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?

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

As the drum beat grows for our interview of Seth Godin tomorrow, it is only fitting that we are reminded of the importance of embracing tension and the ruckus we’ve set out to make here.

Seth’s fabulous and penetrating new book called This is Marketing, will be released tomorrow, no doubt another best-seller, a must-read for any lawyer who cares to make change for the better.

Until then, thanks again to Fred McGrath for this second video, capturing how we embrace tension:

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:

We’ve been writing about the COKE ZERO trademark for nearly a decade now, noting in 2014:

“[I]t will be worth watching to see whether the [TTAB] finds that ‘ZERO’ primarily means Coke or just a soft drink having ‘no calories, you know, a drink about nothing . . . .’”

Turns out, in May 2016, Coke obtained a favorable decision from the TTAB, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

With that victory in hand, we then questioned Coke’s thinking in launching obvious generic use of ZERO, welcoming Coke Zero to the Genericide Watch, given this categorical and non-brand use:

Then, two months ago, the CAFC decided — on appeal — that the TTAB got it wrong, ruling it:

“[F]ailed to consider whether consumers would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages – i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.”

We’re now back to the question we asked in 2014: “[I]s ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?”

As to the next steps, the CAFC sent the case back to the TTAB, instructing it to “examine whether the term ZERO, when appended to a beverage mark, refers to a key aspect of the genus.”

TM types, is Professor McCarthy right that the CAFC ruling makes it too easy to find genericness?

I’m left wondering, given the floodgates that have opened up to other beverage brands also using ZERO as a generic category term for “no calories” or “no sugar” — is fighting for ZERO worth it?

 

 


 

 


Will Coke continue to fight for ZERO as a trademark? Or, should it make better soda instead?

How can The Coca-Cola Company even keep the trademark pursuit of ZERO going, when it already appears to have made the choice of making a better soda through its independent unit, Honest?


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.

Yesterday, while on the highway heading to a client meeting, I noticed a truck that looked like this:

It reminded me of the plentiful ink we’ve spilled over the years about singular iconic non-verbal logos that can truly stand alone. Remember Seth Godin’s generous insights shared, here?

Given the dominant display of Amazon’s non-verbal logo shown above (without the Amazon brand name), it’s probably time to ask: Does or Can the Amazon Non-Verbal Logo Truly Stand Alone?

Over time, Amazon carefully and strategically has migrated and associated the non-verbal logo with other Amazon indicia, while omitting the likely famous Amazon word mark and brand name:

 

These variations look to be on the way, with Amazon not only smiling, but licking its chops as well:

So, I’m thinking Amazon’s “smile or curved arrow” design logo, has been out and about without a parent or guardian long enough, and it can and does truly stand alone, what do you say?

Back to the question in the title of the post, what do you see, a smile or a curved arrow, or both?

The more messages the better, at least from a trademark perspective, especially in thinking about Amazon’s scope of rights having no singular meaning, right?

This Friday, yours truly will be presenting “Making Your Business Blogging Visible” at SME (Sales and Marketing Executives of Minnesota), and you can learn about all of the details here.

Given the title, as you might have guessed, I’ll be sharing some perspectives on how DuetsBlog came to be, where we’ve been, how we’ve been doing what we do, and where we’re headed.

As you well know, we’re passionate about bringing lawyers and marketers together, much earlier in the creative process, and in the process we’ve shined a spotlight on the infamous Dr. No.

If you have been here from the beginning or if you have been curious enough to check out our inaugural post on March 5, 2009, you know that we believed our audience to be two-part:

“If you are a lawyer and you find yourself getting in the way more than facilitating the process, you need a regular dose of Duets Blog. If you have no formal legal training and your intellectual property lawyer prefers roadblocks over intelligent collaboration, join our conversation on Duets Blog.”

Nowadays, following my recent and invaluable work in Seth Godin’s altMBA workshop, I’m thinking it might make sense to reframe “who this is for” in this way:

“People who love brands that need intellectual property lawyers, whether they know it or not.”

While on this amazing journey of more than 2,200 blog posts (roughly 1/3 are from me), we’ve grown, evolved, and we’ve shared scores of guest posts from dozens of non-lawyer guest bloggers.

We’ve also enjoyed getting to know you, and we’ve enjoyed your countless published comments, your perspectives and blog ideas, and all of our amazing off-line conversations and friendships.

Although we haven’t yet reached the remarkable goal of 7,000 blog posts (like the one who is admired), each one of us has enrolled for this work and each one of us lives by this sage guidance:

“I write every word. I don’t understand outsourcing something this personal, a privilege this important.”

Here’s a question, is it really a blog post, if the person’s name next to the title is not the actual, the real author? Blogging is really personal, even if individuals are writing on a team or group blog.

As I mentioned in the promotional video for this Friday’s SME luncheon event, “I’m looking forward to meeting you, this is a dialogue you will not want to miss, see you soon!”

UPDATE: Use promo code BAIRD for the bargain SME rate of $39.

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?