You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

We’ve been down this road before, some themes intersect, and trademark value is filtered out:

The intersecting themes on tap for the day are: Zero, Branding, Trademarks, and Loss of Rights.

ZEROWATER is a perfectly suggestive, inherently distinctive, and federally-registered trademark with “incontestable” status as a source-identifier for “water filtering units for household use.”

Judging from the specimens in the file history at the USPTO, the brand owner appears to have done a nice job leaving consumers to imagine the connection between the mark and the goods.

Branding ZEROWATER with taglines like “For water that’s only water,” “Get more out of your water,”  “If it isn’t zero, zero, zero, it isn’t just water” “If it’s not 000, it’s not ZeroWater,” and “If it’s not all zeros, it’s not ZeroWater,” all help to block Zero from pure and mere descriptiveness:

On the other hand, as the top image of the retail endcap shows (click the image to enlarge), the current packaging and product description adds blunt force to the now obvious meaning of ZERO:

“LEAVES ZERO DISSOLVED SOLIDS BEHIND”

Had this purely descriptive use of ZERO been present at filing, then ZEROWATER easily could have been refused as merely descriptive — why add it now? Especially with this far better existing copy:

“REMOVES VIRTUALLY ALL DISSOLVED SOLIDS”

While ZEROWATER can no longer be challenged as merely descriptive for “water filtering units for household use,” what about future applications having slightly different descriptions of goods?

Given all that Coca-Cola has done to turn ZERO generic in the soft drink category (meaning ZERO Sugars and/or Calories), shouldn’t ZEROWATER remove virtually all opportunities for genericness?

When a brand owner migrates toward descriptiveness with its copy, leaving the consumer with zero need to exercise any imagination as to meaning, there just might be “nothing” left to protect.

As you know, I enjoy telling trademark stories about soaps encountered on my various trips:

Lather® (brand) soap recently caught my eye — and the lens of my iPhone — while in Palo Alto.

Interestingly, the USPTO has treated the word as inherently distinctive, in Lather’s registrations.

In other words, not merely descriptive, even though using the product surely produces some.

So, some imagination, thought, or perception is needed to understand the connection with soap?

If so, I’m thinking Lather® soap is certainly close to the line between descriptive and suggestive:

Brand managers, would you be in a lather if faced with these other “lather”-styled soap marks?

Trademark types, what gets you all lathered up when it comes to trademark enforcement?

One of my passions is to find common and favorable ground between legal and marketing types.

One of the readings during week three of Seth Godin’s intensive altMBA workshop reminded me of a great example to illustrate how a valid marketing goal can align with strong legal protection.

An excerpt from Seth’s All Marketers are Liars book was part of the reading material for a project on How Organizations Change, and this portion of that excerpt made me think of trademark types:

Great stories are subtle. Surprisingly, the less a marketer spells out, the more powerful the story becomes. Talented marketers understand that the prospect is ultimately telling himself the lie, so allowing him (and the rest of the target audience) to draw his own conclusions is far more effective than just announcing the punchline.”

Trademark types can learn a valuable lesson here about the protection of traditional trademarks: Subtlety can yield immediately protectable, inherently distinctive and inherently strong marks.

We’re talking about the difference between suggestive marks on the one hand, the favored hand, and descriptive marks or generic terms on the other hand, the less favored trademark hand.

Let’s keep in mind though, when we’re operating in the realm of non-traditional marks, subtlety may not be your friend, as the story told there needs to be far more blunt, direct and obvious to build and enjoy trademark rights.

In searching our vast content on DuetsBlog, I’m reminded of something similar I wrote more than seven years ago now, and I’m not sure I can say it any better now, so here it is, again:

“We have spoken and written about not “hitting the consumer over the head” in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.”

So, some subtle stories told in a name can make powerful trademarks with a broad scope of immediate protection. And, some will still require the help of an obvious and blunt instrument.

The key is knowing the difference and when each approach is required. My fear is that the USPTO’s growing obsession with failure to function refusals (here, here, and here) and mere information refusals will begin to spill more prominently into traditional trademarks?

Does anyone else see this happening before their very eyes?

In other words, to please the USPTO, are we needing to move toward being more blunt about whether even a traditional word mark is actually designed to perform as a trademark?

Let’s hope not.

Oh, and by the way, I was speaking above with subtlety about being past the half-way point (the dip) in Seth’s altMBA workshop, so I’ll be blunt now, it is amazing, it is transformative, do it!

InterstateBattery

An oil change and tire rotation over the holiday yielded a little free time for me in our local Goodyear dealer’s waiting room, and it left me wondering about the Outrageously Dependable tagline of Interstate Batteries, so I captured the above image to tell a little blogworthy — if not blimpworthy — trademark story.

My question was whether the Outrageously Dependable tagline is federally-registered on the Principal Register, and if so, whether acquired distinctiveness was required to achieve this status, since Outrageously Good Coffee was recently refused registration, as it “merely describes, in a laudatory manner, a feature of the coffee—how good the coffee is.”

Turns out Outrageously Dependable is registered on the Principal Register without a showing under Section 2(f) — no acquired distinctiveness needed, so it is apparently considered inherently distinctive and suggestive of a desirable quality of the goods, not merely descriptive.

For some reason, Outrageously Dependable, does not merely describe, in a laudatory manner a feature of the batteries– how good or dependable they are, instead it is creative enough to suggest this without connecting all the leads and wires for the consumer.

Ponder that through the end of the year, and let us know whether you agree.

SmashBurgerPromoWhy does Smashburger continue down this road of smashing its trademark rights?

Especially, despite our previous cautions:

Another Marketing Pitfall: How to Crush a Smashing Brand Name & Trademark

Can Anyone Smash a Burger?

Crushing a Perfectly Good Brand Name?

In the meantime, we’ll keep watching out for marketing pitfalls and unnecessary marketing copy that pushes a perfectly good suggestive mark across the line to mere descriptiveness.

Time spent with my boys in Omaha at the College World Series is hard to beat. Although, last year, Father’s Day weekend was hard to beat too. And, the archives indicate five years ago was pretty wonderful as well. Basically, it’s all good.

On this particular road trip, we were fortunate to score tickets to the Thursday night game between TCU and LSU, a great game. We also scored better and even cheaper tickets right behind the Florida Gators’ dugout for their last two games against Virginia, unfortunately for the Gators they fell to the Cavaliers on Saturday night, in a very close game, 5-4.

One of the benefits of our close vantage point behind the dugout was to see the players’ methodical preparation before heading to the plate for each at bat. I’ll have to admit, it was hard not to wear my trademark helmet from this vantage point. Besides the different and unique, but consistent and repetitive metaphorical trademark style of each batter, there was a very visually striking and unique bat weight being used by some of the Gators batters that caught my eye.

Convinced the brand name on the bat weight appeared to be YARD, I thought to myself “what a great suggestive mark,” but to my dismay, between-inning research on my iPhone revealed the brand to be VARO, not YARD:

VaroBatWeight

Given the stylization of the VARO brand name, can you offer me at least a modicum of sympathy in mistaking VARO for YARD? Clearly my vision would never qualify me to be an umpire, and when typed, I fully admit these are clearly distinguishable words, but can you agree that from a little distance the thick all cap V could be mistaken for a Y and the chunky O could look a lot like a D?

One mental clue that may have lead my eyes down the Y and D path, instead of the V and O path, is that VARO means nothing to me (turns out it too is a great suggestive name, a foreign term translating to LAUNCH — something every batter would like to do to the baseball). The other more persuasive mental clue leading my eyes to read YARD — without thinking too hard — is the well-known slang phrase GOING YARD meaning to hit a home run. The context of baseball certainly helped my eyes see YARD, not VARO.

Seemed like a great trademark story to write about when it was just about YARD, but after digging a little deeper and discovering the VARO connection, I’m thinking this post went from a single or double to going yard itself. But, I won’t ask if you agree.

At least for me, one of the takeaways is the need to take the chosen stylization into account when searching word marks — we’ve talked about this before. Although I haven’t been able to locate any problematic YARD hits on the USPTO website, without considering stylization and the word’s visual impression, I’m doubting that any hits for YARD would have resulted during VARO trademark searches and due diligence.

Another takeaway to ponder is what might be a reasonable scope of rights surrounding the particular trademark stylization used? In other words, could trademark rights in the VARO stylization shown above extend to prevent another’s use of YARD on competitive products?

If so, what is the likely success with a switch-hitter hypothetical and scenario? That is, what if the original brand was, in fact, YARD, and the newcomer in direct competition launched VARO as the competing brand with the above script, same result?

On another personal branding note, when he’s able, perhaps Gator lead off hitter and left-fielder Harrison Bader would be a perfect spokesman for the VARO brand, going YARD twice at the 2015 CWS, no doubt thanks to his warmup swings with the VARO Arc batting weight:

Harrison Bader Single in the top of the 9th
Harrison Bader Single Top of 9th in Game 13 of CWS Against Virginia
Harrison Bader Single Top of 7th in Game 13 of CWS Against Virginia
Harrison Bader Single Top of 7th in Game 13 of CWS Against Virginia

Metaphors are a good choice for trademarks. A metaphor typically requires some thought, imagination or perception to understand the connection between the mark and what’s for sale.

Remember what a floating feather might suggest metaphorically? Yes, a good night’s sleep. So, the symbol works well as a distinctive non-verbal trademark for a pharmaceutical sleep aid.

Metaphors are everywhere. According to James Geary, we utter about six metaphors a minute. He also notes: Aristotle’s classic definition of a metaphor is “giving the thing a name that belongs to something else.” This approach serves as a powerful trademark tool too.

Over the weekend, during the constant barrage of nauseating political ads, I found myself more focused on the few interspersed commercial advertisements, allowing me to appreciate the metaphorical thinking embodied in Allstate’s Mayhem ads:

“The character Mayhem is essentially a metaphor for any disaster that might befall a member of the target demographic, and tries to warn people that if they don’t have enough insurance coverage, they could have to pay for it out of their own pockets.”

Sure enough, Allstate has secured inherently distinctive federal service mark registrations for MAYHEM, and the slogan MAYHEM IS EVERYWHERE for: “Insurance services, namely, writing and underwriting insurance in the fields of property, liability, life, and casualty, and providing ancillary services thereto, namely, administration and claims adjustment; financial sponsorship of athletic events; financial sponsorship of charitable organizations.”

As it turns out, MAYHEM also serves as a branding metaphor and suggestive, federally-registered trademark for all kinds of different sporting goods offered by all sorts of brand owners: Scheels’ towable floats, Eastman’s archery arrows, Lost’s surfboards, Crosman’s airsoft guns, Rawlings’ lacrosse equipment, and Rawlings’ baseball bats.

So, not only are metaphors everywhere, but it appears even non-Allstate Mayhem is everywhere too, at least in the world of sports equipment.

Ahem, of course, none of that equipment would be appropriate for any of the athletic events sponsored by Allstate’s Mayhem.

By the way, in case you’re wondering, Havoc is everywhere too . . . .

There aren’t too many things I enjoy more than speaking about the legal implications of branding.

Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here.

Some of the topics I discussed include:

I’d love to hear any feedback on the talk.

I’d also love to hear from you if you have a group or team that might be interested in having me deliver a talk on trademarks and the legal implications of branding.

 On this Valentine’s Day, after enduring weeks of the same endless running of national retail jewelry chain advertising, leading up to this annually celebrated day of love and affection, I thought it might be fitting to try a few retail jewelry store taglines on for size and examine — at least from a trademark perspective — their protect-ability and likely placement on the Spectrum of Distinctiveness, leaving for our friends who are genuine marketing types an assessment of the taglines’ color, clarity, carat, and cut.

(1) "The Diamond Store":

Zales apparently has been using "The Diamond Store" as a tagline for over thirty-five years, but its latest federal registration for "Zales The Diamond Store" still disclaims exclusive rights to "The Diamond Store." Also no surprise that Zales was unable to federally register "America’s Diamond Store". It appears Zales never has attempted to register "The Diamond Store" standing alone, obviously there are more than a few other competing "diamond stores" out there.

For example, the "Most Dominant Diamond Store in America" was refused registration just last month, based on mere descriptiveness. And, the very same applicant fared no better with this tagline: "The World’s Best Diamond Store" — similarly refused under Section 2(e)(1) of the Lanham Act for being merely descriptive of jewelry store services.

No imagination, thought or perception required for any of these claimed taglines, so there’s clearly no hope of being inherently distinctive, and it’s even hard to imagine any of them actually acquiring distinctiveness either, so really, what’s the point?

Marketing types, aren’t there more creative ways to communicate that you sell diamonds?

Actually, it appears Zales may have one such tagline pending: "Wish Upon a Diamond". Now, that’s much better.

(2) "Every Kiss Begins With Kay":

Kay Jewelers apparently has been using the "Every Kiss Begins With Kay" tagline for about ten years, and the federal registration reveals no disclaimers and no need for proving acquired distinctiveness, so this tagline falls squarely within the suggestive category, as an inherently distinctive mark. Bravo Kay!

Interestingly, Kay Jewelers at least used to be "The Diamond People" — and this tagline is still federally-registered, but curiously, at least one internet listing for a competing Zales store refers to "The Diamond People" — not, "The Diamond Store" as indicated above.

Amazing how substituting the word "people" for "store" can make such a difference from a trademark ownership perspective, and from a relational or emotional one too, the latter being of particular interest to marketing types, I trust.

(3) "He Went to Jared":

As far as I’m concerned, this tagline really takes the prized jewel. But, I never would have guessed so, had I been clearing the proposed tagline before its first use years ago. Why? The words themselves seem so pedestrian and on print advertisements they seem totally void of any life or emotion. I’m not saying the phrase would be merely descriptive, it probably does have sufficient creativity to satisfy the suggestive category on the Spectrum of Distinctiveness. But the bare words seem, well, boring and lifeless.

Obviously, those behind the creation of the words knew how they could be given life in television advertising. Indeed, it seems to me that what has given this tagline more life and interest (and trademark strength) than any of the others is the television advertising that provides the repetitive (annoyingly so to many) and emotional connection to the phrase. There are spoof ads galore on the web ridiculing the "He Went To Jared" ads. Clearly, this tagline resonates in very strong ways, both pro and con.

My son confirmed this for me over the weekend when he shared a funny incident in his 4th grade history class from last week. Apparently his teacher was looking for students to fill in the blank on her question, "He went to . . ., He went to . . ." — looking for the answer to be the place where Napoleon apparently went on a certain occasion, and one of my son’s friends loudly said, "JARED," and the entire class, including the teacher, burst into laughter.

Clearly, there is power in the "He Went to Jared" branding. Indeed, when typing into the Google search engine the words "he went" the top suggested search completes the request as "he went to jared".

My question is, when a trademark owner has such a recognizable tagline as "He Went to Jared" — why not federally register it? Especially when the very same owner has taken the time, effort, and expense to register the bland, laudatory, and virtually unknown "It Can Only Be Jared" tagline. This one certainly would not have drawn any laughter in my son’s history class.

Bonus questions: Did you know that Sterling Jewelers Inc. apparently owns both the KAY and JARED jewelry brands? By the way, does anyone know why both brands are maintained? Do they compete for different demographic segments of the population? Perhaps you can tell from my questions, I’ve never been inside Jared: The Galleria of Jewelry.