” presentation.

Ron Waterman, VP of Communications for the St. Louis Cardinals, demonstrated the highly successful use of today’s communications tools to connect, inform and engage Cardinals fans.

Debra Bethard-Caplick, MS, MBA, APR, and Managing Partner at QuickSilver Edge Strategic Communications, persuasively explained how to create behavior change, while discarding the all-too-common “we want to raise awareness” reason for a PR campaign.

The most difficult and challenging aspect of the two day conference was trying to decide between 3-4 amazing breakout sessions at the same time, so if I didn’t mention your session, I’m sure it was great too, but I probably just missed it!

The importance of “storytelling” seems to be the buzzword lately when it comes to branding communications and decisions. For example, last August Branding Strategy Insider wrote that “Brands Must Master the Art of Storytelling,” and just last week it wrote twice on the subject, about “Shared Values in Brand Storytelling” and “5 Pillars for Brand Storytelling Success.”

Branding Strategy Insider’s guest-blogger Susan Gunelius, President and CEO of KeySplash Creative identified “five pillars that brand storytellers understand and use to intrigue, engage, and connect emotionally with consumers”:

  1. Speak truthfully;
  2. Infuse personalities into stories;
  3. Create characters your audience will root for;
  4. Include a beginning, middle, and end; and
  5. Don’t give it all away.

With a healthy dose of humility I’d like to suggest the consideration of a sixth pillar, from the perspective of a concerned trademark type: Don’t permit the storyline to kill the IP!

The stories being told about Pepsi’s new bottle design inspired my suggestion for this intellectual property-focused pillar. AdAge recently reported on Pepsi’s new bottle design:

AdAge Image

“The twisted-bottle shape is a standard the brand hopes to build on — Coca-Cola has long been known for its iconic contour bottle shape. [VP of Marketing Angelique] Krembs said the team, including Chief Design Officer Mauro Porcini, who was brought onboard last June, looked in Pepsi’s archives for inspiration and features that were consistent over time.”

“The swirl on the new bottle is an element that goes back to some of the early glass packages,” Ms. Krembs said. “We didn’t want to create a shape that came out of nowhere,” Ms. Krembs said. “It’s not uniform, it’s a little asymmetrical, there’s a little edginess and playfulness, which is consistent with Pepsi’s equities and youthful spirit.”

While marketing types might debate on the persuasive power of the story behind the bottle design, from a trademark perspective, to this point, at least, it appeared totally consistent with a claim of non-traditional trademark ownership in the product packaging. That is, until the unfortunate emphasis on the “swirled grip” bottom portion.

The Dieline elaborates with this quote from Ms. Krembs: “The etched, grip-able bottom allows consumers to have a more stimulating, tactile interaction with the bottle itself.Brand Channel adds: “The new bottle bottom makes it easier to hold and the label covers less of the contents, showing more of the actual beverage.” And, Pepsi answered a question from Chief Marketer, this way: “Consumer testing has shown positive results, with our consumers finding that the new bottle design reflects Pepsi’s playful spirit while providing a grip-able bottom.” It might be best to “get a grip” on the IP, by leaving the focus of the branding storyline on the “playful spirit.”

Of course, the danger of a branding storyline that focuses on a bottle’s “grip” may be viewed as touting function over form, the death-knell for trademark protection covering the shape of product containers and packaging.

An additional risk of functionality is highlighted in the online comments to the AdAge article: “[T]he redesign’s main purpose is to keep the Pepsi logo visible while someone is holding the bottle. Why does that matter? Because the ubiquity of camera phones and social media. They’re leveraging free advertising opportunities to ‘capture the excitement.'”

And, this matters too — from a trademark perspective — because if the “grip-able” portion of the bottle below the label is so designed for “gripping” and to render the label more visible, the specter of functionality begins to enter the storyline. So, it will remain to be seen whether the USPTO holds the “grip-able” part of the storyline against Pepsi’s attempt to secure non-traditional trademark ownership of the bottle shape on functionality grounds.

PTO Drawing

As you may recall, we’ve previously issued a few related warnings to those brand storytellers who have seemingly forgotten about the fragile nature of intellectual property:

So, what do you think, will Pepsi’s applied-for bottle design trademark fail on functionality grounds or will this story have a happier ending?

A few bits of trademark advice recently passed across my screen from The Marketing Blog: Turning Entrepreneurs Into Marketers — advice that I believe deserves some friendly comment and critique, leaving you to decide whether any of it rises to the level of brilliant trademark advice or sinks to the level of trademark baloney:

“Trademark as you go. Don’t wait until you have a bunch of stuff to trademark before you decide to move on it.”

“By seeking to protect something with a trademark, you’re also taking on some obligations. One of which is an obligation to police the market for competing trademarks that might be problematic.”

“A trademark doesn’t act as a shield as much as a sword. It doesn’t actively protect you against much of anything.”

1. Keeping “Trademark” Terminology Straight: From each of these excerpts, what becomes apparent, at first, is the need to make sure the use of  the term “trademark” is clear to the reader. From the context of the entire blog post, it appears the author is using the term as a verb to reference the act of seeking federal registration and also as a noun to reference the hopeful business asset resulting from that process, namely, a federal trademark registration.

For more on the various meanings of the term “trademark” to keep clear in your communications, feel free to refresh your memory by reviewing these prior posts:

2. The Timing of Seeking Trademark Registration: The “trademark as you go” comment seems to mean, register your trademarks as you go, as you create them, and that direction is hard to argue with given the geographic limitations of common law unregistered trademark rights. Indeed, the cost of waiting to register until after commencing use can be quite high in some cases.

Of course, the best time to file for and seek registration is immediately after the necessary due diligence has been done to clear the proposed mark for actual commercial use in the marketplace (for reasons we have already discussed).

3. The “Obligation to Police” Trademarks: To the extent the the author is suggesting that unregistered common law trademarks are free of any “obligation” to enforce and the mere act of registration creates such an “obligation,” the suggestion is incorrect. Without an appropriate level of policing and enforcement trademark rights will shrink over time, whether or not the mark in question is federally registered.

And, as to the “obligation” comment, in general, savvy Duets Blog readers already know that the referenced “obligation to police” is overblown. Indeed, it is more helpful and accurate to think in terms of consequences of failing to act, not in terms of breached obligations or duties.

4. The Trademark Registration as a Sword and a Shield: To conclude that a trademark registration “doesn’t actively protect you against much of anything,” ignores a significant benefit of registration, namely, nationwide constructive use, which can serve as an amazing shield in fending off challenges to a trademark owners growing and expanded geographic use over time.

It also ignores the statutorily required protection the USPTO undertakes on behalf of federal trademark registrants in preventing others from registering marks that conflict with prior registered marks because of a likelihood of confusion — according to Section 2(d) of the Lanham Act.

Clearly, a trademark registration acts as a valuable sword and shield.

So, what say you, dear readers, brilliant advice or baloney, or perhaps something in between?

The smartphone market is very litigious. Taiwanese company HTC Corporation (“HTC”) filed a declaratory judgment action against Samsung in Washington last week. The lawsuit came on the heels of receiving a cease and desist letter from Samsung regarding HTC’s “Inspire” line 4G android cell phones. In its lawsuit, HTC seeks a judgment that it can use the “Inspire” trademark and such use will not infringe Samsung’s “Inspiration” trademark and will not cause a likelihood of confusion for consumers.

HTC initially unveiled the “Inspire” trademark in January 2011. Samsung did not attempt to challenge HTC’s registration of the “Inspire” trademark. It had not used its “Inspiration” trademark for four years. Accordingly, HTC likely thought it was in the clear. HTC’s certificate of registration for “Inspire” issued from the United States Patent and Trademark Office earlier this month. 

This is not the first intellectual property issue these two companies have dealt with. To ward off patent litigation with respect to their respective android phones, HTC and Samsung entered into a strategic partnership with Intellectual Ventures. Specifically, both companies entered into license agreements wherein they could use 30,000 intellectual property assets owned by Intellectual Ventures.

HTC and Apple have also been at odds about intellectual property. Apple sued HTC for patent infringement last year in connection with its patents for the iPhone’s user interface, underlying architecture and hardware. The lawsuit was filed in the U.S. International Trade Commission (ITC) and in U.S. District Court in Delaware in March 2010. The case is still pending.  

HTC may have had the last laugh. HTC beat Apple to win the 2011 Device Manufacturer of the year on February 15, 2011. HTC was praised for its excellent marketing and creating a clear brand image and product combinations that work with various platforms. Moreover, the year before, HTC won the “Best Mobile Device” award.  These accolades in the court of public opinion may have made HTC a target for the current trademark dispute with Samsung in the court of law.

As you may have guessed from our announcement yesterday, in bidding farewell to our talented colleague and fellow-blogger Karen Brennan, we are looking for someone who can attempt to fill Karen’s shoes as an associate attorney in the Intellectual Property Department at Winthrop & Weinstine, P.A.

Our posting for the position on Bench & Bar of Minnesota is here.

If you’re up to the task, and want to be part of the team, we hope to hear from you soon!

It is with great sorrow that we bid farewell to Karen Brennan, who is moving on to greener in-house pastures, as Corporate IP Counsel with United Health Group. Having said that, we fully recognize it is a wonderful and significant opportunity for Karen, so we wish her the very best in her new position.

We will miss Karen’s significant accomplishments and contributions to our group over the years, and I’m sure readers will miss the smart, interesting and clever DuetsBlog posts we have all come to expect from Karen over the last two years.

Here are a few of my personal favorites from Karen:

We remain hopeful that our farewell to Karen is only temporary and partial, at least as a contributing author on DuetsBlog, since we have asked and Karen is hoping to appear as a guest blogger from time to time, when time and other kinds of important things permit.

So that Karen’s clever DuetsBlog bio is not lost into cyberspace as we transfer her likeness and posts from the sidebar and move them to the guest blogger tag, we have reproduced her original bio below the jump.

Continue Reading Farewell to Karen Brennan

The Intellectual Property Owners Association (IPO) submitted its comments last Friday in response to the USPTO’s recent invitation for input on whether “trademark bullying” is a problem.

In response to the USPTO’s key question “Do you think trademark ‘bullies’ are currently a problem for trademark owners, and if so, how significant is the problem?” IPO answered:

IPO does not believe that trademark “bullies” are a problem for trademark owners. The question defines a trademark “bully” as a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” This language is problematic because, inter alia, what seems reasonable to one person may not seem reasonable to another. In point of fact, trademarks serve as signs of quality of a particular good or service and play an important role in consumer protection by preventing confusion in the marketplace and building consumer trust. With this deep and expansive market reach, comes the responsibility of maintaining the integrity of the brand. It is in the best interest of companies, large and small, to carefully review potential trademark infringement issues and create a consistent enforcement strategy which, in turn, bolsters brand recognition and reliance.

To this end, trademark owners are permitted to have the courts determine the limits of their rights. It is sometimes difficult to predict when a trademark claim will prevail, particularly in cases where famous marks are used on non-competitive goods and services. The fact that a trademark owner does not ultimately prevail does not mean that the enforcement of its rights was inappropriate.

In addition, the pejorative and emotionally charged term “bullies” suggests that the trademark owner in question is a large organization that is using its greater size and economic power to unjustly “push around” a smaller organization or individual. In the experience of IPO members, this is rare, and most large organizations take action in cases upon careful reflection of the facts and development of a strong business case analysis and justification for the litigation expense.

Indeed, several IPO members noted a trend towards more aggressive assertion and defense of trademark claims by individuals and small organizations, particularly where they represent themselves or have obtained legal representation on a contingency basis. The USPTO has been helpful in certain instances. In a July 14, 2006 Order signed by Chief Judge J. David Sams, the Trademark Trial and Appeal Board (TTAB) sanctioned an individual for his “misuse of the TTAB’s procedures” by filing more than 1,800 requests for extensions of time to oppose the registration of trademark applications within a seven-month period. Large organizations are often the targets of this type of behavior, as they are perceived as having “deep pockets” and the willingness to pay a “nuisance value” to avoid the cost of litigation, despite the lack of merits of a case. Such behavior thwarts the consumer protection mechanisms fundamental to trademark law. These types of cases do not fit the “bullies” label.

Finally, to the extent that “bullying” behavior is grounded in litigation tactics independent of the merits of cases, IPO notes that in trademark case law, one can find examples of both plaintiffs and defendants engaging in objectionable behavior. An infringing defendant determined to delay a finding of liability has as many options available to it as does a plaintiff attempting to vindicate its rights; trademark plaintiffs are themselves at risk of being bullied by more obstructionist opponents.

For those of you unfamiliar with IPO, it describes itself like this:

IPO, established in 1972, is a trade association for companies, inventors, law firms and others who own or are interested in patents, trademarks, copyrights and trade secrets, and the like. IPO is the only association in the United States (U.S.) that serves all intellectual property owners in all industries and in all fields of technology. Governed by a 50-member corporate board of directors, IPO advocates effective and affordable intellectual property (IP) ownership rights in the U.S. and abroad on behalf of its more than 200 corporate members and more than 11,000 individuals involved in the association.

Board members include 50 representatives from significant trademark owners and companies like Google, Microsoft, 3M, IBM, Apple, Intel, Motorola, among many others.

A number of the points IPO raised in its response are consistent with previous points I have made in a DuetsBlog post entitled “The Mark of a Real Trademark Bully.”

I’m thankful that IPO was heard on this issue, especially given the fact that IPO has a much broader intellectual property (IP) focus going well beyond trademarks, but what about INTA, whose sole focus is the trademark part of what is protected under the umbrella we call IP? Hello? The International Trademark Association? I have yet to see any position taken by INTA on this subject, and we are members.

So, I’m left wondering, was INTA too busy announcing its new website (a day before the USPTO’s deadline), introducing the controversial “My Powerful Network,” considering related accusations of censorship, and choosing to drop the popular TM Topics email discussion group, making it unable to weigh in on this invitation from the U.S. Trademark Office? Or, perhaps, was INTA unable to reach the necessary political consensus to convey a unified position on the subject to the USPTO?

I seriously hope not and that an announcement regarding the position INTA took (assuming it did submit a response) on the subject is forthcoming.

What do you think of IPO’s response to the USPTO? Should INTA have submitted a response?

–Sharon Armstrong, Attorney

A recent post on the Freakonomics blog at the New York Times combined two of my favorite things in life – intellectual property and cocktails. “The Creative Cocktail” specifically discusses the creativity to be found in the new cocktail scene – including bars designed like prohibition-era speakeasies, farm-fresh ingredients, artisanal details in every drink, and fancy spins on classic drinks.

The authors of the article – intellectual property professors Kal Raustiala and Chris Sprigman – also discuss the prevalence of copying among bartenders and restaurateurs in the industry and attempts by some in the industry to obtain protection for cocktail recipes. Under U.S. law, cocktail recipes cannot be copyrighted. However, some in the industry are trying to maintain exclusive protection over how certain cocktails are made and presented to the public through other methods, including trade dress and trademark protection. For example, Gosling’s, a Bermudian company that makes Gosling’s Black Seal Rum and claims to be the originator of the Dark ‘n Stormy cocktail, owns U.S. registrations for the mark DARK ‘N STORMY, for “pre-mixed alcoholic cocktail, namely rum and ginger beer” and for “a kit containing Gosling’s BLACK SEAL rum and ginger beer for preparing an alcoholic cocktail.”   However, given the propensity for bartenders seeking to make their marks among a thirsty public by experimenting with ingredients other than the spirit prescribed in Gosling’s registrations, Gosling’s states that defending its trademark registrations to ensure the use of Gosling’s is “a very time-consuming and expensive thing.” Notably, Gosling’s does not own a trademark registration for a cocktail recipe for DARK ‘N STORMY; Gosling’s registrations instead cover the ingredients that Gosling’s stands behind as part of a genuine Dark ‘n Stormy cocktail.

Beyond the expense involved in enforcing claimed rights in a trademark for the make-up of a cocktail, trademark protection does seem to be a tricky means of solidifying a recipe due to the fact that consumers, like bartenders, may do their own doctoring at home and either still associate the name of their new creation with the “branded” drink or modify the name only slightly to note the variation – Light ‘n Drizzly, anyone? I’m not naming the names of my hosts (none of whom tend bar for a living), but I’ve had the pleasure of imbibing more than one cocktail combining a rum other than Gosling’s with a ginger concoction of some sort – be it ginger syrup, ginger bitters, or ginger-something-else – to delicious effect.

For these reasons, seeking intellectual property protection does not appear to be the most artful means of cornering the market for a particular cocktail, not to mention the fact that it seems to be at odds with the inherent creativity of cooking or tending bar – in which chefs learn from one another and customers in part direct the preparation of their food and drink (I want my steak rare! I want a Maker’s Mark manhattan!). So what works? As the authors of the article suggest, building a strong brand is always a good way to establish consumer loyalty. Another option is to do as one other famous rum maker has done – put your name in name of the cocktail.

Cheers!