When trademark owners are accused of bullying and shamed in public, a common and knee-jerk defensive response to justify the cease and desist letter or enforcement action is: “We have a legal duty and obligation to police and enforce our trademark rights.” And, some might even go on to say: “If we don’t enforce our
Who Owns a Dead Brand?
– John Reinan, Senior Director at Fast Horse, a Minneapolis marketing agency
I love “orphan” cars — the marques that have gone out of business. Most of them are barely remembered by Baby Boomers, much less anyone younger. Packard, Hudson, Nash, Studebaker, Willys – these and other automakers often were stylistically and technically more
The Brand Name Auction: Bargain or Bust?
Laurel Sutton, Principal of Catchword Brand Name Development
Back in December, Racebrook Marketing Concepts held a Brand Name Auction during which "150 Timeless Trademarks and Domains" were offered for sale. But the auction was more bust than boom: only about 50 people showed up, with a few more bidders participating online. The prices, too, were disappointing, with the highest bid coming in at $45,000 for Shearson, $23,500 for Meister Brau, and $30,000 for Handi-Wrap. Collier’s, a magazine brand with a long history, sold for $2000, to someone acting as a third-party representative for a publishing company, according to AdAge.
Part of the reason for the low turnout, and low returns, was likely confusion over just what one got for the winning bid. The folks who bought the iconic record label Victrola for $1000 got the rights to an intent-to-use trademark application for a wide variety of goods and services in Class 9, including CDs, televisions, computer hardware and software, calculators, printers, amps, speakers, and cell phones. The catch is that since the ITU was filed in 2006 and published for opposition in 2008, the new owners have very little time to verify actual use and submit a specimen of use. Many of the other brands sold were on the basis of ITUs, although a few, like Handi-Wrap for plastic wrap, were actual registered trademarks.
Now this kind of intellectual property dealing is familiar territory to trademark attorneys, but to the average marketing exec or start-up entrepreneur, it’s rough going. The distinction between trademark and brand is something that naming companies like my own, Catchword, have to explain to the majority of new clients. And a "brand name auction" certainly sound like you’d be getting more than just a trademark application; it could imply a logo, collateral, advertising, or even patents to a product. Perhaps it’s not deliberately misleading, but it’s certainly overpromising.
From a brand perspective, the important question is whether you can repurpose a brand name. This is a different matter than the revival of a brand, as was the case with TaB. Coke never stopped making TaB, but the brand suffered a deep decline in popularity when Diet Coke was introduced. But some people remained fans, and the brand continues to be produced; it’s even gained something of a cult status with celebrities, and has a whole fan-site devoted to its no-cal goodness (ILoveTaB.com). TaB never died. It just took a little breather.
But take one of the unsold brand names from the auction, Annie Hall. The trademark for this name is specifically for clothing, and the name itself is obviously derived from the 1977 Woody Allen movie. I’m not surprised it didn’t sell; speaking as a consumer, the last time I dressed like Annie Hall was in, oh, 1978. Annie Hall as a character is iconic because of the way she dressed. The influence of that style – vintage, layered menswear – has been strong and persistent, and women’s style is better for it. But the name, and the brand, say "1977" and "slightly crazy" much louder than they say "fashionable". Reviving the brand and trying to invest it with a modern feel seems implausible, if not impossible. Perhaps someone will buy it just to print t-shirts that say "Annie Hall" on them.Continue Reading The Brand Name Auction: Bargain or Bust?
Timeless Trademarks?
Beneath the large umbrella of the law known as Intellectual Property (or simply, IP), one of the badges of superiority that trademark lawyers are able to brag up to their patent and copyright colleagues is that trademark rights are capable of lasting forever — there are no term limits — so, the underlying legal rights can be truly timeless, provided, of course, they continue to be
Crowded Trademark Parties & Coexisting Store Names
If you don’t mind the wait, a crowded parking lot is often a good strategy when hunting for an excellent restaurant while you’re in unfamiliar territory. Similarly, a large crowd lining up outside a retail store is typically a good sign that the business is doing something right, or perhaps, they just happen to have something rare that everyone wants.
GM’s Chevy Trademark Dodges Fatal Lyrics: “This’ll Be The Day That I Die”
My trademark antennas automatically rise when I hear about a brand owner announcing plans to trade in one brand for another, as GM recently and surprisingly did with the Chevy nickname (brand and trademark), in favor of the longer and more formal Chevrolet brand name (and trademark). Hat tip to Nils Montan of IPAlly, for spotting
Dialing in on Trademark Abandonment?
What do these photos have in common, besides the fact that they are both from Roadsidepictures‘ beautiful photostream collection posted on Flickr?
Well, one might say, they both illustrate a form of abandonment, an abandoned building on the left, and apparently some abandoned intellectual property in the form of a clock logo and ’round the clock protection tagline on the right (the package of vintage Dial soap apparently was purchased in Sandy, Utah, as late as 2003).
With respect to trademark abandonment, at least under U.S. Trademark Law, it is often said, a trademark owner must "use it or lose it." Apparently in that spirit, over the last couple of decades or so, Dial has permitted its various U.S. Trademark Registrations containing the clock logo and ’round the clock protection tagline to become cancelled or to expire, here, here, here, here, here, here, and here.
If a trademark owner discontinues use of a trademark with an intent not to resume use of the mark, at that very moment, the trademark is immediately abandoned (putting aside the potential issue of "lingering goodwill"). Since U.S. Trademark Law appreciates (or at least anticipates) that there is likely to be debate over the "intent not to resume use" element, legal abandonment is presumed after three consecutive years of non use.
A couple of other important points about trademark abandonment are worth noting.
Under U.S. Trademark Law, if a trademark registration has been abandoned or permitted to lapse or expire, it doesn’t necessarily mean that the underlying common law or unregistered trademark rights have been abandoned — if the mark remains in "use" there is no trademark abandonment, only relinquishment of the registration. Keep in mind that "use" means "bona fide use" of a trademark "made in the ordinary course of trade, and not made merely to reserve a right in a mark."
In addition, trademark abandonment occurs "[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." So, if the trademark owner does something (like misuses its mark) or fails to do something (like enforce its rights against infringers) that causes the mark to become generic or otherwise lose its significance as a trademark, there is legal abandonment of trademark rights.
So, what often happens in the marketplace after a trademark is abandoned?
Others tend to view this as an open door to adopt the same or similar marks:
Do you suppose Dial has any regrets in letting the clock logo go?Continue Reading Dialing in on Trademark Abandonment?
Kleenex® Not Wanting to Blow It: Some Steps to Avoid Trademark Genericide
This sponsored banner ad is currently appearing in AdAge’s Daily News on-line newsletter:
How many boxes of tissue do you suppose this ad is responsible for selling?
If the answer is none, that is probably fine with Kimberly-Clark since the return on investment for this ad is measured quite differently, I’m sure, given how the
Just Verb It? Part III: Testing the “Slippery Slope” of Using Brands as Verbs
Although intellectual property lawyers of the Dr. No variety may not like to admit it — I submit that, not all slippery slopes are created equal. While some slippery slope cautions might prevent a few bumps and bruises in traveling along a particular path (e.g., the one on the left below), I suspect far fewer slippery slope cautions actually prevent life-ending falls from perilous cliffs (e.g., the one on the right below), yet other man-made slippery slopes specifically are designed for fun and enjoyment — not danger — and have generated enormous sales over the years (e.g., WHAM-O’s SLIP’N SLIDE brand products).
So, putting aside Professor Douglas Walton’s teaching that the slippery slope argument is “often treated as a fallacy,” it is worth asking what brand of slippery slope most accurately represents the risk associated with marketers using their brands and trademarks as verbs?
As discussed in Part I of my Just Verb It? series, many marketers love the idea of having their brands embraced as verbs, but many trademark lawyers totally forbid any “brandverbing,” i.e., “mis-using” brands (adjectives) as verbs: “Why? To prevent brand names and trademarks from becoming generic names and part of the public domain for anyone to freely use, even competitors.”
No doubt, genericide — the ultimate fear of using brands as verbs — equals certain trademark death, a horrible result from both marketing and legal perspectives; but, I submit it doesn’t necessarily follow that brandverbing activities automatically result in trademark death or genericide. To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?Continue Reading Just Verb It? Part III: Testing the “Slippery Slope” of Using Brands as Verbs
Battle of the Nerds? Best Buy’s Geek Squad¬Æ on Trademark Patrol
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Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names “Geek Patrol,” “Geek Squad,” and “Geek Squad Patrol”. Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit B (DomainTools.com print out), Exhibit C (Tollfreeda.com print out), and Exhibit D (Superpages.com print out).
For those of you interested in great entrepreneurial stories, Robert Stephens founded Geek Squad while a student at the University of Minnesota, riding his bicycle around Minneapolis to make computer house calls. The stylish collection of branded Beetles permitted Stephens to cover much more ground when making house calls or office calls. I actually had the pleasure of meeting Robert Stephens and toured his humble first office located above Moose & Sadie’s cafe and coffeehouse blocks from downtown Minneapolis. He gave me and my wife what are now vintage Geek Squad t-shirts, obviously we should have had them autographed at the time!
My early and initial observations of the Geek Squad trademark Complaint are below the jump.Continue Reading Battle of the Nerds? Best Buy’s Geek Squad¬Æ on Trademark Patrol