— Jessica Gutierrez Alm, Attorney

Last week, a press release announced that Ford would “Open[] [its] Portfolio of Patented Technologies to Competitors to Accelerate Industry-Wide Electrified Vehicle Development.”  Media outlets were quick to report that Ford was joining Tesla in opening its patent portfolio, referencing Tesla’s widely publicized promise last year not to enforce its

Things that are worth talking about need names. Good, distinctive names are best. As you may recall, last year we wrote this about non-verbal logos needing names:

“Marketing types, when brand owners operate in the world of non-verbal logos, isn’t spreading the news by word of mouth more difficult without a word to bring

Despite watching a lot of Olympics coverage, no I haven’t picked up Russian or another Eastern European language yet.  Translation:  is going backwards a new ad trend?

I have been noticing a surprising trend towards using backwards video play.  Take for instance these examples:

TD Ameritrade ad featuring Olympic speed skater  J.R. Celski (Goodby Silverstein

—Dave Taylor, Taylor Brand Group

In this age of fiercely defended intellectual property, it’s tough developing even a single new product name.  Registered trademarks guard their brand territory in every industry and fence out their competitors. Launching a new product name can take months or years of name generating, testing, and legal process.

Done well, a sound naming strategy can help establish your brand as the high ground in the marketplace battlefield, where it will be aspired to, imitated and competed against by lesser brands struggling to reach the top.

Done poorly, product names can have awkward connotations, comprehension issues, or nagging legal problems that will cause confusion among your prospects and customers, and pay for new furniture in your attorney’s beach house.

Yet amid the difficulty of getting even one product name right, Honda Motors has gracefully created a whole family of product brands that couldn’t have been better if not a single circle R stood in their way. Consider their two most popular models, the Civic and the Accord. Link them together with other successful models, the Prelude, or the Pilot. Ahhh, do you feel it? There is a reassuring promise of peace and harmony that comes from not just one of those names, but all four of them. The Insight, the Fit and even the quirky Element are equally well integrated into the Honda family of pleasant, calming automobile trademarks. Each name has meaning we instantly understand, but in addition they work seamlessly together as a family of brands.


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–Dan Kelly, Attorney

Last month, the United States Court of Appeals for the Ninth Circuit issued an opinion in the case of Toyota Motor Sales, U.S.A. v. Tabari that asked whether the domain names buy-a-lexus.com and buyorleaselexus.com used in connection with automobile brokerage services infringed Toyota’s trademark rights in LEXUS.

Conventional legal wisdom is that only the owner of a trademark has a right to use its trademark in a domain name in connection with related goods or services.  The back-of-the-envelope legal calculus is not difficult:  the domain names incorporate LEXUS in its entirety, and they are used in connection with auto brokerage services–services that are closely related to automobiles.  There is only one catch:  the brokers legally deal in genuine LEXUS vehicles.  Astute readers will recognize this fact as raising the issue of nominative fair use.

The Court articulated its nominative fair use test this way:

In cases where a nominative fair use defense is raised, we ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.

While correct, I prefer how Steve has articulated the nominative fair use defense, which is established when:

  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.

I bring this up, because the Court’s analysis began “by asking whether the Tabari’s use of the mark was ‘necessary’ to describe their business.”  In my initial read, I thought that the Court was beginning with the second element of the test, keying off of the word “necessary,” but this is a restatement of the first element, which addresses the issue of necessity in using the mark.  The second element, while using the word “necessary,” really addresses the scope of the use.

The Court recognized that it was not necessary in an absolute philosophical sense for the Tabaris to use buy-a-lexus.com or buyorleaselexus.com; it observed that they could have just as easily used autobroker.com or fastimports.com (Fast Imports being the Tabaris’ d/b/a).  But here’s the clincher:  “One way or the other, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that’s nearly impossible to do without mentioning Lexus, . . . be it via domain name, metatag, radio jingle, telephone solicitation or blimp.”  (It is fair to characterize this last quip as dicta.)

Lawyers and fans of legal minutiae can read after the jump for one other legal issue raised by this case that has me puzzled.


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by Randall Hull of The Br@nd Ranch®

AKA: "Oh What a feeling".

Unless you have been on a trek to one of the poles or living in a cabin deep in the woods somewhere, you have likely heard about the huge problem facing Toyota Motor Corporation and its U.S. organization Toyota Motor Sales USA Inc.

Tiger Woods drives by Allison.jpg

The impact of the Tiger Woods scandal in branding can be viewed from two different perspectives. The first perspective comes from the point of view of the companies that paid Woods to endorse their products. The second perspective is how the personal brand of Tiger Woods will be impacted as the smoke clears from this series of events.

Two professors in University of California-Davis’ Economics Department attempted to measure the impact from the first perspective. They claimed that shareholders in publicly traded companies that Woods endorsed lost $5-12 billion in the weeks that followed the car accident in Florida that set off the scandal. They undoubtedly have an interesting perspective, but there are limiting factors in their research. However, an undisputable fact of the Tiger Woods scandal is that it put a lot of brand management teams in a very delicate situation. Brand managers at firms where Woods served as an endorser had to consider how their brands would be perceived by their target consumers if they were to continue the relationship. It is not an enviable position. 

When a brand chooses to link arms with a celebrity endorser, it must consider which celebrities will be effective endorsers. It is essential to select celebrities that will positively contribute to revenue growth and profitability. I believe that a celebrity endorser is most effective when the target consumer perceives them as attractive or desirable in some fashion and the product is related to the expertise of the celebrity. For example, Michael Jordan was an effective endorser of both Nike and Gatorade because of his status as an elite athlete and the fact that both brands are related to athletic performance. Gisele Bundchen is an effective endorser for Dolce & Gabbana fragrances because scent is an important aspect of appearance and she is the embodiment of phenomenal appearance. She would be far less effective as a celebrity endorser for the Toyota Camry. With regards to Tiger Woods, he is most effective in endorsing Nike Golf products and any other golf related brands. His effect is diminished for brands like Gillette and AT&T.


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