It all started here, nearly ten years ago now, with our inaugural DuetsBlog post called Dr. No and the Parade of Horribles. We used a Seth Godin post called Looking for Yes as our launchpad.

The rest is history. Seth revealed himself a fan of the blog on our 4th birthday, what a surprise. He generously has engaged with us since then, weighing in on topics ranging from branding to trademark bullying to Velcro’s fear of trademark genericide, with so much more in between.

Recently, Seth generously agreed to answer the 12 questions below. What should we ask next?

Continue Reading Seth Godin Answers 12 DuetsBlog Questions

VirginiaBrandHam

Every once in a while, the word “brand” appearing on product packaging surprises me, because my earlier understanding of the word preceding it spells generic, not brand. Just like the above.

Shopping in Whole Foods this past weekend, the above shown VIRGINIA BRAND designation called out like a neon sign from behind the glass of the meat counter, so I had to capture the image.

When speaking about the risk of trademark genericide, I’ll often refer to nervous trademark types behind the scenes influencing packaging to help educate consumers against a generic meaning.

Some of my favorite examples are Band-Aid® Brand Adhesive Bandages, Kleenex® Brand Tissue, and Jell-O® Brand Gelatin Dessert. We’ve referenced many others in our Genericide Watch.

Yet, there was something different about the VIRGINIA BRAND designation. First, the typical ® federal registration symbol is missing, as most brands worried about becoming generic are federally-registered. What’s more, as much as I love VIRGINIA, the name of a State simply lacks the inherent distinctiveness of the previously mentioned coined words that were made up to serve the specific purpose of serving as trademarks. Coined marks are uniquely susceptible to degeneration through genericide, but inherently generic wording begins and ends there.

To me, Virginia was a type or category of ham, either coming from Virginia or perhaps employing a common type of smoking or curing that originated in Virginia, either way generic, not a brand.

Turns out, VIRGINIA BRAND is a federally-registered trademark for packaged prepared meats, but it appears to be owned by White Packing Co., Inc. of Fredericksburg, Virginia, not Wellshire Farms West of Palm Coast, Florida, the latter trademark owner having used this label specimen to federally-register the WELLSHIRE logo (note the small print indicating MADE IN MARYLAND):

VirginiaBrandLabel

When lots of different and unrelated brands of ham offer Virginia and/or Virginia Brand ham, say Boar’s Head, Sara Lee, Black Bear, Eckrich, can Virginia and/or Virginia Brand really be a brand?

VirginiaBrandHamSpecimen

In other words, if anyone can sell their version of “Virginia Brand” ham, doesn’t that turn the notion of “brand” on its head, or at least on a boar’s head?

Just because someone calls a duck a goose, doesn’t make it a goose, right?

And, in terms of geography, just because someone calls its ham Virginia, doesn’t make it a brand either (especially when it’s made in Maryland or North Carolina).

Let’s just say, I’m more than likely to be confused here. Anyone able to make sense of this brand conundrum? Perhaps an easy job for Dr. Seuss and his famous character Sam-I-Am?

In terms of consequences, might the Virginia Brand federal trademark registration fairly be considered deadwood, suitable for smoking your next Easter Dinner ham?

Each of the seasons has its own soundtrack to signal its transition. Spring is symbolized by the chirping of robins and sparrows. The sound of the grill and the splashing in the pool announces the arrival of Summer. Unfortunately for Winter, it got the short end of the stick. Nothing says Winter is on its way like the sound of you, your loved ones, and your co-workers, reaching for a tissue and blowing their nose.

Those in the know on matters of the nose will take note: you reach for a tissue and not necessarily a Kleenex®. The owner of the Kleenex® brand has fought hard to keep its trademark from becoming generic, even purchasing advertisements to educate consumers on this distinction, like the ad reproduced below reminding consumers that “‘Kleenex’ is a brand name and should always be followed by an ® and the word ‘Tissue.'”

Kleenex - Trademark Usage Ad

The effort is ongoing, but Kleenex® continues to be a valid registered trademark. Even if Wikipedia (currently) states otherwise.

But the Kleenex® brand has more than one legal battle on its hands. This battle is not with consumers but instead with the U.S. Trademark Office. In May, Kimberly Clark (the owner of the Kleenex® brand) filed a trademark application for a product packaging configuration for facial tissue. The mark is described as “the configuration of a folding container for facial tissues” and is displayed in the drawing below:

Kleenex - Drawing

The actual product packaging, closed and open, looks like this:

Kleenex - Specimen

The Examining Attorney has refused registration, finding that the claimed mark is functional. We’ve discussed the limits imposed by the functionality doctrine a number of times at Duets Blog, wondering aloud whether 2015 might be “the year of functionality refusals.” In short, a claimed mark is functional if it comprises matter that, on the whole, is essential to the use or purpose of the product, if it affects the cost or quality of the product, or if it would put competitors at a significant non-reputation-related disadvantage.

In support of the refusal, the Examining Attorney identified a number of utility patents owned by Kimberly Clark for facial tissue dispensers and packaging. Interestingly, none of the patents appear to cover this particular design, but instead address older versions of packaging, or a particular component that allows the packaging to dispense only one tissue at a time. The Examining Attorney also relied upon statements from advertisements for the goods, which claimed that the packaging is “slim, stylish and easily fit in a backpack or back pocket.”

The Examining Attorney’s evidence supports a prima facie case, but doesn’t appear bullet proof. Yet at first glance, the packaging appears to be nothing but functional. The packaging allows the tissues to be carried in a compact container, making it amenable to travel. The flat packaging is likely the most beneficial shape, making it easy to fit in pockets or bags. The folding feature is a simple and easy way to close the package, keeping contents from falling out, but still being readily accessible by the consumer. Overall, it looks like an uphill battle.

No response has been filed yet, but perhaps Kimberly Clark will find a way to overcome the refusal. Like the common cold, we’ll just have to wait it out.

If you were a Band-Aid brand adhesive bandage, and you were cut, would you protect yourself?

Brent, sorry I couldn’t help myself, I’m still enjoying your Louis Vuitton waffle-maker post.

With that intro, let’s turn another page to the Genericide Watch category, here at DuetsBlog:

In focusing attention on the first item in the list shown above, to the extent Johnson & Johnson were to promote “protective surgical dressing in the form of a bandage” as the generic product name or category of the goods (the generic name listed in the USPTO record), it might be understandable that others generically and mistakenly call them “Band-Aids”  — for example, as captured most recently on this hotel’s listing of complementary commodities.

It would be kind of like using the phrase “boots equipped with longitudinally aligned rollers used for skating and skiing,” instead of the more consumer-friendly and truncated “inline skates.” Yes, we’re talking again about how the Rollerblade brand may have found itself on the watch list too.

But what if you do things right, the brand does the best it can to protect itself from the small, gradual and persistent cuts that can lead to a complete loss of exclusive trademark rights? It appears Johnson & Johnson is focused on the risk, attempting to influence consumer understanding of the brand name by even placing the all-important word “brand” into the generic product description on packaging for Band-Aid branded products and elsewhere:

The brand also promotes use of the even more truncated generic reference “bandages” when touting itself as America’s #1 Bandage Brand.

Now, for all I know, the front desk at the hotel where I recently stayed might have sent up a few Band-Aid brand adhesive bandages, had I cut myself shaving, but I didn’t test the theory. And I’m not sure it would matter in the end, at least for the purposes of our discussion here, since widespread examples like the one depicted above tend to influence the meaning of the word to consumers and probably don’t bode well for the outcome of a Teflon-style trademark genericness survey.

In the end, the majority of relevant consumers’ understanding decides the question of whether a word functions primarily as a brand or primarily as a generic designation, remember my prior discussion about the Kleenex brand?

To our marketing colleagues who might find flattery and branding success in “owning or becoming the category name,” know that there is no ownership possible once this happens. Imagine a day when 3M could label its competing products “NEXCARE Brand Band-Aids” or Medline uses labeling reading: “CURAD Brand Band-Aids.” Would you really want to be the brand manager explaining — at the brand’s funeral — how this death to commodity status helps the brand at that point?

Perhaps this is the most vivid and compelling illustration of why some trademark types refer to the trademark genericide problem as “death by a thousand cuts.”

Just so you know, it about pushed me over the edge to have a blog post title with no capitalization. Not even one letter. In other words, all minuscules, no majuscules. It doesn’t seem right — to me anyway, as a trademark type.

Just like the first letter in the first word of a sentence must be a capital letter, so must be the first letter of each substantive word in a title, so must be the first letter of a proper noun, and so must be at least the first letter of any brand name, or so I once thought.

Hello, adidas, at&t, intel, and citibank, among others:

   

As you may have inferred from a prior post of mine on the adidas brand (there, I did it), I’m having a hard time accepting the apparent trend toward lower case brand names and visual identities.

Make no mistake, this trend appears to be gaining steam, as evidenced by the numerous "before and after" re-brand comparisons found on UnderConsideration’s Brand New blog over the past year or so, including girl scouts, jcpenney, sears, arn, postnl, airtel, spilgames, coinstar, pur, virgin atlantic, travel channel, nickelodeon, pwc, meredith, hub, astraltcbytechnicolor, cometxfinity, belk, mapquest, and:

Although I’d like to invite and actually welcome the far more professional wisdom of our trusted visual identity brethren and other learned branding and marketing types, until then, I’m guessing this trend has at least something to do with wanting to position a brand as being friendlier, less stiff and formal, more accessible, kinder, and gentler, etc. Perhaps a visual identity more likely to create a stronger emotional bond and connection between the brand and its consumers?

   

Perhaps the trend is explained by the visual equivalent of what I previously wrote about in Exposing Two-Faced Brands, the trend toward brand name truncation, and what Susan and I wrote together about in a second article about Exposing Two Faced Brands. Basically, The Shack has more emotional potential than Radio Shack, and The Hut is more connecting than Pizza Hut, and Chuck is more personable than Charles Schwab

Having said that, it is worth noting that some visual identity changes and re-branding efforts appear to have accomplished a friendlier approach by moving from all cap type styles to leading cap styles, but they don’t go all the way to an all lower case style:

And, for what ever reason, a few appear to be heading back in the opposite direction from their lower case roots:

What if the following brands were to migrate from an all capital letter visual identity to an all lower case format?

    

Some might be concerned about having an all lower case visual identity encourage genericide. As you may recall, Kleenex has engaged in consumer education advertising to discourage genericide. And, I suspect this campaign was inspired by the famous Xerox campaign to avoid genericide: "When you use ‘xerox’ the way you use ‘aspirin,’ we get a headache."

Indeed, all lower case news and media references are often relied upon by litigation adversaries hoping to prove the generic nature of their opponent’s federally-registered trademark.

To the extent this is a valid concern, was the Xerox brand’s movement to an all lower-case style a wise one?

What are your thoughts on this all-lower-case visual identity and branding trend?

UPDATE:

  

             

This sponsored banner ad is currently appearing in AdAge’s Daily News on-line newsletter:

How many boxes of tissue do you suppose this ad is responsible for selling?

If the answer is none, that is probably fine with Kimberly-Clark since the return on investment for this ad is measured quite differently, I’m sure, given how the frequently misused Kleenex® brand is currently enjoying the lofty status as one of The 100 Best Global Brands. No doubt, Kimberly-Clark would like to keep not only this annointed status, but even more basically, it would like to keep the status as a brand and protectable trademark intact too.

In all likelihood, trademark types are behind this kind of advertisement, or perhaps more properly termed, “public service announcement,” and they also are probably behind the “brand tissue” phrase, closely following each use of the brand name Kleenex®. Both measures help emphasize to consumers that Kleenex® is a brand of tissue coming from a single unique source, not a type or category of tissue coming from a variety of different competing sources.

These kinds of precautions are important educational steps a trademark owner can take when a meaningful portion of the public may misuse the brand name as a generic term. They are designed to shape the public’s proper use of the trademark, and, hopefully, prevent the trademark owner’s ultimate fear: Genericide. Indeed, we previously noted Kimberly-Clark’s success to date on this very subject:

[W]hen the public misuses a famous trademark as a generic term and the brand owner risks losing exclusive rights through changes in the common meaning of the term. Avoiding the risk of this happening is something Kimberly-Clark® knows more than a little about, I suspect. No doubt, the legal team at Kimberly-Clark® has done an impressive job of preventing the KLEENEX® brand from following former brands like ESCALATOR, TRAMPOLINE, and ZIPPER, to name a few, into the unpleasant graveyard of genericide.

In the end, however, trademark owner’s efforts aside, the public will decide the issue of genericide, as we have discussed before:

Unlike the kind of trademark abandonment that automatically results from the single act of non-use of a trademark coupled with no intention at that time to resume use of the trademark, the kind of trademark abandonment that is also known as genericide, in contrast, results from a gradual change in the meaning of a trademark or brand to an unprotectable generic term. A change that shifts the meaning — understood by a majority of the relevant consuming public — from identifying, distinguishing and indicating a single source for a particular product or service to a designation that connotes no single source at all, but instead, an entire product or service category with multiple unrelated sources.

So long as the “majority of the relevant consuming public” (more than half) continue to understand Kleenex® as a brand, the exclusive trademark rights will remain intact.

If you read AdAge, congratulations, apparently we are part of the “relevant consuming public,” or perhaps you are viewed as someone who has influence on how the “relevant consuming public” perceives the Kleenex® brand.

I hope I did my part here, now it’s your turn.

–Dan Kelly, Attorney

I think Steve once remarked something to the effect that the Internet is employment security for trademark attorneys.  Road tripping is too.  On one such recent occasion, my wife remarked on the similarity of Culver’s blue oval signage to Ford’s famous blue oval.

Obviously, there is no issue here from a trademark infringement standpoint.  Culver’s is clearly in the fast food business, and Ford is an automotive company.  No, the intrigue for me was how I started seeing blue ovals everywhere!  First was Carrier:

Then I noticed the Nasonex logo on a note on my desk from a promotional notepad:

Then the one that put me over the edge, the one that has now made me believe that there is a proverbial vast right-wing marketing conspiracy to toy subliminally with my latent positive associations with blue ovals:  Malt-o-Meal.

As if this were not enough, Brad, reading over my shoulder, suggested I take a look at American Idol:

Yikes!  What’s more, Brad pointed out that Ford is a major sponsor of American Idol!

Joking aside, isn’t it kind of interesting that of these examples, several use a light line to help outline the oval?  From a design standpoint, it seems to enhance the overall shape and clarity of the designs that use it.  I have a secret hope that there is some James Burke-esque “Connections” link in the depths of humanity’s art history that might explain the blue oval phenomenon.  I wonder how many marketing surveys exist that show positive associations with blue ovals?  Is this just a case of sensitivity on my part to the phenomenon, or could I find similar phenomena with, say, green triangles?

While you lose sleep (or not) over these questions, feel free to pass the time running Internet searches for the words “blue oval” to see which of these blue ovals might claim to be the blue oval.  (Hints here here here here here and here.)

UPDATE:  The hits keep coming: