Since launching almost ten years ago, we’ve focused on helping and guiding marketing/branding professionals, as we seek to facilitate their graceful collaborations with trademark professionals.

Our approach has strived to deliver valuable information, without the typical jargon and legalese.

It seriously borders the obvious to say that folks who connect with us here know the importance and value of brands and trademarks, and probably know far less about patents and patentese.

Could novelty be shown, sharing this with patent folks wanting more comfort with trademarks?

In a month, on September 28, at 10:15 AM, I’ll be sharing some of this knowledge at the Midwest IP Institute, in Minneapolis, with a brand new session specifically designed for in-house patent and intellectual property counsel, especially those who may believe that patents are more important than trademarks, called: Trademark Survival Guidance for In-House Patent and IP Counsel.

I’m not saying that one is more important than the other. Nor are there any equivalents here.

What I am saying is that over the last quarter century intellectual property expertise has become far more subspecialized. I’ve witnessed this development first hand over the course of my career. Yet, not all companies have dedicated in-house trademark counsel, so in-house patent counsel often is expected to have at least a working knowledge of the ever-changing trademark landscape.

I’ll be leading a discussion with a very talented group of patent and intellectual property counsel:

  • Paul Sherburne, Associate General Counsel and Intellectual Property Attorney, Graco Inc.
  • Greg Smock, Patent Counsel, Teleflex Incorporated
  • Kirsten Stone, Assistant General Counsel – Chief Intellectual Property Counsel, H.B. Fuller Co.

If you have a strong patent background and want more trademark footing, this session is for you.

If you know patents inside-out, but search for more comfort in trademark matters, this is for you.

If your knowledge of the patent landscape is vast, but you seek to be much better than simply dangerous, when it comes to navigating thorny trademark issues, you won’t want to miss this.

Why? Because we will help you improve your handling and supervision of trademark matters.

In fact, you will learn and apply valuable trademark knowledge to your day-to-day work, and take away the top six trademark tips that will improve and strengthen your trademark advice to business leaders and marketing professionals. Are we speaking your language yet?

If you’re wanting to learn how to translate patentese into valuable trademark skills, here you go.

By the way, I’ll be expanding my patent knowledge and learning more patentese later today (and more than I knew yesterday) at the USPTO China Intellectual Property Road Show at the University of Iowa College of Law, hosted by Dean Kevin Washburn and Professor Jason Rantanen.

Nearly everyone in the IP community is talking about the hilarious viral Velcro music video released last week. Hat tip to Patently-O, Martha, and Brett. The “behind the scenes” video is here.

We’ve spoken before about nervous trademark types, behind the scenes doing their level best, and taking steps to try to avoid unwanted genericide of the trademarks they are charged to protect:

“Nervous, I say, because these types of advertisements frequently are designed to help prevent unwanted genericide of a trademark. The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.”

Velcro has been on our Genericide Watch list, and Wikipedia notes it is a trademark frequently used as a generic term. So, hats off to Velcro for letting their attorneys’ hairs down on this one.

And congrats to Penn Holderness and the rest of the WalkWest creative team, for helping give the impression in the Velcro video that at least some nervous lawyers can still have a sense of humor.

Julie Barry, Director of Global Brand, Velcro Companies, explained the Velcro video in this way:

“We’re here in North Carolina, shooting our ‘We are the World’ video which is an educational video explaining to folks details about the Velcro brand trademark and why it’s important that people refer to the mechanical fastener as ‘hook and loop.'”

Actors posing as lawyers, flanked by real Velcro lawyers, appear agitated at times, imploring listeners to not say Velcro, but instead “hook and loop,” or “our trademark will get killed,” “we’ll lose our circle ®,” and “our trademark goes away.” At the same time, Velcro is fully admitting the “First World” melodramatic nature of this worst case scenario and unfortunate situation.

Maybe it’s just me, but I’ve never heard of a “hook and loop” fastener before now, so the video certainly accomplished that bit of education. I’d be surprised, however, if the video moves folks to embrace the stiff and clunky six syllable “hook and loop fastener” generic phrase, over Velcro.

Perhaps what follows is one small example of where I’ve captured “at least some of the sparks” spinning from my mind’s eye, so please bear with me, but as I watched and listened to the Velcro video more times than I’d like to admit (kind of an addictive musical hook), the rapid repetition of “hook and loop” triggered thoughts of “hook and ladder,” then “chutes and ladders,” and how ladders can lead up to rewards while chutes can take you for a ride straight to the bottom:

Given those stark alternatives, given how a brand that deteriorates to the point that its primary meaning is perceived to be more generic than it is perceived a brand (is not a brand at all, under the law), and given a trademark owner’s understandable desire to try and influence and build up the primary brand meaning among the relevant consuming public, it’s worth asking whether the humorous Velcro video helps to move that critical needle. In other words, does it act as a ladder?

We’ve cautioned before that a brand designed to launch an entirely new category must also spend valuable time and effort in creating and donating to the public, an acceptable generic term that the public easily can embrace, so when the applicable patents expire and exclusivity is lost, the trademark doesn’t travel straight down the chute to genericness:

Brand owners launching a new category of product or service do well to design a simple generic category name too.”

“Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.”

Is “hook and loop” going to get the job done? Will it help prevent a death by a thousand cuts?

“Hook and loop” is certainly more of a ladder, even a rescue “hook and ladder,” than the extreme generic identification of goods found in the first Velcro trademark application from 1957:

“NOTION-NAMELY, A SYNTHETIC MATERIAL SOLD IN RIBBON, SHEET, OR PIECE GOODS FORM, SAID MATERIAL HAVING COMPLEMENTAL PARTS WHICH ADHERE TO EACH OTHER WHEN PRESSED TOGETHER AND ADAPTED FOR USE AS A CLOSURE, FASTENER, OR BUTTON FOR CLOSING GARMENTS, CURTAINS, OR THE LIKE”

And, unlike Rollerblade who seriously delayed in donating a bite-size generic category term to the general public (“in-line skates”), Velcro seems to have been fully invested in “hook and loop” going all the way back to at least as early as 1975. Query whether the entry of the “hook and loop fastener” phrase closely tracks the lapsing of the patents (as the video mentions) “forty years ago.” If so, perhaps it still came twenty years too late?

Either way, I’m seriously wondering whether Velcro’s tongue-in-cheek reference to a “scratchy and hairy fastener” might be more easily and readily embraced by today’s general public as the generic alternative to genuine Velcro branded products.

I’m also left thinking that the video begs the question of who is the intended audience. In other words, who are the “folks” that Velcro would like to reach with this creative video?

I’ve always thought of Velcro as more of a B2B brand, but in researching this post, I see that I’ve missed some of their general consumer products, like general purpose straps, general purpose plastic bagschildren’s toy blocks, adhesive cementmedical splints, and hair rollers, for example.

Contractual efforts are probably the most effective way of controlling how the Velcro trademark is used by those who purchase authentic product from Velcro and incorporate Velcro fasteners into their own consumer products. And, when it comes to competitors who might be inclined to misuse the Velcro trademark, the cease and desist letter, and/or lawsuit is probably most effective.

So, perhaps the general public is the intended audience of this educational effort. If so, I’m not sure the effort anticipated how many in the general public don’t like to be told what to say and do.

Moreover, let’s face it, the video’s referenced “trademark laws being broken,” aren’t being broken by the general public speaking about the brand or a competitor’s alternatives to the brand. Nor are they being broken by the media who reports and writes about all kinds of things and happens to use “velcro” in lower case and in a generic sense.

I do seriously hope the video will strike the right chord with these important audiences, as they will have a significant impact on whether the brand is able to climb the ladder of distinctiveness and fame or slides down the chute to genericness.

For those still with me and wondering, while I’ve questioned the seriousness of the risk for genericide when intentional and controlled brand-verbing is involved (and the 9th Circuit’s recent decision affirming the survival of the Google trademark appears to validate the difficulty of bringing a trademark all the way to the ground zero), the Velcro mark seems different, as the generic uses don’t involve verbing, they go straight to nouning and naming what the product is, by the way, a far more efficient name for a “hook and loop” or “scratchy and hairy” fastener.

Which of the present options are most likely to roll off the tongues of those who matter?

Love the new Minnesota State Lottery advertising slogan: I’MN. Or, as one of my college age sons often says, when he’s in agreement with someone’s idea or proposal, I’m down.

The lottery slogan cleverly plays off the affirmative and adoptive slang phrase “I’m in” (i.e., “Count me in”) — it also plays off the MN abbreviation for Minnesota. Congrats, Periscope.

How long before we start to see brand owners saying “count me in” when it comes to using the similar meaning “I’m down” phrase as a meaningful adoptive rally cry for action?

Maybe a more direct and hip version of Apple’s I’m a Mac campaign? Or, is the I’m Down phrase, simply too confusing (and assumed negative) across the general consuming public?

Dear readers and especially our beloved marketing types, who’s down for sharing their wisdom on the subject?

Last week, we discussed Caribou Coffee’s billboard ad referencing transparency — this week another installment from Caribou’s current Minneapolis skyway billboard campaign:

CaribouPronounce

That one made me think of this one, a post from a few months back about Kind nutritional bars and their Ingredients You Can See And Pronounce tagline and trademark:

IngredientsTagline

Marketing types, if you were a brand manager for Kind, would you want to extend that feeling toward Caribou’s advertising use of: “INGREDIENTS — you can — ACTUALLY PRONOUNCE”?

Trademark types, what say you? Does the omission of the word SEE make a material difference? Does the addition of ACTUALLY make a material difference? Actually?

How significant would it be to you that Kind appears to have extended that feeling, directly or indirectly, by not opposing, to a salad dressing brand using Handcrafted With Ingredients You Can Pronounce?

Or, has the phrase “ingredients you can pronounce” just become too common any longer to have a meaningful scope of protection from a trademark perspective?

Last, as to the subject of trademark pronunciation, have you forgotten about these little gems from the archives?

The Minnesota State Fair continues to provide endless blog fodder for those who care about intellectual property. Last week, we wrote about a State Fair vendor concerned about its claimed, but unarticulated “intellectual property.”

This week is a good reminder that brand owners have a lot to be concerned about what goes on with their brands in third party vendor booths, and they’d do well to deputize some brand marshals and sheriffs (not Barney Fife) to keep a look out for unauthorized trademark uses.

DepMarshBadgeDepSherriffBadge So, when brand fans and loyalists bring potential trademark infringements to the attention of the brand owner, at a minimum, they should be thanked, if not rewarded. You’re welcome.

Employees and distributors also can be helpful eyes and ears in the marketplace, and the more they understand what the legal department is focused on, the more helpful they can be in flushing out potential trademark infringement targets. Trade shows also can be a fertile ground of trademark enforcement activity, and time well spent for members of the brand’s legal team too.

As a fan of any of these brands, would you bring Candles by Brandles to their attention? Would you pay $35 for a liquor candle with no brand on the glass? Are royalties due the brand owner?

BrandlesSign

The entire business model for Brandles is premised on this straightforward and seemingly simple principle: “Your Favorite Brand Made Into a Candle“:

BeamCandleFireballCandleAccording to the Brandles website: “Brandles are a green product and are all made from recycled bottles.” There is no disclaimer language anywhere on the site and no indication of whether these are licensed trademark uses. I’m guessing they are not and no royalties are being paid.

The website claims the business has been running since 2003, but my review of their Internet domain name registration shows it wasn’t created until 2011.

Either way, no matter how long this business has been ongoing, presumably a trademark type cleared this business model, the question is, on what basis? Nominative fair use? First sale doctrine? It’s not at all clear to me that either applies here, especially in the absence of any overt disclaimer. Moreover, it seems entirely plausible that consumers would mistakenly believe the brand owners authorized the use of the brands in connection with the candles, especially post-sale, and if so, a likelihood of confusion should be provable. If not, there’s always dilution.

What about these night lights, should brand owners be even more concerned about these analogous products, since they are electrical in nature — what if a defect results in a fire that burns down a home where people are injured or die?

RollingRockNightLightCoorsNightLightIt certainly seems like something a brand owner ought to be able to control if it wanted to limit its exposure to product liability claims and potential brand tarnishment.

Brand deputies, what say you, if you manage a brand, do any of these uses bother you?

Trademark types, would you hesitate to send a cease and desist letter on any of these?

Seth Godin writes a post today that resonates with our continued drum beat about a corporate chasm that can divide those on the same team.

In his post, Seth writes about the “inevitable split between the people who market what gets made and the people who design what gets made.”

He notes the difficulty of having those roles merge into one, but the enormous payoff when it is pulled off, citing JetBlue and Apple as examples.

One friendly amendment we’d offer is to not forget about the role and importance of flexible, creative, and team-oriented trademark and intellectual property counsel.

So much can be achieved when designers, marketers, and trademark types are working together in harmony as one, even if those roles cannot be filled by one person.

MillerCoors is currently running this Lite Beer ad, promoting the limited edition original can, and taking credit for inventing the light beer category, way back in 1973.

It is a great reminder that despite Miller’s determined and long-protracted litigation over its attempt to own the word LITE as a trademark for beer, in the end, it was unsuccessful because the misspelled word LITE was found generic — along with the correctly-spelled word LIGHT — for a type or category of beer, namely, low calorie beer.

What MillerCoors does own — as a federally-registered trademark — is the visual representation of the word LITE in the unique script to the right (with the generic word LITE disclaimed):

With the phonetically identical words LITE and LIGHT generic for low calorie beer, and part of the public domain for anyone to use, it isn’t surprising that others have gotten into the market with their own federally-registered versions of the misspelled LITE category term for beer: Falstaff Lite, Lite My Fire, Mike’s Lite, Arctic Lite, Lite is Good, and Duff Lite.

So, if you can’t legally own the category term, maybe you can take credit for inventing it.

Marketing types, I ask you, how much is that credit worth to a brand?

Enough to make your main competitor spell the word correctly?

Trademark types, can you think of other similar examples?

Here is a blast from the past: The D-Word: What Ever You Do, Don’t “Describe” Your Brand!

And, here is something a little more recent that I found on a recent business trip to Las Vegas:

So, let’s file this one in the AlphaWatch file.

There appears to be no tiring of single-letter branding.

Remember the V Bar, also located in Las Vegas?

Here’s yet another example of single-letter branding in Sin City:

Marketing types, thoughts about single letter branding?

Legal types, thoughts about the possible scope of rights?

By the way, does anyone call Gatorade by the letter G, nearly five years later?

 

Apparently iPho by Saigon, a Vietnamese restaurant located in St. Paul, Minnesota, is quite good.

The logo design is eye-popping, and dare I say clever, but does it cross one of the many legal intellectual property lines?

We can all agree as to the source of the “inspiration” for this visual identity, right? Our little friend located in Cupertino, California:

But, can we agree on whether this use constitutes infringement or dilution?

Marketing types, would you be proud of creating the visual identity for iPho?

Following up from yesterday, is this a job for LogoThief?

Trademark types, what is the strongest objection to be made here, and which side would you rather be on, assuming you could be fully paid for your efforts? I know, I know, a highly unrealistic hypothetical, unless of course, insurance coverage might level the playing field.

The iPho name, if shown differently, could be used without raising any eyebrows, no doubt.

Whether or not you’re a fan of pho, who says phooey when confronted with this visual identity?

We continue to anxiously await the Trademark Trial and Appeal Board’s decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, especially given the Board’s recent genericness ruling in Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., finding FOOTLONG generic for “sandwiches, excluding hot dogs.”

The question at issue in Frito-Lay’s trademark challenge to registration by Princeton Vanguard is whether PRETZEL CRISPS is generic for the goods depicted above — “pretzel crackers” according to Princeton Vanguard.

As you might have imagined, this high-stakes trademark dispute involves a real battle of each side’s trademark survey experts, both attempting to show how the relevant consuming public understands “pretzel crisps.” Both sides agree that the “primary meaning” controls, but they appear to disagree on whose views are relevant to the determination.

As you will recall from previous writings here, the “primary meaning test” amounts to a “majority rules” test of genericness. In 1938 the U.S. Supreme Court ruled “shredded wheat” generic for a type of cereal in Kellogg Co. v. National Biscuit Co.:

“But to establish a trade name in the term ‘shredded wheat’ the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. This it has not done.”

The survey commissioned by Frito-Lay found that fewer than half of respondents (41%) thought “pretzel crisps” was a brand name and an equal percentage of respondents (41%) thought “pretzel crisps” was a generic product category name, and the remaining respondents (18%) were unsure.

Princeton Vanguard argues that adequate “gate-keeping” was lacking and more respondents should have been excluded from the survey, especially those unable to demonstrate they knew the difference between certain brand/generic examples used in the screening questions. The more exclusive survey commissioned by Princeton Vanguard found that over half of respondents (55%) thought “pretzel crisps” was a brand name, less than half of respondents (36%) thought it was generic, and the remaining 9% were unsure.

The parties appear anxious for the Board’s decision as well. Within the last few weeks, both sides have sent letters to the panel of TTAB judges who heard oral argument back in July, explaining how the Board’s recent precedential decision in Sheetz works to their favor. Here is Princeton Vanguard’s letter, and here is Frito-Lay’s response letter.

Yet, in the end, after all the slicing and dicing of the competing surveys and the supporting testimony from the survey experts — similar to the result in Sheetz where the Board highlighted and showed a picture of an early generic use by Subway depicting Footlong in the same manner and style as 6″ Sub and Wrap — my prediction is that Princeton Vanguard will be haunted by a different picture that is also worth a thousand words (or at least one that Princeton Vanguard doesn’t want to hear):

Frito-Lay characterizes this image in this way:

For “nearly six years, Applicant presented ‘Crisps’ as a generic term in the nutrition facts box. Applicant then substituted ‘Crackers’ for ‘Crisps’ using the same typeface, size, position, and capitalization, indicating to consumers that the two terms are synonymous.”

What do you think, is this another example of legal and marketing types not being on the same page sufficiently early to best position a designation for trademark protection?