— Aaron Keller, co-author, The Physics of Brand, co-founder Capsule.us and Columnist at Twin Cities Business magazine.

There are so many hidden dangers in the process of naming any new offering — many of which can sneak up on you. We all like to believe we’ll see the danger before it meets us squarely in the forehead like a baseball bat, but the number of horror stories would indicate otherwise.

We’ve illustrated the Jimmy’s Johnnys in past blog posts, which certainly doesn’t create a good brand image for Jimmy John’s. But, really that’s a trademark issue, not a meaning issue. The meaning issues happen because there’s existing cultural meaning around a word that really isn’t good for your brand.

Rusty Taco dealt with it by moving to R Taco — not something this writer agreed with, but it happened. If you’re wondering what meaning existed with that name, try using your imagination before you search it on a work computer.

Fairview University, in their previous partnership had a minor issue when they turned the name into an acronym and stenciled it on hospital equipment. Do it yourself by writing those two letters in your whiteboard.

Or, the classic, Federal Express before they became FedEx, because in most countries “Federal” means government and slow, very, very slow. FedEx needs to be on time and certainly not slow — seeing the hidden meaning was essential.

Now, my own personal favorite today, the brand Sheetz, which is best consumed via this link, which tells me they know the brand name is amusing. Though, it does have a gastronomic implication that likely doesn’t create a smile in your mind after eating their foot long sub sandwich.

So, how do you avoid this?

Test the meaning with your audiences and there are simple rather inexpensive ways to get a clear picture of what your brand name means in culture. Even if you’ve got an existing brand name and culture has changed around it — like Tsunami Herbicide — a test might identify a need to change or refine your brand name.

Test your meaning before you test your job security. If you run into an amusing brand name story you think needs to be told, please pass it along to AaronKeller@capsule.us.

Seeing these on the store shelf this weekend reminded me that we are still anxiously awaiting the USPTO’s decision from the Trademark Trial and Appeal Board (TTAB) as to whether the words “pretzel crisps” will be found generic for “pretzel crackers” –basically, a public domain category or class of goods term, in the same way that “footlong” was found generic for sandwiches.

It took the TTAB just under one year from oral argument to render the “footlong” genericness decision in Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc.

By the way, did anyone notice that Subway did not appeal the genericness ruling, making the decision final? So, I’ll ask again, what about those Millions of False TM Notices to Remove?

If the TTAB takes the same amount of time in deciding where “pretzel crisps” falls on the Spectrum of Distinctiveness, it will be July before we know the answer, but something tells me the TTAB’s decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC won’t be the final answer, it is hard to imagine either party letting this one go without an appeal.

The USPTO’s Trademark Acceptable Identification of Goods & Services Manual has listed “potato crisps” as a generic product designation since 1991 and “potato crisps and chips” since 2007, so can “pretzel crisps” expect a different result?

Dear readers, any predictions on how this one will be decided, and when?

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?

 

 

 

 

 

 

 

 

A hot dog is a type of sandwich, and “footlong” denotes a type, category, or class of sandwiches (those measuring about a foot in length), making “footlong” a generic term and part of the public domain — incapable of serving as a trademark for any kind of sandwich.

This is true despite Subway’s claimed use of FOOTLONG since 1967, the more than four billion FOOTLONG sandwiches sold between 2000 and 2009, and the near doubling of annual FOOTLONG sales from $541 million to $936 million, following its highly successful $5 FOOTLONG marketing campaign which started in 2008.

Any secondary meaning in FOOTLONG that might have resulted from the extensive marketing campaign, is de facto, so it doesn’t count for distinctiveness — it doesn’t create enforceable rights, because purchasers readily understand that FOOTLONG identifies 12 inch sandwiches.

These are some of the findings and conclusions by the TTAB last week in the long-anticipated decision Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., rejecting Subway’s desire to own FOOTLONG as a federally-registered trademark for “sandwiches, excluding hot dogs.” For a more complete analysis of the 61-page decision, check out John Welch’s coverage over at the TTABlog.

If you’ve followed my writing on the subject, you’ll fully appreciate that the TTAB’s decision finding FOOTLONG generic for sandwiches — even if hot dogs are excluded — is not surprising:

The decision was written to be bullet-proof on an appeal that the TTAB assumes Subway will file. So, for the sake of completeness, the TTAB decided that even in the unlikely event it is wrong about genericness and FOOTLONG is actually descriptive, the evidence still does not show acquired distinctiveness. If there is an appeal it will be interesting to see whether Subway pursues a de novo federal district court trial (which would permit the introduction of new evidence) or whether it takes the existing record up to the Court of Appeals for the Federal Circuit (CAFC).

My prediction is it won’t make a difference, the result will be the same, FOOTLONG is generic for sandwiches, just like LIGHT and LITE is for beer. In my opinion, Subway’s pursuit was doomed from the start with its initial specimen of use from November 2007:

As the TTAB noted: “If the above-noted specimen shows trademark use of “Footlong,” then it must also show trademark use of 6″ Sub and Wrap.  As used in the specimen all three terms are displayed in the same manner (font, size, color, position), and used in the same way (i.e., to identify a type of sandwich).”

Of course, as shown at the top of this post, now when you see Subway’s FOOTLONG advertising (and in-store signage) it is littered with TM notice symbols closely associated with the term FOOTLONG. I’m not sure when that tactic started, but I believe it has been going on now for at least a couple of years. I remember being struck by the tiny after-the-fact TM stickers applied to the menu signage at the Subway located in the Minneapolis – St. Paul airport when I started following the Subway trademark bullying story a few years back.

With more than 26,000 Subway locations throughout the United States, and all the advertising done on the local and national level for the largest restaurant chain in the world, I shutter to think how many errant TM symbols are swinging in the wind, must be millions upon millions.

Even if an appeal of this decision would be hopeless for Subway, it might be worth filing one to at least avoid immediately facing the decision of whether to remove the multitude of stickers and the millions of false or misleading TM notices in advertising and on signage, given the TTAB’s ruling that FOOTLONG is not and cannot be a trademark for sandwiches.

Having said that, if an appeal over-turned the genericness part of the ruling, that would avoid the need for removal, even if the lack of acquired distinctiveness portion of the decision were affirmed, since it would keep the door open for Subway proving acquired distinctiveness down the road, and surely it would be able to freely use the TM symbol while it is still making that effort.

I’m just not seeing it though, I believe the genericness ruling will stand, but what do you think?