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?

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

Throughout our nearly decade-long journey and exploration called “DuetsBlog,” we have been blessed and we remain grateful to have met so many incredible new friends along the way.

Next Tuesday, we have the remarkable privilege of publishing here on DuetsBlog an interview with Seth Godin, a generous person, overflowing with thoughtful insights and valuable perspectives.

In the meantime, many thanks to Fred McGrath for his interest and generosity in sitting down with me to capture a conversation about DuetsBlog, editing our discussion in 3 videos, here’s the first:

It was another star-studded event in Seattle last night, enjoy some pics from Meet the Bloggers:

The Ironmongers are Reunited:

Friendly Ron Coleman, John Welch, Steve Baird
Skeptical Ron Coleman, Steady Welch and Baird
Concerned Ron Coleman, Steady Welch and Baird
Animated Ron Coleman, Mildly Amused Welch and Baird

Much Going on Under the Light of a Full Moon:

Marty Schwimmer Focusing as Carl Oppedahl Howls at the full Moon?

The Ayes Have it, About What I Don’t Recall?

Ron Coleman, Carl Oppedahl, and Pamela Chestek, in Favor, Among Others

More Celebration Under the Full Moon?

Tara Aaron Sticks Her Landing, and the Crowd Applauds

Karaoke? Maybe a Little Jackson Browne, Running on Empty?

Eric Pelton Lead, with Backup Vocals by Carl Oppedahl?
Above all the Nonsense? Pleasant and Bright Susan Montgomery and Marty Schwimmer

Ron Continues to Steal the Show With Multiple Facial Expressions:

Friendly Tiffany Blofield, Confident Ron Coleman, Friendly Erik Pelton
Friendly Tiffany Blofield, Amplified Ron Coleman, Friendly Erik Pelton
Steady Tiffany Blofield, Say Cheesy Ron Coleman, Steady Erik Pelton

We look forward to Meet the Bloggers VX in Boston, next year, around this same time, stay tuned.

Toward the end of last week, a couple of friendly ironmongers (John Welch and Ron Coleman) had an interesting dialogue on Twitter, with some great insights about creativity and the law.

John noted that copyright’s requirement of “originality” is not the same as the requirement of “novelty” in patent law. Ron then weaved in some nice insights about creativity and trademark.

The heady discussion led me to rediscover a blog post of mine from more than nine years ago dubbed: The Paradox of Brand Protection: Knowing When to Hit the Consumer Over the Head.

If you can get past the congested text from this beginner’s first few weeks of blogging, it’s actually worth a complete read for the content, but for now, here’s an excerpt with some better spacing:

“I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins.

Being able to own and enjoy exclusive rights on “day one”—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything.

Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed).

On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all.

So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.”

Those remarks aren’t ideally suited for the character limit in Twitter, but I’m thinking they reinforce Ron’s point that priority of trademark rights can be impacted by creativity/novelty.

As to my above remarks about federal intent-to-use trademark applications, I’m also mindful of this little dialogue shared with Ron a few years back, but nowhere near nine years ago.

So, the good news for the day is that the law, especially intellectual property law (copyright, patent, and trademark) does reward creativity, in a variety of ways, and each in their own way.

We’re looking forward to continuing this discussion, among many others, with those interested, at the upcoming Meet the Bloggers XIV unofficial INTA event near INTA in Seattle next month.

During the official portion of the INTA program, I’ll be reflecting on the impact of a creative legal theory that consumed lots and lots of lawyers’ hours (billable/non-billable) for a quarter century.

And, finally, let’s not forget about Duey’s little friend, right over here:

 

 

How much do I believe in federal registration of trademarks and brand names? Well, this much:

I’ve always been a big fan of practicing what you preach. Actually walking the talk. Not just talk.

That mindset helps explain why we stuck with the suggestive name of this blog, even after the experts recommended against it several times, for SEO and other reasons. They do agree now.

Anyway, the registration issued in the nick of time, given my true fortune just two days earlier:

Seriously though, obtaining federal registration of a personal brand name can be a bit challenging.

A common refusal when personal names are involved is that they merely identify a person, and they fail to function as a mark, the very refusal the USPTO initially issued in my particular case:

“Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.”

“In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because it is used to identify the author of blog posts, but does not separately indicate the source for any service. Applicant has applied for services including providing information in the field of law. The specimens shows the applied-for mark being used merely to name the author writing the posts, and to identify a particular individual and give information about him. The specimens include a short biography or “about the author” post with the name of the author or individual at the top, and several posts that show the applied-for mark included only as “By Steve Baird.” This shows the applied-for mark being used in a by-line, attributing authorship, but not identifying source. The applied-for mark is not used in association with the offering of any service in a way that would make it a service mark.”

Fortunately, I’m surrounded by really bright, passionate intellectual property and trademark attorneys, and in this case, our Tucker Chambers came to the rescue, with this winning response.

And, thankfully Tucker had some decent facts to work with, especially given kind commentary of some generous giants from both the legal and marketing fields, two of our core audiences.

Trust me, the irony has not escaped me, that one of these generous giants recently allowed the registration for his blog’s name to lapse, and the other giant likely prefers to Just TM It instead.

I’ve never professed to resemble a purple cow, but my mother and father did teach me to follow the beat of my own drum, after taking in a variety of different perspectives to settle on my beat.

So, if you have a personal brand name that truly functions beyond indentifcation to indicate the source of goods or services, my hope is that you will consider federal registration to help protect it.

Keep in mind, personal brands can go beyond an actual name to embody a non-verbal image too, where consent of the individual so identified is of record at the USPTO, hello Ralph Lauren:

Personal brands also may include nicknames, like Mr. Wonderful aka Kevin O’Leary from Shark Tank fame, who is seeking registration of Mr. Wonderful for roasted nuts, hello Wonderful:

 

So, I’m left thinking that Mr. Wonderful best get crackin’ on his anticipated response to the inevitable likelihood of confusion refusal that he’ll be experiencing in the not-to-distant future.

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.

We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well.

Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important right to federally register trademarks.

What I mean by beginning there is, discreetly-used third party conflicting marks “flying under the radar,” rise to another level of trademark enforcement importance for a trademark and brand owner when the user also seeks federal registration, almost requiring the opening opposition salvo.

Federally-registered trademark owners know the importance of protecting the federal trademark register, because what, and how many similar third party marks, are allowed for registration, can negatively impact the owner’s trademark strength, scope of rights, and enforcement success.

Trademark rights are dynamic, they’ll shrink or grow over time, depending on the landscape at the time of enforcement, so not limiting registration at the USPTO can have more negative impact on strength and scope than an single, discreet, unauthorized use of a confusingly similar mark.

Looking the other way at trademark applications landing within a brand owner’s legitimate scope of protection, indirectly sends the perhaps unintended message to the trademark world, and those who monitor it, that the owner willingly accepts the shrinkage of its trademark rights.

So, serious trademark owners watch for conflicting filings at the USPTO, and stand in the way of registration, until agreement can be reached on how to coexist without a likelihood of confusion.

What I mean by many trademark disputes ending at the TTAB is, most oppositions do not go to final decision, the vast majority settle with a mutually-beneficial coexistence agreement in place.

And, when they don’t, trademark and brand owners — who follow us here — also know that the importance of final TTAB decisions has been raised, as the U.S. Supreme Court recently opened the door to having certain TTAB decisions — through the application of issue preclusion — control the outcome of later federal district court infringement and dilution law suits.

Congratulations to the TTAB on reaching sixty years of dedicated service to trademark and brand owners, as we look forward to the interesting issues likely to be decided in 2018 and beyond.

As I reflect on the more than twenty-five years of my experience before the TTAB, at this point in time — spanning nearly half of the TTAB’s existence — I’ll have to say, the TTAB seems to be carefully and thoughtfully emulating the characteristics of a fine wine as it matures.

What are your predictions of the 2018 decisions that will stand out? Fraud? Functionality? Fame?

Will the TTAB revisit its previous perceived inability to address Constitutional issues, like say, dilution tarnishmentreligious text marks, or application of the Section 2(c) bar to prevent federal registration of political trademark speech, and, if not this coming year, when?

I’m thinking this will be the year of informational and failure to function decisions, how about you?

Ron, you’re so vain, you probably think this post is about you, don’t you, don’t you — actually, it is, or, let’s say, more about your recent in-actions — still, I hope you enjoy this cute little melody.

By the way, before fully discussing how you walk into a party or onto a yacht, do I detect a hint of apricot in the color of your stylish Likelihood of Confusion garb, might there be a matching scarf?

The week before last, walking through the Minneapolis skyway system, while reading our good friend Ron Coleman’s explanation of “why I let my trademark registration lapse,” I kid you not, a second and more physical spectacle emerged right before my eyes when crossing over 5th Street:

Ron, do I need to connect the dots for you on the striking parallels of the mysterious energy that you generated when you gave away the thing you (once) loved? Like the total eclipse of the sun?

Yes Ron, love you like my own brother, but if you were Dave, I’d help him back on the tracks, and remind him of what less than 12 cents a day buys, for those incontestable and powerful standard-character federally-registered rights over a second ten-year term. Remember, sword and shield.

The decisive inaction in allowing the lapse, reminds me of the forgotten and invisible value of deterrence. And, while I’m on board with much of the irreverent tone you can display from time to time, are you now suggesting that other brand owners turn their circle ®s upside down too?

I won’t put words in your mouth, but are you advocating for unilateral registration disarmament? Even if not, I’m left wondering, are the children or watchful brand owners likely to be confused?

After all, chalking up the original ten year old decision to federally-register your blog’s namesake as a senseless and unnecessary goof, today, because you haven’t (yet) found an occasion to enforce it, requires the omnipresent convergence of 20/20 hindsight and a flawless crystal ball for the future, all in one moment. Again, deterrence my friend, it’s beautiful and invisible.

And, as to the question of vanity, far be it for me to question yours, but isn’t tossing your circle ® in the trash, a little like saying to the world, “look mom, no hands,” after learning to ride a bike, and then daring unwise children, to knock you off? Pun and double-meaning, fully intended.

Now Ron, I know you relish a formidable challenge, like when you went (not to Saratoga), but to Washington, D.C., and your client (not horse), naturally won, the trademark case of the year. But, before leaving the question of vanity though, just wondering, after reading the favorable Tam decision, tell me, did you have one eye in the mirror, as you watched yourself gavotte?

Still Ron, don’t you think the modest investment of less than 12 cents a day is worth putting the USPTO in the position to, and give it, the statutory charge to do your enforcement bidding for you? Don’t you? Even if someone, as you seem to invite, tries something? Don’t you, don’t you?

And here’s an underworld spy question for you Ron, is there no room for the Easy Button, in your commercial litigator’s toolbox, just in case you need it, let’s say, down the road in a few?

Ron, please don’t look at me that way! When you have your hat strategically dipped below one eye, I’m left with the feeling you think I’m either still quite naïve, or full of it, nothing in between.

By the way, have you actually verified that your Likelihood of Confusion® registration never formed a bar to others at the USPTO? There are tools for that, courtesy of Towergate Software.

What we do know for certain is, it will no more, if it ever did. And, if you ever want to avoid the need for a formal opposition at some distant point in the future, if the USPTO doesn’t agree with your assessment that someone had their sights on messing with you, without your ®, you can kiss the Letter of Protest tool goodbye, as this little guy — ™ — doesn’t cut it.

Please let’s be honest Ron, it’s always easier to hang on to something and hold it in your hands than discard it and try to get it back later. I realize you’re feeling confidence in letting it go in this moment, but what if the facts or your mind change down the road?

Dumpster diving is a messy proposition. What the USPTO granted yesterday doesn’t always come as easy, if at all, tomorrow or the next day. As we all know, the USPTO is not impervious to changing its mind on how it views certain things, especially when it comes to judging the line between trademark suggestiveness and descriptiveness.

Who am I to judge your calculation of value? But let’s not forget, Ron we’ve all seen your fancy Likelihood of Confusion branded apparel. By the way, will we see those fancy threads in Seattle? Or, are they about to become a collectors item on eBay?

Let me just say, had you presented your apricot hat in hand in Orlando, and passed it around the room, I’m thinking you’d have collected more than the price of another ten year term, given the enormous and generous contributions you’ve made to our guild over the last few decades.

Ron, don’t get me wrong, I fully realize that you’re where you should be all the time, and I completely admire your sensitivity to the evil constructs of vanity, but I fear that the little voice whispering in your ear has spilled some clouds in your coffee on this one. What about the children who may be watching? Aren’t you concerned about the implication of what you seem to be saying, simply just TM it instead?

Ron, having said all that, I hope we can still be friends, as I have no doubt, there a plenty of others still dreaming that they’d be your partner:

Last, but not least, Ron, will you need reminding that yet another price of purging your vanity is that you’ll need to remove all those fancy trademark registration symbols from your blog?

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?