I’ve been meaning to write about a TV commercial for a while, but I keep forgetting to do it.

Perhaps I need the very product being advertised in the commercial, because what gained my attention was the clever tagline following the brand name: Prevagen. The Name to Remember.

Given the goods being sold, it struck me as a clever play on words, literally descriptive, but figuratively not, so the double meaning allows it to be registered without acquired distinctiveness:

Prevagen (apoaequorin) is clinically shown to help with mild memory problems associated with Aging.

I’ve never tried it, but since I’ve seen this ad more than a few times, I’m left wondering if I’m within their target market? So, I know I’m AARP eligible, but I can’t recall if I’m really a member.

Yet, I’m left wondering why the Prevagen folks haven’t sought separate registration for the tagline, standing alone, apart from the Prevagen brand name, as their specimen of use shows.

I don’t know, maybe they forgot?

Aaron Keller of Capsule noted, in another context, that “memory decay is abhorrent” for brands.

Anyway, going through this exercise has reminded me that we need to submit evidence of our continued use of this clever tagline — that I think I designed myself — for our legal services:

If You Want to Protect Your Name Remember this One®

And, when I search for the word “memory” on Ron Coleman’s Likelihood of Confusion® blog, this gem keeps coming up, perhaps the repetition exists for those with “mild memory problems.”

You might be wishing I’d be done by now, hoping I’ve disremembered what’s next, but I’m really feeling it currently, and our friend James Mahoney, has provided me with a hot tip that Tom Rush, American Folk Icon, will be performing at the Dakota Jazz Club in Minneapolis later this week.

You guessed it, or perhaps you’ve never memorized Rush’s hits or play list, but he’s the guy who has his Remember Song on YouTube, currently showing over 7 million views.

And, there’s more, before I omit something else, our friend Seth Godin also has weighed in on the subject of memory, I’m sure he hasn’t forgotten this one, nor has Nancy Friedman for that matter.

The good news is, as John Welch — from the TTABlog — reported way back in 2007, thanks to genericness, it would appear that anyone could sell card games called, you guessed it: Memory.

Apparently though, times and circumstances have changed, or the Rhode Island decision John discussed was not the final word, or perhaps someone simply failed to remember, because Hasbro, in fact, still maintains federally-registered rights in Memory for a card matching game.

Oh, by the way, back to our federally-registered tagline, searching the USPTO database for marks with both “name” and “memory” yields surprisingly few live ones, so broad rights, right?

Well, I’m not making this up, but as it turns out, there is presently a trademark fight, between two law firms, going on now for nearly five years at the TTAB and in Philadelphia federal district court, over the claimed mark: Remember This Name. Well, imagine that, and then commit it to memory.

Larry Pitts & Associates, P.C. is arguing that Lundy Law’s claimed Remember This Name mark is generic, and part of the public domain for anyone to use, oral argument is likely in January 2018.

There might have been more I wanted to say on this subject, I’m not sure, but I’m thinking that this has been plenty for a pleasant stroll down memory lane, at least for now. Do you agree?

‘Tis the Season for billboard ads like this, sorry Nancy.

Anyway, it reminded me of a very early post of mine on touch trademarks, here on DuetsBlog.

That early blog post noted Diageo’s federally-registered purple bag non-traditional trademark, and that a third party had slipped in at the USPTO to federally register a velvet touch mark for wine:

Although Diageo appears to have made no attempt yet to federally register or protect the velvet touch or feel of the Crown Royal pouch bag, American Wholesale Wine & Spirits, Inc., obtained a federal trademark registration toward the end of 2006 for a touch mark comprising “a velvet textured covering on the surface of a bottle of wine.”

[D]uring prosecution of the “velvet touch” trademark application for wine, the Trademark Office noted the sale of velvet bags for use in carrying wine and distilled spirit bottles, particularly the Crown Royal whiskey bottle example. However, convincing the Trademark Office that the “velvety touch” of the Khvanchkara wine bottle was so unique as to be inherently distinctive, American Wholesale successfully argued the difference between the “loose fitting bag” of Crown Royal and others as compared to how Khvanchkara’s “glass bottle is tightly encased within a velvety fabric,” and perhaps most importantly, noted: ” [T]he FEEL of a LIMP bag is quite different from the FEEL of a TURGID velvety surface attached to a wine bottle.”

[T]he Khvanchkara “velvet touch” registration served to bar registration of another company’s leather touch mark for wine, describing the claimed mark as: “[A] leather-like textured covering on the surface of a bottle of wine, brandy or grappa.” Here was the Trademark Office Examining Attorney’s analysis in refusing a leather touch based on the prior velvet touch: “Although the coverings are different materials, both are highly textured and closely cover the glass wine container. The marks are therefore highly similar in appearance . . . . The goods at issue are all wine. Purchasers could mistakenly believe that the goods come from a common source.” (Putting aside the obvious tactile differences between leather and velvet, why is the Examining Attorney comparing the “appearance” of the touch marks, shouldn’t the “texture and feel” be the appropriate point of comparison?)

Quite a bit has happened since that post from July 2009:

  1. The “velvet touch” registration for wine was cancelled under Section 8 of the Lanham Act;
  2. A different wine-maker has now federally-registered a “leather touch” trademark for wine;
  3. A fragrance dispenser with a “pebble-grain” texture and rubberized “soft-touch” feel is now inconstestable;
  4. A German company failed in its attempt to federally-register the tactile surface of a pharmaceutical pump dispenser; and
  5. Diageo apparently remains uninterested in pursuing any touch trademark registrations.

Last, the Bawls Energy Drink trade dress that includes “bumps” on the surface of the blue bottles is now “incontestable,” but functionality never goes away as a possible basis for invalidation.

All in all, it appears that touch marks remain one of the least popular type of non-traditional trademarks, at least for registration purposes — so, what is your favorite touch mark?

A day doesn’t go by without my GoogleAlert spotting another online reference to some purported example of “trademark bullying.”

It seems like just about any private assertion of trademark infringement will trigger the use of the term as a very public knee-jerk response.

As you know, we’ve spilled a lot of ink, writing about the topic of “trademark bullying” — and honestly, I’m growing a bit tired of the label, so I’m proposing a modest re-branding effort: Trademark Hooliganism.

As you might have imagined, under these new branding guidelines “trademark bullies” = “trademark hooligans” and, as for the lone actor, “trademark bully” = “trademark hooligan.”

Over 3,000,000 results currently exist for a Google search of “trademark bullying” — with DuetsBlog coverage consistently on the first page of results.

Alas, it appears from a similar Google search of “trademark hooligans” that I haven’t coined the term, so according to this effort, it necessarily will compete with other already existing uses referring to the well-recognized antics of certain known troublemakers.

What inspired this post? Hat tip to Nancy Friedman in choosing “hooliganism” as the word of the week on her award-winning Fritinancy blog just yesterday, where the term is shown to mean: “Rioting, bullying, and rough horseplay.”

—Nancy Friedman, chief wordworker, Wordworking

If you’re a serious bargain hunter or antique collector in the San Francisco Bay Area, your calendar is blocked out every year in early March for the region’s biggest flea market: the Oakland Museum of California’s White Elephant Sale, or “WES.” The sale started modestly more than 50 years ago as a fundraiser for the museum’s Women’s Board; today it’s a two-day event run by 1,000 volunteers and held in a 96,000-square-foot warehouse. In 2011, the sale raised $1.6 million for museum programs.

In the weeks leading up to the sale, the WES logo—a smiling white elephant on a red background—is hard to miss in ads and mailings.

 

So you can imagine my surprise when, in mid-December, I passed by a Goodwill store across the bay in San Francisco and saw this “I’m Dreaming of a White Elephant” sign in every window:

Had Goodwill teamed up with the Oakland Museum for a holiday promotion, I wondered? No, this was a different smiling elephant, in blue rather than red, facing right rather than left. That was obviously a “G” on the elephant’s back. And when I did a little research, I learned that Goodwill’s white elephant was part of a seasonal national campaign. It’s likely no one in the head office knew about the Oakland event.

Still—wasn’t a shopper likely to be misled by the similarity of the names and visual identities? Wasn’t some sort of trademark infringement going on?

As it happens, neither of these white elephants is a registered trademark, so this isn’t a question of infringement. But just because a name doesn’t have trademark protection doesn’t mean it isn’t a brand—or that likelihood of confusion isn’t an issue.

Here’s some background: “White elephant” came into English in the 17th century, when travelers brought back the story of the sacred white elephants of Southeast Asia’s Golden Triangle—Burma, Siam, Laos, and Cambodia. The gift of a white elephant was both a blessing and a curse, because the animal had to be maintained but couldn’t be put to work. By the mid-19th century, “white elephant” had become a metaphor for any expensive object or scheme. Churches began calling their bazaars “white elephant sales” and inviting donations of unwanted possessions. “White elephant” had been transformed from descriptive (for a living creature) to metaphorical (for an object similar to that creature) back to a descriptive—or even generic—term.

That’s why although you’ll find White Elephant trademarks in the USPTO database, they’re for playing cards, handbags, and imported foods—not white elephant sales. “White elephant sale” is too descriptive to pass muster with the USPTO.

As for what this means for the Oakland and San Francisco white elephants, here’s my take: For 53 years, “White Elephant” has been so closely identified with the Oakland Museum that it dominates its market. For Goodwill to borrow the term and to use a similar-looking identity, at a time of year when Oakland’s WES is beginning its own annual ad campaign, is somewhere between a gaffe and an encroachment.

There’s a lesson here not just for nonprofit organizations but for all brand owners: do your homework in every local market where you operate. And, if you can, protect your name and slogan!

In many contexts of our life experience, "fine" sadly seems to have drifted toward embodying mediocrity.

Consider this all too common dialogue: "How are you?" "Oh, I’m fine."  Or, perhaps, "Just fine."

Translation: "O.K.," "average," "acceptable," "passable," "satisfactory," "I can’t complain," "I’ve been better," or maybe "could be much better" . . . .

After all, how interested or excited does someone sound with their "fine by me" response to your generous invitation or suggestion? Especially when accompanied by emoticons or real-life eye-rolling body language?

Whatever happened to the leading dictionary meanings of this orally over-used four-letter-word?:

"Of superior or best quality; of high or highest grade: fine wine."

"Choice, excellent, or admirable: a fine painting."

Outside the context of wine, art, food, china, jewelry, dining, and perhaps blogging, extolling fineness does nothing to draw me in.

Perhaps this recognition is consistent with why the term appears in less than 1,500 live marks on the USPTO database. In fact, there are more dead marks including this term than live ones. In addition, it appears less frequently in the USPTO database than other laudatory terms like "best" or "choice" — by considerable margins. And many of the live marks that do exist lead the adjective with another one (i.e., SuperFine Bakery, Veryfine Juice, or Damn Fine Tea) — futher evidence the f-word seems emotionally weak standing on its own.

I’m left wondering whether the term’s meaning decline began with Toni Basil’s "one hit wonder" from 1982 entitled "Mickey," with the ad nauseam lyrics: "Oh, Mickey you’re so fine, you’re so fine, you blow my mind, hey Mickey, hey Mickey." Just a thought.

Having said all that, I’ll have to admit, I’m still definitely a sucker for quaint red neon signs appearing in frost-paned country windows reading "Fine Dining," even when the exterior of the establishment might speak otherwise or even beg to differ. My family certainly can attest that these dining adventures have led to mixed reviews over the years.

In the distant world of comic book grading, a "fine" grade is only a 6.0 on a 10.0 scale, according to CGC. Worse yet, a "fine" designation using the Sheldon Scale of Coin Grading yields a meager 12 out of a possible 70 score.

I’d love to hear from our expert naming friends on the question of how and why the word "fine" has lost its "superior" meaning, at least in so much of our day-to-day common English usage.

Now, when it comes to the context of lawyering, "fine" can mean something much more negative than mediocre: As in, you better read the "fine print" in the contract!

References to "the fine print" also can have negative or controversial connotations in the world of advertising and marketing, as in the context of deceptive or misleading advertising.

So, in my humble effort to rejuvenate the "superior," "excellent," "highest grade," and "admirable" meanings behind the four-letter-word "fine," below the jump you’ll find twelve of my favorite and mighty fine guest posts from a diverse collection of our fine guest bloggers during 2011.

Continue Reading When it Comes to Guest Blogging: Fine or Just Fine?

—Nancy Friedman, Chief Wordworker at Wordworking and author of Fritinancy

Imagine my surprise—as a name developer, beauty-brand fan, and trademark aficionada—when I saw this sign in my Oakland, California, neighborhood back in March.

It wasn’t the prospect of a new nail spa that piqued my interest; our local commercial strip already has dozens of mani-pedi shoppes. No, it was “Aveda” that caught my eye. A major beauty brand—in our little neighborhood? Not worthy!

Now, if you don’t buy cosmetics or patronize salons you may not be aware of Aveda, so allow me to explain. Aveda was founded in 1978 in Blaine, Minnesota, and is still based there—although in 1997 it was acquired for $300 million by global cosmetics conglomerate Estée Lauder. Aveda, which sells skin- and hair-care products in its own stores and in professional salons around the world, is known for organic ingredients and environmental leadership. “Aveda” is pronounced “a-vay-da”; according to company lore, the name is a Sanskrit word meaning “all knowledge.”

Although I was familiar with the brand, I hadn’t heard of Aveda nail products, let alone nail “spas.” But that sign in my neighborhood certainly resembled the Aveda wordmark. Yep, it looked legit.

Maybe, I reasoned, my neighborhood was going to be a test case for a new brand extension. Thrilling!

Alas, my dreams of brand grandeur and a really great pedicure were dashed a few weeks later when the permanent sign went up:

“Aveda” had morphed into “Aveida” and “spa” into “salon.” Even the URL had changed—from avedanailspa.com to aveidanailspa.com … and, a little later, to aveidanailsalon.com. The email I received from the business did not suggest a big, Minnesota-based parent company.

However you spelled it, something peculiar was going on here. It was becoming obvious to me that Aveda of Minnesota—and of Estée Lauder—was not behind this new enterprise. This looked instead like a business that had been bootstrapped by earnest immigrants with a less-than-solid grasp on English and on the US legal system. In short, it looked like trademark infringement, and the late-in-the-game spelling change was not a solution: I’m a name developer, not a lawyer, but I strongly suspect “Aveida” wouldn’t pass the likelihood-of-confusion test.

For the record, I contacted the real Aveda twice to request a comment. I’m still waiting for a response. Meanwhile, what would you lawyers do about this?

—Nancy Friedman, Chief Wordworker at Wordworking and author of Fritinancy

I’m a native Angeleno who’s lived for many years in the San Francisco Bay Area. I was happy when the San Francisco Giants won the World Series last year, but I’ll never outgrow my childhood enthusiasm for the Los Angeles Dodgers. So it was with considerable interest that I learned that, back in August, the Dodgers had filed for trademark protection of “Los Doyers.

“Los Doyers” is how the team’s name is pronounced by many native speakers of Spanish; the pronunciation may have originated with former Dodgers outfielder and current coach Manny Mota, a native of the Dominican Republic. According to L.A. Daily News sportswriter Tom Hoffarth, sportscaster Petros Papadakis began using the nickname on the air some years ago. Not surprisingly, local entrepreneurs saw an opportunity to cash in, and “Los Doyers” T-shirts and other paraphernalia, some of it using a close approximation of the team’s official typeface, began appearing in street vendors’ stalls and even in malls.

Non-official “Los Doyers” T-shirt from here.

Then, toward the end of the 2010 season, L.A. resident Roberto Baly, who blogs at Vin Scully Is My Homeboy*, noticed “Los Doyers” T-shirts for sale for $30 a pop at Dodger Stadium, which could only mean that they were now team-approved. Baly did some sleuthing and discovered that the team had filed in August 2010 for trademark protection of “Los Doyers” in class 25 (clothing) and class 41 (entertainment services, including fan clubs and fantasy leagues).

At least one blogger, Dos Borreguitas, deemed the move a win: It was, he wrote, “a total nod to the huge Spanish-speaking population in LA, and a score for the Spanglish language.”

Others harrumphed. “Many Latinos feel that they are having part of their culture exploited,” wrote SportsBiz.

Truth to tell, it’s not only Spanish-speaking fans who’ve felt exploited by the Dodgers in recent years. The problem, say many, goes back to 2004, when Frank McCourt, a Boston real estate developer (not, I hasten to add, the late Irish writer), paid Rupert Murdoch’s Fox Entertainment Group $430 million for a controlling interest in the Dodgers. McCourt became chairman of the Dodgers and of Dodger Stadium; his wife Jamie has served variously as vice chairman, CEO, and president of the organization. To cover the cost of buying the team, McCourt has raised ticket and concession prices every year, and in 2007 he raised the cost of parking from $10 to $15 to pay for a new parking plan—which turned out to be a disaster.

Then the story turned into a soap opera. After the Dodgers were eliminated from the 2009 playoffs, Jamie McCourt was fired as CEO. She filed for divorce shortly thereafter. Frank McCourt accused her of having an affair with her bodyguard and changed the locks on her office. The divorce is still unresolved; in December 2010 a judge invalidated a post-nuptial marital property agreement that Frank McCourt claimed gave him sole ownership of the Dodgers. Jamie McCourt’s lawyers want her to retain co-ownership.

The “Los Doyers” gambit, said some local journalists and bloggers, added insult to injury. Even though the McCourt divorce trial was in recess, wrote USA Today, “that hasn’t stopped the Dodgers from finding new ways to annoy their fans.”

Meanwhile, up here in the Bay Area, the San Francisco Giants, in a nod to their many Hispanic fans, occasionally take the field wearing “Gigantes” uniforms. (That’s “Giants” in Spanish.) The custom dates back to 2005, when the team dedicated a statue to Juan Marichal, the great Spanish-speaking Dominican pitcher who played for the Giants from 1960 to 1973. If you search, you can find Gigantes fanwear, too.

As far as I can tell, the Giants have never sought trademark protection for “Los Gigantes.” Oversight—or a kinder, gentler way of playing ball? You be the judge.

Photo source: This Is Not Your Practice Blog.

___

*Vin Scully has been the Dodgers’ radio announcer since 1950, when the team still played in Brooklyn.

—Nancy Friedman, Chief Wordworker at Wordworking; and author of Fritinancy

Like you, I’m counting the days. Unlike you, perhaps, my countdown ends Thursday, with Festivus, the holiday “for the rest of us” popularized by Seinfeld more than a decade ago and kept alive through endless syndication—and through some impressive efforts on the marketing and legal fronts.

You’ve never heard of Festivus? Gather ’round while I recount the legend.

The Seinfeld character Frank Costanza, father of George, claimed in a December 1997 episode (“The Strike”) to have invented the holiday after finding himself in a department-store tug-of-war with another Christmas shopper over a doll. “I realized there had to be a better way,” Frank said solemnly. The Costanza Festivus came with a slogan (“A Festivus for the Rest of Us”) and a set of rules: It’s celebrated on December 23, its main symbol is a bare aluminum pole (tinsel, said Frank, would be “distracting”), and its principal rituals are the Feats of Strength and the Airing of Grievances.

In fact, Festivus predates Seinfeld by three decades. According toa 2004 New York Timesstory, it was invented in 1966 by Dan O’Keefe, a Reader’s Digest editor living in Chappaqua, New York, as a celebration of his first date with his wife. No aluminum pole was involved. The word “Festivus” “just popped into his head,” the Times reported—although surely it was inspired by “festival” and the rules of Latin noun-formation. Festivus became a family holiday after the births of the O’Keefe children, one of whom, Daniel, grew up to become a writer for Seinfeld, where he turned his family’s quirky tradition into a pop-culture meme.

Seinfeld went off the air in 1998, but Festivus has enjoyed a surprisingly robust afterlife. In 2000, the ice cream company Ben & Jerry’s introduced a limited-edition Festivus flavor: brown-sugar ice cream with gingerbread cookies and a ginger-caramel swirl. After it was discontinued, fans protested until the company brought it back in 2004. (The flavor was finally retired in 2006, but you can request its return.) For a while, at least, you could pair that ice cream with Festivus wine, a celebratory quaff produced by Pecan Ridge Vineyards in Okemah, Oklahoma (!). Pecan Ridge still claims trademark protection for “Festivus, A Wine for the Restivus.”

If you’re a Seinfeld traditionalist—not that there’s anything wrong with that!—Wagner Company in Milwaukee manufactures and sells Festivus poles; it filed for trademark protection of “Festivus Pole” in 2007. In 2005, Wisconsin Governor Jim Doyle, a self-professed Seinfeld fanatic—he claimed to have seen every episode eight times—displayed an unadorned Festivus pole at the governor’s mansion in Madison. He later donated it to the Wisconsin Historical Museum.

Naturally, there are Festivus books. On eBay I discovered Festivus T-shirts, Festivus jewelry, and desktop Festivus poles in three sizes: Deskivus Minimus, Deskivus Maximus, and Deskivus Ultimus. And earlier this month, the Atlanta-based low-fare airline AirTran offered a 12-day Festivus sale on airfares. “Our research shows that high fares are commonly cited in the Festivus Airing of Grievances,” Tad Hutcheson, AirTran’s vice president of marketing and sales, told Portfolio magazine.

But the most persuasive evidence that Festivus has gone mainstream came a couple of weeks ago in the form of a news story out of Orange County, California. It seems that “longtime county inmate” Malcolm Alarmo King—a convicted drug dealer also suspected of being in the United States illegally from Liberia—was displeased by the cuisine being served at Theo Lacy Jail. In particular, he didn’t fancy the salami. Although he isn’t Jewish, he asked for and received kosher meals, which he claimed were healthier. “That didn’t sit well with the Sheriff’s Department – which pays for the food,” the Orange County Register reported. “Kosher meals are more expensive than the regular jail fare–and reserved for those with a religious need.”

So King tried again, claiming at his sentencing hearing to be a believer in Festivus. It worked, and King received three salami-free meals a day for at least two months.

Happy Festivus to all of us!

On a recent pilgrimage to my home town to visit the University of Iowa and to see the Hawkeyes play football again in hallowed Kinnick Stadium, I discovered that a rather rudimentary and perhaps impolite (or potty mouth), yet passionate (sorry Nancy) branding technique, is alive and kicking in Iowa City. I also learned what now appears to go hand-in-hand (or, perhaps leg-in-hands as opposed to a single hand) with Hawkeye football games, at least those played on their home turf:

Somehow the static sign doesn’t do justice to the in-person-experience, so try the YouTube video.

Once again, I’m reminded of Anthony Shore’s succinct naming insight:

There was a time when a simple, honest name was good enough.

Anthony, it appears those times are alive and well (or at least kicking) in the middle of the heartland.

Having said that, I’m also reminded of Liz Goodgold’s caution over "Potty Mouth Marketing: Six Reasons Why Vulgar Language is the Curse of Your Brand".

Trademark Office insights below the jump.

Continue Reading Primitive & Impolite, But Non-Vulgar Trademark & Naming Technique?