Trademark Applications

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.


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–Sharon Armstrong, Attorney

Trademark attorneys often counsel their clients to file trademark applications with the broadest scope of goods and services possible (e.g., broad categories of goods without any trade channel limitations). The main reason for this is to provide clients with the broadest scope of trademark insulation on the registry. Filing for ELVISWARE for “tableware” rather than “glassware featuring pictures of Elvis” may prevent third parties who desire to register a similar mark for related but not necessarily identical goods and services (say, ELVISWARES for table linens). If the Trademark Office finds the identification to be too broad or unclear, it will simply issue an office action to require further clarification or specificity.

Filing with a broad scope of goods and services has other benefits too, such as providing a little mystery as to the precise nature of your goods and services. A fun example is related to the recent video teaser from Neill Blomkamp, the director of the film District 9, which was nominated for a best picture at last year’s Oscars. As the website Slashfilm notes, “the video…features two young men who discover a dead alien-looking creature in a puddle on the side of a dirt road. The creature has a circular stamp on its side which reads ’18.12 AGM Heartland Pat Pend USA’ and the outer circle reads: ‘US Inspected and Approved.’”

More after the jump…


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