With the holiday season half way over, and Christmas less than a week away, you’re running out of time to bring some holiday cheer to those around you. Luckily, Chipotle, Taco Bell, and Jimmy Dean have your back and they’re ready to help you surprise and delight your food-obsessed friends and family this Christmas.

Perhaps your spouse just can’t get enough burritos from Chipotle? Well, how about Chipotle-branded guacamole, salsa, or tin foil wrapping paper on their gifts?

Or maybe your childhood memories are filled with the scent of a hearty breakfast on Christmas morning at your grandparents’ home. I’m sure your grandma or grandpa would be giddy with excitement when their gift comes wrapped in this sausage scented Jimmy Dean wrapping paper.

If your best friend is more into Taco Bell. You could go all out and build a tower of gifts, with guacamole, cheese, and the rest of the ingredients filling your gift stack wrapped from top (tortilla) to bottom (tortilla).

In today’s age of social media and cable cutting, creative marketing efforts like the above could encourage and deepen brand loyalty among consumers. It’s also a whole lot of free advertising as consumers share this content on social media platforms like Twitter, Instagram, and Facebook. In fact, the Taco Bell CrunchWrapping paper apparently reached #16 on Amazon Canada’s Best Sellers list before it sold out, so the preliminary results suggest the campaign was a success. With this success, it would not be surprising to see more brands join in on the fun next year, so keep an eye out next November for 12 feet of high definition Arby’s roast beef!

Words and pictures are so 2017. This year, it is all about the non-traditional trademarks (i.e., something other than brand names and images). In the past, we’ve covered a variety of these types of trademarks, from colors to product shapes, to sounds and even the touch of a product. Even looking only at college football, there are registered marks for the color of a field, player uniforms, and fan chants.

And 2018 has already given us a new category: hand gestures. Music and fashion mogul Shawn Carter (also known as Jay-Z) recently applied to register the hand gesture below for entertainment services.

According to one origin story, the image of a diamond was meant as a reference to the slang term “rock” for diamonds. Jay-Z’s record label is Roc-A-Fella Records, and using the hand symbol has come to be known as “throwing up the roc.”

Whether due to Jay-Z’s popularity or due to the calorie burning benefits of raising your arms briefly, the symbol has become a bit ubiquitous in popular culture. Everyone from Aaron Rodriguez, Fran Drescher, to Warren Buffet and others are documented roc-throwers. But nobody can do it quite like Hov himself:

Also worth adding to the list is professional wrestler Diamond Dallas Page. He’s been throwing the roc since the ’90s:

Although his gesture is just a little bit different, with his fingers extended. Also, he refers to his symbol as the diamond cutter. He also has already registered a version of the gesture (shown below) as a trademark for various clothing items.

And, come to think of it, he sued Jay-Z over the symbol years ago. Although there isn’t much information available, it appears the case settled out of court with Jay-Z making a payment of an undisclosed amount (to keep it fair and balanced, there is a wrestling source and a hip hop source).

As of yet, no word on whether Diamond Dallas Page will take action against Jay-Z’s trademark application. Perhaps the settlement between the parties prevents him from doing so. But if so, then why did Jay-Z wait for nearly a decade to file his own trademark application? And although the Diamond Cutter was registered as a trademark, should either celebrity own enforceable rights in a hand gesture? Does it really signify source? Or does it remind us of something in a non-trademark manner, like trash compactors remind me of Star Wars or triangles remind me of the White Stripes?

And I would be remiss to not mention the elephant in the room: the conspiracy theory that Jay-Z along with many other musicians, politicians, and others are part of a secret society of the illuminati, freemasons, or (more recently) Taco Bell. Fingers crossed the Trademark Office utilizes her power to issue a Request for Information to demand that Jay-Z answer once and for all whether he is, in fact, a member of the Illuminati.

In-N-Out_Burger_hamburgers_and_cheeseburgers

We’re not talking pizza, we’re talking burgers. Not just any burgers, either, we’re talking In-N-Out burgers. As any California transplant will tell you, no other burger from any other restaurant comes close. In-N-Out has more than just burgers; it also has French fries, shakes, and drinks. They also have a drive-thru if you don’t want to get out of your car. However, In-N-Out does not have a delivery service. And a trademark infringement lawsuit filed yesterday seeks to keep it that way.

As a result of consumer demand and advancements in technology, a smorgasbord of food delivery services have emerged to make it easier for consumers to eat out while staying in. Here in Minneapolis, we have at least four options: Bite Squad, GrubHub, PostMates and the more recent entry, DoorDash.

It is our new Minnesotan friend DoorDash that was on the receiving end of In-N-Out’s lawsuit. In-N-Out asserts that it has repeatedly requested that DoorDash stop delivering In-N-Out food, and stop displaying the In-N-Out trademarks (including the In-N-Out logo) from DoorDash’s website. According to the complaint, DoorDash complied with In-N-Out’s request for a short period, but then resumed its delivery services.

But wait, isn’t DoorDash just giving consumers what they want and, along the way, increasing sales to In-N-Out? Where’s the beef? According to In-N-Out, they’ve got a Double-Double’s worth:

Defendant’s use of Plaintiff’s famous trademarks implies that Defendant not only delivers In-N-Out products to its customers, but that the quality and services offered by Defendant is the same as if consumers had made purchases directly from Plaintiff. Upon information and belief, the quality of services offered by Defendant does not at all comport with the standards that consumers expect from Plaintiff’s goods and services. Further, Plaintiff has no control over the time it takes Defendant to deliver Plaintiff’s goods to consumers, or over the temperature at which the goods are kept during delivery, nor over the food handling and safety practices of Defendant’s delivery drivers. While Plaintiff adheres to the Food Code, on information and belief, Defendant does not adhere to such regulations, including with regard to compliance with required food safety and handling practices.

If Vegas put odds on “what legal defense is DoorDash likely to assert,” the good money would be on “Nominative Fair Use” (sorry American Pharoah). We’ve discussed nominative fair use a few times at DuetsBlog, but the basic issue is whether the defendant is using the mark to identify the actual products or services of the plaintiff. A defense is likely established where:

  1. The product cannot be readily identified without using the trademark;
  2. Only so much of the trademark is used as is necessary for the identification; and
  3. No sponsorship or endorsement of the trademark owner is suggested by the use.

The issue in this case will be whether DoorDash’s use suggests that In-N-Out has sponsored or endorsed DoorDash as a delivery service. Third-party food delivery services have not been around for very long. Do consumers expect a delivery service to be endorsed by individual restaurants? Or do consumers consider a delivery service to be a neutral third-party that simply takes the travel out of “carry-out” service

Having used delivery services before, my instinct says In-N-Out may be out of line. On the one hand, if my Pizza Hut delivery guy delivers cold pizza to me, I would complain to Pizza Hut. But if I had a local pizzeria delivered via DoorDash, my reaction has been “that pizza doesn’t travel well, looks like I need to eat in.” Complicating the matter is the fact that DoorDash has entered into partnerships with other companies, including Taco Bell and 7-11.

Will that be enough to create an association in the minds of consumers? If DoorDash loses, it’s hard to see how any of the other food delivery services can survive, unless they reach individual deals with each and every restaurant they utilize. Such a requirement would add some significant business cost to this model, with little benefit to consumers. Here’s to hoping the issue is resolved quickly, especially for everyone who had planned on getting In-N-Out delivered for Thanksgiving.

 

Debbie Laskey, MBA

In today’s crowded marketplace, how do brands stand out? How do they get as much positive brand awareness and exposure as possible without spending more than their marketing budgets allow? In addition to providing excellent customer service and creating amazing customer experiences, one way is to add co-branding to the marketing mix.

According to Wikipedia, “Co-branding, also called brand partnership, is when two companies form an alliance to work together, creating marketing synergy. It is an arrangement that associates a single product or service with more than one brand name, or otherwise associates a product with someone other than the principal producer. The typical co-branding agreement involves two or more companies acting in cooperation to associate any of various logos, color schemes, or brand identifiers to a specific product that is contractually designated for this purpose. The object for this is to combine the strength of two brands, in order to increase the premium consumers are willing to pay, make the product or service more resistant to copying by private label manufacturers, or to combine the different perceived properties associated with these brands with a single product.”

Here are five examples of effective co-branding:

[1] Intel Inside: During the 1990’s, Intel provided processors for computer manufacturers’ machines in return for endorsements by the manufacturers with a sticker that read “Intel Inside”

[2] Nike and Apple: The Nike+ chip is embedded in its running shoes, and Apple promotes the app in its app store

[3] Southwest Airlines and SeaWorld: As the official airline of SeaWord, Southwest features Shamu on three of its planes

[4] Yum Brands: Two of this company’s restaurants are often built side-by-side: Taco Bell and KFC or Pizza Hut and Wingstreet

[5] Chiquita Bananas and Despicable Me 2: As part of the movie, small characters called Minions developed a love for bananas, thus, the resulting partnership – check out this great website.

While both brands in a co-branding arrangement or partnership can benefit from joint publicity campaigns and positive word-of-mouth marketing, there can also be downsides. If one brand experiences a crisis, the negative events or negative publicity can damage the second brand – even if it was not involved directly. This is why it is critical to carefully evaluate the goals and objectives for a co-branding partnership in advance.

So, would co-branding be an effective method to increase customer loyalty for your brand? Chime in and share your co-branding experiences.

For more examples, check out my Co-Branding Board on Pinterest.

—George Fiddler, Client Relationship Manager, Fast Horse Inc.

Last Saturday night I watched the entire 2011 Taco Bell Skills Challenge, an NBA All-Star competition that puts some of the league’s best point guards through an obstacle course of shooting, passing and dribbling. I somehow turned the tube off thinking about trends in modern crisis communication strategy.

How did this happen? I noticed that a couple of the participants in the basketball drill seemed to have a game plan in place intended to preserve energy, whereas others just appeared content on figuring out their strategy as they went. This then made me think more deeply about the proactive approach that the Taco Bell marketing team took to a disparate recent challenge. Strange connection, I know, but I also happened to be eating a burrito at the time and you know how pervasive the branding is at these sponsored events – it was hard not to think about tacos.  

The aforementioned other Taco Bell–related challenge is the strategy that had to be developed after a Montgomery, Alabama–based law firm filed a class action lawsuit against the fast food chain last month. If you’re not familiar with the lawsuit, here are the lead sentences in its Nature of the Action section:

“This is a consumer rights class action challenging Taco Bell’s practice of representing to consumers that the filling in many of its “beef” food items is “seasoned ground beef” or “seasoned beef,” when in fact a substantial amount of the filling contains substances other than beef. Rather than beef, these food items are actually made with a substance known as “taco meat filling.””

I guess I didn’t notice it as much as it happened, but the approach that Taco Bell took was pretty bold. Rather than shying away from the claims or preparing a response strategy for if and when consumers come knocking, the company took the media–buying initiative and ran full-page ads proclaiming “Thank You For Suing Us."

It also made the lawsuit a focal point of its website with video responses from its CEO and links to the nutritional value of its products. Furthermore, it changed the copy in its paid–search advertising from "Taco Bell" to "Taco Bell Official Facts" about the beef lawsuit.

Surely Taco Bell’s legal folks were confident that the claims made against the brand weren’t legitimate. If the lawsuit was regarding an issue that wasn’t backed by USDA certification, then it’s doubtful the company would’ve brought the issue front and center like it did with its consumers, but it’s still fairly surprising that a major company would choose to bring more attention to a lawsuit, any lawsuit, regardless of how dubious the claims may be. Too many consumers will hear the words ‘lawsuit’ and ‘ingredients’ and make up their mind. It seems that the company realized there was potential for rampant consumer backlash and that it was best to put out the fire before much of one could get started. 

It’s been a month, but it seems like that decision was the right choice. The strategy exposed more people to the lawsuit, but the humor, confidence and transparency that the brand showed were consumer–friendly moves that might have saved an angry online outrage that can escalate in a drop of a dime (see: Kenneth Cole) from happening.

It’s interesting to imagine if this had happened with Taco Bell five years ago and if the brand would’ve taken the same approach before social media changed the communications landscape. Even if it’s out of the fear of consequence, the digital era might just be making brands become better listeners and more honest (see: Dominos). In part so I can finally get this pun out: what do you think the future holds for when someone has a beef with big businesses?

This scene from the Minnesota State Fair reveals how the “About a . . . Foot Long Hot Dog” stand is a “State Fair Taste Tradition. . . .” With respect to the name, I have always believed that the “About a . . .” qualifier is lawyer-driven to avoid false advertising lawsuits if a ruler might reveal a stretching of the truth and/or the wiener unintentionally coming up short on the promised twelve inches.

Turns out, we have much more to fear in the world of “Foot Longs” than literally false trademark claims or even stubby wieners in a bun at the State Fair, so, let’s name that fear: Subway.

Yes, Subway claims to own the word “footlong” as a trademark for sub sandwiches. Now, I fully appreciate that Subway has probably spent lots and lots of money on television advertising for its “$5 Footlongs” promotion, but to claim exclusive rights in the word “footlong” for subs is ridiculous (especially when the ads themselves have multiple references to the fact the term is directed to the length of the sub), in my not so humble opinion. Let’s not forget that Lite is generic for beer.

Subway’s cease and desist letter prompted Casey’s General Store (a convenience store chain based in Des Moines, Iowa) to bring a declaratory judgment lawsuit:

“Specifically, this action seeks, inter alia, a declaration that Casey’s use of the generic term “footlong” to describe a footlong submarine sandwich, commonly referred to as a “sub”, is not a violation of any right currently owned by Subway; and it requests an order so saying and declaring that “footlong” for description of sandwiches including submarine sandwiches is generic. Further Casey’s seeks an order that Subway’s attempt to assert trademark rights against Casey’s for its use of “footlong” for sandwiches and/or restaurant services is frivolous litigation and seeks an award of damages and attorney’s fees against Subway.”

If Casey’s is right, this could satisfy the exceptional case provision of the Lanham Act, which could result in Subway being ordered to pay Casey’s attorneys fees in defending against the claim.

It appears that Casey’s aggressive response to the cease and desist letter is designed to take advantage of all the current focus and attention on “trademark bullying” — although that specific phrase does not appear anywhere in the complaint.

As you may recall, I have suggested that “there seem to be enough existing legal tools to handle a real trademark bully, namely, one that brings frivolous, bad faith, vexatious or objectively baseless litigation.” Casey’s appears uniquely poised to test this proposition.

In support of its claim of frivolity, Casey’s relies, in part, on a transcript from a 2009 Subway case where a federal district court judge in the Eastern District of Virginia indicated he thought that “footlong” should be considered generic for subs.

With respect to Subway’s pending trademark and service mark applications for “Footlong” at the USPTO, Casey’s has this to say:

Subway has sought trademark protection for “footlong” for sandwiches and restaurant services in trademark application Nos. 77/752,328 (“Footlong” for restaurant services) and 77/324,328 (“Footlong” for sandwiches). The application for “footlong” for sandwiches was approved for publication by the trademark examiner, but has not issued as a registration because there are many ongoing opposition proceedings filed by the likes of Long John Silvers, Taco Bell Corporation, Kentucky Fried Chicken, Dairy Queen, Pizza Hut, Inc., and Domino’s, just to name a few. The application for “footlong” for restaurant services is currently under rejection as a mark that consists of the generic name for something that is served in providing restaurant services. A true and correct copy of the rejection issued by the trademark examiner is attached hereto as Exhibit C. Subway’s attempt to establish an acquired distinctiveness under § 2(f) of the Lanham Act has to date failed.

Here’s a question, how on earth did the word “footlong” for sub sandwiches get approved for publication at the USPTO?

Here’s another, does Subway deserve to have each and every customer measure the length of their purchased sub to see if it comes up short, and if so, suffer the consequences failing to add the “About a” qualifier too?