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

By now, you’re familiar with my enjoyment in capturing and sharing new billboard signage that hits the streets of the Twin Cities. Question, what tagline might have inspired this one?

Was the Minnesota Renaissance Festival inspired by Nike’s famous “Just Do It” tagline?

Almost four years ago now, we noted — in this gem from the archives — the following about Nike’s famous “battle cry” tagline when we discussed “Just Ship It” reluctance with Seth:

“The irony in Nike’s ‘battle cry’ tagline is that its trademark enforcement program for the ‘Just Do It’ tagline and mark is not a model of clarity or simplicity, much less one easily understood by those paid to advise clients about the risks of potentially conflicting trademark rights.”

We further noted that Nike had only filed two oppositions with the TTAB enforcing its “Just Do It” tagline since Nike’s previous resounding TTAB win against Just Jesu It back in 2011.

Since that October 22, 2013 blog post gem, Nike appears to have stepped up enforcement activities at the TTAB, filing twenty “Just Do It” oppositions at the TTAB, with all concluded proceedings showing victory for Nike:

  1. Just Fake It for clothing;
  2. Just Mak’in It for clothing;
  3. Just Fix It for golf equipment;
  4. Just Chew It for chewing gum;
  5. Frac-N-Hose Just Frac It & Design for clothing;
  6. Life Just Live It for clothing (opposition withdrawn after “Just” removed from applied-for-mark);
  7. Just Did It for clothing (Board granted opposition, sustaining likelihood of confusion and dilution by blurring grounds);
  8. Just Choose It for clothing;
  9. Just Weld It! for clothing;
  10. Just Be It! for clothing;
  11. Just D!dIt & Design for online marketplace services;
  12. Just Taste It! for dietary supplements (still pending);
  13. Just Beer It! for clothing;
  14. Just Ripp It for clothing;
  15. Just Dough It for cookie dough;
  16. Just Girl It! for group coaching services;
  17. Just Bring It for clothing (WWE withdrew application with prejudice);
  18. Just Taste It for advertising services (still pending);
  19. JustSayIt for books and ebooks concerning positive oral communication (still pending); and
  20. JUSTKIT for clothing(still pending).

This recent timeline of oppositions seems to show more clearly that third party trademark applications employing the “Just __ It” format will draw attention/opposition from Nike.

Interestingly, since it doesn’t appear that the Minnesota Renaissance Festival is seeking federal registration, we might never know whether Nike objects to the use shown above.

Instead of tweaking the middle term of Nike’s tagline — “Do” — as all of the oppositions above show, the Renaissance Festival’s format plays on the leading word “Just,” substituting “Joust,” a term with special meaning in the context and theme of its festival.

Is this a material difference that justifies peaceful coexistence, or is it simply a new form of “battle cry” that similarly will be linked to Nike?

If you were advising Nike, would you recommend activating a trademark “battle cry” against use of “Joust Do It!” in the above billboard advertisement?

What if this tagline became an annual tradition for promoting the Renaissance Festival’s entertainment services?

What if a federal trademark or service mark application was filed?

Finally, what if the tagline was applied to clothing to promote the Renaissance Festival?

Hat tip to Sri for capturing this image of a passing by backpack, illustrating how much a little spacing can end up making all the difference in the world, when it comes to brand identity:

To the extent, IV IKE, I VIKE, or even IVIKE might be a legitimate backpack brand, when the letter “I” is tilted and compressed together with VIKE, it’s difficult not to see what seems likely to be the intended meaning and infringing impression: NIKE.

Compression undoubtedly works to the advantage of the provider of the IV IKE, I VIKE, or IVIKE branded backpack, and to the disadvantage of consumers by deceiving them not only as to source, but likely fraud as to the federal registration status too.

Probably no surprise, but my brief search revealed no such federal registrations and the website leads to a collection of apparent Chinese characters, anyone able to translate?

-Wes Anderson, Attorney

Whether or not you agree Michael Jordan is the greatest basketball player of all time, he is certainly well-known. And after an over four-year battle, China’s trademark courts have agreed.

Michael Jordan and his JORDAN brand have been a staple of Nike’s shoe and apparel business for over thirty years. Nike so values the “Jumpman” logo that it transcends basketball – the Michigan Wolverines, for example, wear the logo on jerseys for all sports, including football.

But in China, where trademark rights belong to the first party to file a trademark, rather than the first to use, the JORDAN wording has effectively belonged to another company. A sportswear company called Qiaodan Sports owned the rights to the JORDAN mark in Chinese characters – Qiaodan, pronounced “chee-ow-dan,” is a transliteration of JORDAN used in China and elsewhere for over thirty years. Qiaodan operates some 6,000 stores in China, and its associated logos also bear a striking resemblance to the Jumpman logo:

Screen Shot 2016-12-16 at 6.30.15 AM

Qiaodan is, essentially, recognized as a knockoff brand in China. So, Jordan brought a lawsuit against Qiaodan in 2012, to seek cancellation of Qiaodan’s Chinese-character trademarks and, separately, a suit to enjoin use of those marks in China. What followed were a series of losses in court. China’s trademark laws do not favor the first to use, so for unregistered mark owners, Chinese trademark enforcement can be near impossible, unless the mark owner can show its mark is “well-recognized” in China.

Qiaodan had registered the Chinese character mark some 10 years before Jordan first objected, although Jordan’s legal team claimed use of the JORDAN name in China dating back to the 1984 Olympics (which were broadcast in China).

Lower courts held that the Chinese character mark would not be squarely associated with Michael Jordan, and that Qiaodan’s “human body in a shadowy design” logo was not recognizable as Jordan.

But finally, earlier this month, Jordan prevailed before the Supreme People’s Court, China’s highest court. It found the Chinese character mark for JORDAN should be returned to China’s trademark office (after which, presumably, Jordan can obtain a registration of his own). And the fight is not yet over – a separate lawsuit in Shanghai is pending over Qiaodan’s use of the JORDAN name.

qiaodan2

That Jordan had to spend such immense time and resources to obtain this decision would surely scare away most “mere mortal” brands, even well-known ones. But there is a valuable lesson here for brands with an international presence.

First, it’s advisable to apply for marks in China as soon as practicable. Unlike other jurisdictions (such as the United States), China does not require proof of use for a trademark to obtain registration. Therefore, the concept of a “defensive registration” exists in China, but not the U.S.

And in most cases, a trademark may not be challenged on grounds of non-use for three years after registration. So long as some genuine good faith use is made in China during that three-year period, the registration will generally avoid a non-use cancellation.

Second, this should apply equally to the concept of “transliterated” marks in Chinese characters (the subject of the JORDAN decision above). A Chinese trademark specialist can propose a variety of potential Chinese character marks that are the phonetic equivalent of an English language mark. It’s also possible that consumers in China may already associate a certain combination with your brand as a “de facto” transliteration.

Finally, it’s also a good idea to obtain a China or global watch service for important trademarks. A watch service will monitor the application and publication databases in various countries and inform of any close matches for which others have applied.

Ultimately, the cost of a timely trademark application in China can save untold costs and prevent various headaches associated with enforcement. A lesson Michael Jordan now no doubt knows better than anyone.

Maybe I haven’t quite accepted the fact that the US Open and New York Fashion Week are over and September almost is too, but stories on tennis and fashion always get my attention, especially when they include a little intellectual property infringement flair.

The Stan Smith shoe is a legendary shoe design from Adidas named after the US tennis player (and US Open Champion) who famously wore them in the 1970s.

ADIDASStanSmith

Last week, Adidas sued Skechers over claims that the Skechers Onix infringed Adidas’ trademark rights in its Stan Smith shoe.  Here is a photograph of the Skechers Onix:SkechersOnix

Notice any similarities?  Actually, perhaps the better question is – do you notice any differences?  Sure, the shape of the toe is a little different, at least in the photos the toungue looks a little different, the number of rivets for the shoelace also differs, and perhaps the most obvious distinction – the shoe has five stripes versus the iconic 3-stripe design on the Adidas version.  But don’t let the number of stripes or their angle lead you to a conclusion that that’s a sufficient difference, it certainly hasn’t stopped Adidas before (see here and here).  So do you think Skechers has a problem here?

According to a Law360 article on the subject, this isn’t the first challenge from Adidas on the striping issue.  Adidas has been prolific in protecting its three-stripe from use by other shoe manufactures and designers, but with Skechers the parties signed a settlement agreement in 1995 and have a pattern of reaching additional confidential agreements to handle similar claims over the past several years.  Maybe what forced their toe over the line here is that Skechers appeared to be using “adidas Originals” and “Stan Smith” as keywords  (although when I tried to search today, neither of those phrases brought me to any shoes on the Skechers site and keyword advertising rulings haven’t exactly gone in brand owners’ favor).   Or maybe it’s that Skechers last year sued Adidas-owned Reebok for patent infringement.

But Skechers isn’t the only one out there making white leather tennis court shoes with perforations and colored heel tabs.  What about this pair from Nike, with its perforated swoosh and additional stitching line?

Nikeracquette

Or this Isabel Marant sneaker?  I got a kick out of this comparison (and yes, pun intended there), where the $80 Adidas shoe is considered the   “save” over the $400 “splurge” designer version.

SplurgeMarantAdidas

 

Or this from Saint Laurent?

SaintLaurent Do any of these look like they should get the same attention from Adidas that Skechers is getting?

– James Mahoney, Razor’s Edge Communications

Brands are all about resonance; specifically, resonance with the individual. As I see it, the brand inclinations of individual people fall into three categories:

Each of us gives primary loyalty to brands that we feel represent “who” we are. These brands have been described as “choices for which there are no other options.” Hell or high water, we are not going to shift out of that brand, or more accurately, that segment of the brand bandwidth. We might switch from Mercedes to Lexus, but aren’t likely to switch from Mercedes to Hyundai as long as we can afford it (or vice versa even if we can afford it).

A branch of this category includes those we find so satisfying that we don’t consider any other. We always come back to these brands even if we try a different one.

Then there are the second-tier brands. These are the things that are not that important to our self-image, but that we want to be “good choices.” The point of this category is that we want to be assured of a certain level of predictable quality and performance. McDonald’s, Burger King, Wendy’s … doesn’t matter which if you’re on the road and not a “McDonald’s only” person. Predictable quality expectations; unimportant personal statement.

At the lowest tier, brand matters least to the individual. I need some sneakers that fit well and feel good. I don’t care if the label is swooshes, stripes or stars, but I might care that I like the design. The decision process goes something like, “These look pretty good. Oh, Nike. That’s a good brand. Hmmm, $29 … well, okay. Oh, wait, there’s some other ones that are $20. They look okay and fit good.” Sold.

In the second and third tier, brand presence works as a reassurance of a quality level, and contributes a feeling of familiarity that makes us more inclined toward that choice when the main thing that matters is that we don’t want to buy a pig in a poke and have to come back the next week to replace a crummy choice—or for durable goods, to live with an expensive mistake.

An adage from the corporate world best embodies this: “Nobody ever got fired for choosing IBM.”

The interesting thing about brand resonance? It influences decisions across the board, from the simplest to the most complex, product or service, personal or business, commodity or custom, pennies or millions…

And that’s why a distinctive brand presence and a clear understanding of the target audience matter.

– Mark Prus, Principal, NameFlash

I’m often asked by companies if they should change the name of a product, service or even the company itself. Here is my shortlist of 10 really good reasons to change your name:

  1. People Can’t Pronounce or Spell Your Name – Here are a few of the names chosen by startup companies last year: Zairge; Xwerks; Synthorx. If no one can pronounce or spell your name how do you expect people to remember it?
  1. Your Name Requires Explanation – Xobni (pronounced “zob-nee”) was founded in 2006 and made software for mobile and email applications. The founders of Xobni loved the name because it was inbox spelled backwards. However, without an explanation, most consumers could not “get it.”
  1. Your Name Is Generic Or Descriptive – If your product is called “Fast Chop” because “fast chopping” is the main benefit of your product, you may think you have a great name. But if your competitive set consists of products called EZ Chop, Speed Chop, QuickChop, and TurboChop then nobody is going to notice it. Advertising will be wasted because even if consumers think “Fast Chop” is great when they get to the shelf they will be confused by all the similar names and products. If your name does not stand out versus your competition you had better change it.
  1. You Have A New Target Or Strategy That Won’t Fit Your Current Name – Speaking at Macworld Expo in 2007, Apple CEO Steve Jobs announced that Apple was dropping the word “Computer” from its name. “The Mac, iPod, Apple TV and iPhone. Only one of those is a computer. So we’re changing the name,” said Jobs. Today, Apple is a powerhouse of consumer electronics and is a great example of why a strategy change should drive a name change!
  1. Your Name And Current Brand Identity/Execution Clash – In 2003 the world’s largest tobacco company, Philip Morris, officially changed its name to Altria Group. While some considered this a PR maneuver to distance the company from its tobacco heritage, CEO Louis Camilleri said that the name change was “an important milestone” in the evolution of the company. “It doesn’t signify an end or a beginning,” he said. “Rather, it marks how far we have come and gives us a framework for how much further we aim to go.” The sleek and modern Altria Group has been a star performer in the stock market since this name change.
  1. You Are Ready To Enter The Big Leagues – Larry Page and Sergey Brin started a search engine called BackRub. A year later they changed the name to Google, which reflected their mission to organize a seemingly infinite amount of information on the web. Blue Ribbon Sports was founded on January 25, 1964. The company, started by Bill Bowerman and Phil Knight, officially became Nike, Inc. on May 30, 1971. Sometimes the name you start with is not one you want to use when raising money from the investment community!
  1. You Can Add A Relevant Benefit To Aid Recall & Persuasion – Diet Deluxe was the name for a new frozen entree company which was renamed Healthy Choice to add a benefit to the product name. Sound of Music operated nine stores throughout Minnesota in 1978. After a tornado hit their largest store, the owner decided to have a “Tornado Sale” of damaged and excess stock in the damaged store’s parking lot promising “best buys” on everything. After Sound of Music made more money during the four-day sale than it did in a typical month, the company was renamed Best Buy. Is there a relevant benefit in your name? Should there be?
  1. Your Current Name Is An Ego Trip – The biggest factor in selling or gaining an investment in your business is the degree to which the business can operate without you. If your name is the business name, then growth and investment will be limited. Subway started out as “Pete’s Super Submarines” in Bridgeport, Connecticut. Do you think that Subway would have grown as fast if it were still called Pete’s Super Submarines?
  1. Your Current Name Is An Acronym – Sometimes the acronym represents the initials of the owners (e.g., A&W Restaurants after Roy Allen and Frank Wright). Sometimes the acronym is a shortening of a larger name (e.g., Aflac is the first letters of American Family Life Assurance Company). Acronym brand names are almost always bad. Not only do they take years of advertising to establish, the risk of mis-pronunciation is huge and can often cause negative brand equity. SAP is the market leader in enterprise applications and software. Their primary competitor, Oracle, loves to use the “sap” pronunciation and SAP-haters say the acronym stands for “Sad And Pathetic.”
  1. Your Name Is Not Likeable – What is the “Acid Test” response? If you expose the name to your target customer and she smiles when she hears it or says, “That’s a great name!” without thinking about it, then you may have a winner on your hands. On the other hand, if she has a puzzled look or a negative reaction, you might want to consider a change. I also count “polite indifference” as a failure. If people have no reaction, then they are probably too polite to tell you how bad it is. And please do not expose the name only to friends and family. These people are programmed to be nice to you and so you won’t get honest feedback. If your name does not bring a smile to your customer’s face, then maybe you should change it.

Of course, each situation is unique and there are always costs to changing a name that should be considered. Are there other situations where changing a name can be a good idea?

Shoes are always in the news. From a fashion standpoint, Nike has made headlines this week, with a re-release of the Classic Cortez running shoe (aka, the Forrest Gump shoe) along with the second edition of the LeBronald Palmer.  And yes, the LeBronald Palmer is exactly what it sounds like, LeBron James creating a shoe inspired by Arnold Palmer. Or possibly by an Arnold Palmer that kept James refreshed during his stay in Miami.  But for those of us who like our News of Shoes to have a legal bent, Converse is there to help.

In October of last year, Converse laced up an impressive number of lawsuits against more than 30 different retailers and manufacturers, including big names like Ralph Lauren, Wal-Mart, H&M and others. We discussed Converse’s use of International Trade Commission proceedings as part of this offensive back in October. Since that time Converse has been slowly reaching out-of-court settlements with the parties, including Ralph Lauren, H&M (subscription required), Tory Burch, and others.

In an ideal world though, a company doesn’t need to file thirty lawsuits against its competitors in order to protect its brand. While the Converse example is a bit trickier because it involved protection of the trade dress of the All-Star shoe, here are three steps brand owners can take to help minimize the potential for infringement and counterfeits of their goods:

  1. Conduct a domestic trademark portfolio audit. Are all of your important trademarks protected in connection with all of the important goods? If you have well-known product lines, do you have registrations for these trademarks as well as the overall brand? If not, file new applications with the U.S. Patent and Trademark Office. It is possible others have developed, or could develop, legitimate and enforceable rights in confusingly similar marks.
  2. Record your U.S. registrations with the U.S. Customs and Protection Bureau. The cost is relatively cheap and the benefit can be substantial, especially if your products are susceptible to counterfeits (apparel, jewelry, and electronics in particular). If you have products manufactured abroad, you can provide this information and the Customs officials can identify questionable shipments at the ports – before they are distributed in the U.S.
  3. Conduct an international trademark audit. Do you sell your products overseas? Do you have registrations in these countries? Alternatively, if your products are manufactured overseas, do you have any protection in these countries? By protecting your trademarks in these countries, you can help prevent unauthorized products from leaving (or entering) these countries, too.

These three steps can’t prevent infringing products or counterfeits from ever entering the U.S. or other countries. Yet they can minimize the chances of a problem arising. In the unfortunate situation that the issue does arise, these actions will provide you with an expanded toolbox to address the issue with evidentiary presumptions in your favor and expanded remedies. In short, they’ll help you get off on the right foot.