Well, perhaps more than just about every trademark use guideline in existence, including those offered by the International Trademark Association (INTA) ("NEVER use a trademark as a verb"):

 (television commercial link on Youtube here)

Maybe because you have been following the trademark verbing dialogue here on DuetsBlog and you have learned all about Managing The Legal Risk of "Verbing Up" Brands and Trademarks.

If so, you probably also know that it makes sense to seek federal registration of the slogan or tagline containing the verbed use of your mark, as Orbitz has done here.

As I have written before:

A growing number of brand owners apparently are convinced the stated risk of genericide is either too remote or distant to fear, or at least that the marketing benefits of encouraging the verbing of their brands far exceeds losing all exclusive rights in the trademarks associated with those brands. So, what is a responsible trademark lawyer to do when those in charge of the brand insist on treating it as a verb? Instead of papering the file with "I told you so" memos, I’d suggest we roll up our sleeves, put on our thinking caps, and get creative.

Here was my attempt at such creativity, while wearing something close to a thinking cap.

Have you modified your company’s trademark use guidelines to manage/control any verbing uses?

What creative solutions do you have toward mitigating the risk of trademark genericide?

Can we agree that this is one more example of where per se rules simply won’t cut it anymore?

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 mark against this use, our trademark could become generic.”

Indeed, Monster Cable CEO Noel Lee — someone very experienced in receiving accusations of trademark bullying on behalf of his company — is quoted as saying:

We have an obligation to protect our trademark; otherwise we’d lose it.

Actually, as to the point about genericide and the feared complete loss of trademark rights, I think we should all take a deep breadth and ask how realistic is the risk of genericide for the trademark in question, as we have done with the hyper-active-blanket-concern over the verbing of brands and trademarks.

Now, as to the point about legal obligations and duties, this characterization seems more than a bit over-blown as well.

Let’s make no mistake, there are real consequences of trademark owners putting their heads in the sand and not policing and enforcing their trademark rights, but clearly, no one is breaking the law or going to jail, and no one is going to incur civil or criminal liability for merely being a lazy or inattentive trademark owner who fails to police. Consequences yes, liability and law-breaking, no.

As we have said before, in the context of Twitter’s once laissez-faire approach to trademark enforcement, in most cases, a failure to police or enforce has a direct impact on the scope of rights in a particular trademark, but the genericide worst-case-scenario risk often can be an overblown form of drama.

The skill and experience of a talented trademark type, of course, is being able to discern when the risk of genericide is real and when it is faux.

So, if your company or client is being sized up as a trademark bully, and the shoe doesn’t fit because you’re engaged in legitimate trademark enforcement activities, a more intellectually honest and helpful defense to the negative bully label might be to focus on explaining your genuine concern over likelihood of confusion, or likelihood of dilution (if the mark in question is famous), instead of blaming the law and our legal system, and hiding behind legal “duties” and “obligations” that don’t exist.

If you’re finding this difficult to do, maybe the shoe fits afterall, and you end up living with the label.

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?

There are many things that serious trademark owners do throughout the lifecycle of a trademark to mitigate risk, protect the valuable goodwill in their underlying brand, and preserve their valuable investment in this important intellectual property asset. Here is a fairly extensive, but certainly not exhaustive, and often forgotten, list of those things:

  1. Clear new marks before using them even if “only” for brand extensions;
  2. Understand the pros and cons of different name styles;
  3. Adopt suggestive marks over merely descriptive ones;
  4. Self-police marketing materials to keep marks suggestive and non-functional;
  5. Steer clear from the D-word;
  6. Appreciate the pros and cons of non-verbal wordless logos;
  7. Strive to own logos that can truly stand alone without words;
  8. Spend time developing an acceptable generic name too when launching new brand;
  9. Develop non-traditional trademarks;
  10. Recognize the power of federal trademark registration;
  11. Know when concurrent trademark registration makes sense;
  12. Appreciate the paradox of brand protection;
  13. Attend to brand strength and understand the importance of trademark enforcement;
  14. Educate themselves about trademark likelihood of confusion issues;
  15. Prefer their own creativity over borrowing the creativity of others;
  16. Question how realistic the risk of trademark genericide is for them;
  17. When realistic, they take concrete steps to avoid the perils of trademark genericide;
  18. Develop plans to avoid trademark abandonment;
  19. Avoid bona fide allegations and findings of trademark fraud, trademark bullying and reverse domain name hijacking;
  20. Know what a touchmark is;
  21. When appropriate, they pick up the phone before writing a demand letter;
  22. Follow Seth Godin’s marketing advice, but avoid his trademark advice;
  23. Manage the legal risks of verbing trademarks and brands;
  24. Appreciate the limits of the nominative trademark fair use defense;
  25. Steer clear of Dr. No on the Parade of Horribles;
  26. Hire trademark counsel prepared and expected to take a position; and
  27. Of course, read DuetsBlog every day and note the milestones along the way.

Now, this is not to say that trademark owners who don’t do each of these things is comedic or not to be taken seriously, but many at least consider or should consider doing these things.

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 supported by use in commerce (that is, bona fide use in the ordinary course of trade), and they are cared for properly (e.g., they avoid legal abandonment and the graveyard of genericness).

Racebrook Marketing Concepts, LLC is promoting an upcoming Brand Name Auction on Wednesday December 8th at the Waldorf Astoria in New York, where there will be "150 Timeless Trademarks and Domains" offered for sale. Hat tips to Mark Prus of Nameflash and Marty Schwimmer of the Trademark Blog.

The Brand Name Auction touts: "Buy a priceless Trademark, including its Domain Name, and reinvent its commercial success. Never in the history of marketing and advertising has there been this unique investment opportunity." This seems to suggest that there is no underlying goodwill to transfer with the alleged trademark right. If so, there is no actual trademark right to transfer, unless of course, there is an existing trademark registration, or perhaps, a valid pending intent-to-use trademark application. Timeless, I guess, well see?

As most trademark types appreciate, Section 10 of the Lanham Act, can be a trap for the unwary when intent-to-use trademark applications are bought and sold. Not done right and not only is the assignment void, but the underlying intent-to-use trademark application is voided as well. These pitfalls are statutory and they are quite intentional. The provision of Section 10 relating to the constraints on the transfer of intent-to-use trademark applications was added in 1989 to address Congress’ concern about the intent-to-use system spawning the trafficking of trademarks and creating a secondary market for trademarks not tethered to any underlying goodwill.

The Brand Name Auction is clearly aware of the Section 10 pitfalls, by structuring the purchase in a way to (hopefully) avoid the pitfalls of Section 10:

The initial purchase is a royalty free, fully paid, exclusive license, including the right to sub license, that you can turn into full ownership when you file the Statement of Use and it is accepted by the Patent and Trademark Office.
 

The question remains, however, will the purchased "trademark," using this structure, hold up under legal scrutiny? If tested, will courts and the Trademark Trial and Appeal Board view the Brand Name Auction as just what Congress intended to prohibit through the intent-to-use constraints set forth in Section 10? Or will the above temporary licensing strategy — apparently designed to avoid the Section 10 prohibition — be blessed? If so, brace yourself for more and more trademark auctions. If not, good luck.

In the end, at least for now, the words "buyer beware" couldn’t be more apt than they are here.

Word to the wise, talk to your favorite trademark type about the appropriate due diligence before investing in any alleged brand names, trademarks or domains.

UPDATE: Better to create a brand name or buy one?

As a trademark type, something struck me as odd about the Best Buy logo image appearing on the brand new outdoor baseball scoreboard at Target Field, during the Minnesota Twins recent home opener against the Boston Red Sox, so I captured a photograph to discuss it here on DuetsBlog.

What caught my eye was the curious placement of the ® federal registration symbol. Its positioning adjacent to the words "Best Buy" appeared to convey that the words "Best Buy" must be distinctive and federally registered, separate and apart from the hang tag logo, and I knew better, or at least, I thought I did, as I’ll explain.

After all, I knew a few things for sure, things that should counsel against placing the ® registration symbol next to the words "Best Buy":

  1. Use of the federal ® registration symbol adjacent to matter not federally registered is a misuse of the federal registration notice which may result in serious repercussions such as false advertising liability, and/or a finding of "unclean hands," if there is an intent to deceive people into believing unregistered matter is, in fact, registered as a trademark; 
  2. Some twenty years ago in Best Buy Warehouse v. Best Buy Co., Inc., 751 F.Supp. 824 (W.D. Mo. 1989), "Best Buy" was buried in the trademark graveyard, when then Chief Judge Scott O. Wright held "that ‘best buy’ is a generic term not capable of receiving trademark protection";
  3. A generic term is the antithesis of a trademark. It can never function as a trademark to identify and distinguish the products or services of only one seller;
  4. Generic terms and trademarks are mutually exclusive concepts under the law. Generic terms are not subject to appropriation and they are ineligible for registration or protection;
  5. Generic terms are part of the "public domain" or "linguistic commons," they cannot be owned and they are free for all to use without risk of infringement or dilution liability;
  6. Best Buy actually asked for it, so to speak, because the genericness ruling was sought by Best Buy to short-circuit a trademark infringement case brought against Best Buy for its use of "Best Buy Co." and "Best Buy Superstore" in Kansas City, Missouri, by an earlier retailer of office furniture also operating in Kansas City, under the names "Best Buy Warehouse," "Best Buy Office Furniture," and "Best Buy Office Warehouse"; 
  7. In support of its successful genericness defense, among other evidence showing that "best buy" is nothing more than sales "puffing" in the area of retail sales, Best Buy had engaged an expert witness who testified that the term "best buy" is generic when used in association with the sale of goods to the general public;
  8. Best Buy’s silver-bullet style genericness defense resulted in the grant of summary judgment on all counts of Best Buy Warehouse’s complaint, including trademark infringement, false designation of origin, unfair competition, trademark dilution, and trademark disparagement;
  9. Former Chief Judge Scott O. Wright’s decision, finding "Best Buy" generic as a matter of law, and not the subject of trademark protection, was affirmed by the Eight Circuit Court of Appeals, and then the U.S. Supreme Court declined to hear any further appeal, so the genericness ruling became a final judgment; and 
  10. Each of these federal registrations containing "Best Buy" had expressly disclaimed exclusive rights in the words "Best Buy":

Mark Image  Mark Image

Mark Image  Mark Image 

 

Mark Image

As it turns out, however, what I didn’t know or appreciate is that Best Buy has been quietly working behind the scenes to undo the normally permanent implications of the genericness ruling by affirmatively seeking federal registration. I also didn’t know or appreciate until now that Best Buy convinced a Trademark Examining Attorney at the U.S. Patent and Trademark Office to approve for publication "BEST BUY," just the words, in standard character, without any design or style limitations. And, since no one opposed, a federal registration for BEST BUY issued about two years ago. As such, at least for the time being, there is no misuse of the registration notice symbol appearing in close proximity to the words BEST BUY. 

This may very well be the first time in American trademark history, where a party has avoided trademark infringement liability by winning its genericness defense and then later obtained a federal trademark registration for the very words it had previously convinced a federal district judge were generic and incapable of any protection.

Apparently recognizing the gravity of the change in position, Best Buy’s 2007 trademark registration application was not the garden variety type, but instead, it included a variety of atypical materials, including testimony from Best Buy’s Senior Vice President, Marketing Communications and Business Operations, testimony from a survey expert, and perhaps most significantly, a thirty-one page legal brief detailing and arguing Best Buy’s current position on the subject, including these highlights:

  • BEST BUY is not generic;
  • BEST BUY is descriptive;
  • BEST BUY has acquired distinctiveness;
  • Judicial estoppel should not be applied;
  • Best Buy’s different positions are not clearly inconsistent;
  • Collateral estoppel should not be applied;
  • The de facto secondary meaning doctrine should not prevent registration; and
  • Even if once generic, the Singer doctrine permits protection of BEST BUY as a trademark.

Needless to say, Best Buy’s submission makes very interesting reading, and next week, I’ll explore it in more detail. In the meantime, I wonder what Best Buy Office Furniture thinks about it?

More importantly, what do you think? 

Should the BEST BUY registration survive litigation scrutiny?

Should it matter who might challenge the registration down the road?