We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well.

Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important right to federally register trademarks.

What I mean by beginning there is, discreetly-used third party conflicting marks “flying under the radar,” rise to another level of trademark enforcement importance for a trademark and brand owner when the user also seeks federal registration, almost requiring the opening opposition salvo.

Federally-registered trademark owners know the importance of protecting the federal trademark register, because what, and how many similar third party marks, are allowed for registration, can negatively impact the owner’s trademark strength, scope of rights, and enforcement success.

Trademark rights are dynamic, they’ll shrink or grow over time, depending on the landscape at the time of enforcement, so not limiting registration at the USPTO can have more negative impact on strength and scope than an single, discreet, unauthorized use of a confusingly similar mark.

Looking the other way at trademark applications landing within a brand owner’s legitimate scope of protection, indirectly sends the perhaps unintended message to the trademark world, and those who monitor it, that the owner willingly accepts the shrinkage of its trademark rights.

So, serious trademark owners watch for conflicting filings at the USPTO, and stand in the way of registration, until agreement can be reached on how to coexist without a likelihood of confusion.

What I mean by many trademark disputes ending at the TTAB is, most oppositions do not go to final decision, the vast majority settle with a mutually-beneficial coexistence agreement in place.

And, when they don’t, trademark and brand owners — who follow us here — also know that the importance of final TTAB decisions has been raised, as the U.S. Supreme Court recently opened the door to having certain TTAB decisions — through the application of issue preclusion — control the outcome of later federal district court infringement and dilution law suits.

Congratulations to the TTAB on reaching sixty years of dedicated service to trademark and brand owners, as we look forward to the interesting issues likely to be decided in 2018 and beyond.

As I reflect on the more than twenty-five years of my experience before the TTAB, at this point in time — spanning nearly half of the TTAB’s existence — I’ll have to say, the TTAB seems to be carefully and thoughtfully emulating the characteristics of a fine wine as it matures.

What are your predictions of the 2018 decisions that will stand out? Fraud? Functionality? Fame?

Will the TTAB revisit its previous perceived inability to address Constitutional issues, like say, dilution tarnishmentreligious text marks, or application of the Section 2(c) bar to prevent federal registration of political trademark speech, and, if not this coming year, when?

I’m thinking this will be the year of informational and failure to function decisions, how about you?

On this Cyber Monday, I’m left wondering, will we ever have a day when the metrics and automated tools available are so accurate and reliable that intangible assets like brands (and trademarks) regularly will be valued, bought, and sold online?

At rock bottom, a brand’s value is at least what another — in an arm’s length transaction — is willing to pay for it.

At least, because at any given moment, there may be no buyers willing to pay the brand owner’s lowest price, so in that instance, the owner values it more than others and keeps it, at least for the time being, until a buyer emerges who shares the same value determination.

The far more difficult question to answer is to put an actual number on the value of a brand, explaining exactly what factors must be considered to determine value.

No doubt, accountants play an important role in deciding, but they cannot and should not do so in a vacuum without collaboration from other relevant disciplines.

To that point, just last week, Branding Strategy Insider published an interesting piece on Brand Equity and the Center of Value. Last month Brad VanAuken also wrote at BSI about brand value: “Ultimately, brand value is a perception. It is a perception of the ratio between benefits and cost.”

Yet, Seth Godin appears to be skeptical of many beliefs about brand value:

“The vast majority of products that are sold are treated as generic by just about everyone except the naive producer, who believes he has a brand of value.”

“If we (the user or the observer) can’t tell who made it, then there’s no brand. That’s the distinction between generic and specific…”

Actually, that is one more place where trademark types might differ, because in our world, knowing who puts out a product under a certain trademark is not required to own the legal right to exclude others. Trademarks exist even when their owner is anonymous or unknown.

And, while the value of an underlying trademark is not necessarily coextensive with the brand’s overall value, it must be considered, as one of the important intangible assets forming the ultimate value of a brand.

As Brad Walz articulated here earlier this month, a trademark strength analysis is an important consideration to determining a brand’s value. Part of trademark strength would be the legal ability to expand the use of a brand name and should be considered too.

In addition, the extent and validity of registered rights must be considered. For example, if a brand owner has begun to expand with sales and distribution overseas, and it has laid the legal foundation for not being excluded from using the brand name in those countries (by winning the race to the trademark office in those countries), these valuable legal rights must be considered in the overall value of a brand.

At a minimum, it seems to me, marketing types, trademark types, and other intellectual property types, must be part of the team to determine a brand’s value.

Who else must be represented at the accountant’s table to arrive at an accurate and reliable number for a brand’s value?

Fame tends to attract attention, and imitation, especially unwanted imitation from, well, even pests. The Google trademark appears to have obtained such a high degree of fame that no third party can include the word “Google” in its mark without having a problem, regardless of what the third party happens to be selling. Ron, can you say, right in gross?

A couple of weeks ago, the USPTO refused registration of GOOGLE UNIVERSITY for college consulting services and in doing so, it not only relied on likelihood of confusion under Section 2(d) of the Lanham Act, as a substantive basis for refusal, but it also relied on Section 2(a) of the Lanham and the false connection prohibition (a clever way to avoid the fact that Examining Attorneys at the USPTO cannot rely on dilution of a famous mark under Section 43(c) for ex parte registration refusals):

“Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Google, Inc.  Although Google is not connected with the services provided by applicant under the applied-for mark, Google is so famous that consumers would presume a connection (please note the attachment from About.com, which refers to Google as one of the top 5 most popular websites in  the world).”

Indeed, the only third party marks — arguably containing the Google mark — that have achieved federal registration are those consisting of or comprising the plural form of the word (apparently creating a distinct commercial impression from GOOGLE): GOOGLES for pet toys, children’s books, plush toys, fireworks, conducting theme parties, cookies, and protective eye and face shields for dental offices. OK, there is one exception, but it’s understandable: Barney Google and Snuffy Smith for a cartoon series.

Yet — given the appearance of the above depicted Bugaboo Pest Control logo that clearly refrains from using the word “Google” — in copying the distinctive and widely recognized lettering style and colors of the Google logo, one might ask a related “right in gross” question, namely: Is the non-verbal visual impression of the Google logo so well-known and famous, that it may not be replicated by others, regardless of the words infiltrating this particular appearance and style.

Perhaps something can be learned from the breadth and wide scope of protection afforded the famous Coca-Cola script trademark against another’s poster depicting the words “Enjoy Cocaine” using the same color and distinctive lettering style, where the court noted in 1972:

“One would have to be a visitor from another planet not to recognize immediately the familiar ‘Cola’ in its stylized script and accompanying words, color and design.”

And, to that point, what sort of planet might house living organisms unfamiliar with colors and style of the Google logo, and what sort of pesticide might Google be tempted to unleash on this most recent trademark bugaboo?

With all the golf coverage of the Masters Tournament and the coveted Green Jacket, this past weekend, it seemed particularly appropriate to report on a recent trademark case involving the miniature variety of golf: Putt-Putt, LLC v. 416 Constant Friendship, LLC (April 5, 2013 D. Md.).

So, I learned two things this weekend, Adam Scott is the first Australian to win the Masters, and “putt-putt” golf is a brand of miniature golf, not a generic designation for a type or category of golf game. In fact, I was surprised to learn that the brand is subject to federally-registered trademark rights, and for much more than mini-golf services, see here, here, here, here, and here.

In the Putt-Putt v. 416 Constant Friendship decision, the court granted summary judgement in favor of Putt-Putt’s federal and Maryland State trademark infringement and unfair competition claims. The court basically found it unnecessary to hold a trial in order for Putt-Putt to win. Not only did the court find there to be infringement as a matter of law, it also found Putt-Putt to be a “strong” trademark.

Why the surprise? I grew up using and hearing the term as a generic reference, not a brand. Apparently 416 Constant Friendship couldn’t muster up enough evidence to even create a genuine issue of material fact on the question of validity. Survey evidence would have been interesting, but there was no mention of this type of evidence, the registrations appeared to carry the day on validity.

What is your experience with this term, brand or generic? And, would you place Putt-Putt on the Genericide Watch?

There must be an infinite number of possible names for someone tasked with re-branding a motel, yet on a recent trip to Iowa City to interview an amazing pool of law students, I captured some photos of what has been — for as long as I can remember — a Motel 6, and is now all “trade-dressed” up as a Super 7, within plain sight of the Super 8, just down the street.

Trademark types, would you have cleared the name and/or look and feel of the Super 7 signage?

It all brings back wonderful memories of a very popular short and sweet blast from the past (with no less than thirteen comments, but whose counting?): Counting By Numbers, or Stripes? A Likelihood of Confusion Tale.

So, what is the fascination with single digit motel names anyway? What do our distinguished professional naming consultants and other creative friends think about the art of motel naming?

Are all the “super” ones already taken, or is the single digit feature a requirement for super-ness?

And, if the motel is owned by Stan, does he need a new plan?

Trademark enforcement against infringing domains on the Internet is frequently likened to playing Whac-A-Mole. Just as soon as you eliminate one, up pops another, and another, etc.

Dan’s post from last week on the most recent land rush on the Internet — with the creation of almost infinite Internet real estate — may be a warning that this comparison will only continue to expand over time.

This potentially unfortunate Whac-A-Mole mentality, however, can paralyze some brand owners into doing nothing to protect their valuable trademarks on the Internet. What’s the point in doing anything if you can’t do everything, they cynically might ask?

The most basic answer is: Not all domain concerns are created equal, so being unable or unwilling to pursue all potential issues does not justify ignoring the most egregious (or even the easiest targets that could otherwise demonstrate the existence of a trademark enforcement strategy).

It seems to me, what the comparison really calls out for is brand owners putting a premium on the need for intelligent digital trademark enforcement strategies. Putting the brand’s head in the sand out of frustration is simply no answer.

Now, with respect to the poignant image displayed here, I captured a digital photo of the signage from a vendor at the Minnesota State Fair last year, and I’m sure it will be back again this year too, and next year, and the year after, etc. Perhaps yet another mole needing to be whacked?

In any event, seeing the trademark registration symbol, I couldn’t resist checking the USPTO database to see who owns it and how diluted the mark might be. Turns out, Mattel owns all four live trademark and service mark registrations for the WHAC-A-MOLE mark (here, here, here and here). Surprisingly, no apparent third party marks that have been or need to be whacked to maintain a broad scope of rights — Mattel appears to own this piece of trademark real estate free and clear (full disclosure, I haven’t examined the associated domain real estate).

The oldest registration is from 1992, relying on use of the mark in connection with an “arcade, carnival and amusement type activity game” (Int’l Class 28), going way back to 1977; by the way, the specimens of use filed by Mattel’s predecessor, Bob’s Space Racers are priceless.

Interestingly, there is no registered coverage in Int’l Class 41 for “entertainment services” — is this a sign that Mattel doesn’t want the headache of controlling the quality of the “entertainment services” provided by all the carnies who operate these branded games in arcades across the country in county and state fairs? If so, that would be understandable.

As we have written before, any brand extension requires the necessary due diligence to mitigate the risk of a serious trademark conflict. And, from a trademark perspective, both strength and scope of rights necessarily expand as the number of different goods and services sold under the brand grows.

If recent marketing research on brand extensions is followed by brand owners, the necessary due diligence is going to become that much more important — both risk and reward will become significantly elevated with the advent of more dramatic and surprising brand extensions.

Karl Greenberg, reporting for Marketing Daily of MediaPostNEWS, writes about a new study from Northwestern University’s Kellogg School of Management, indicating that the perceived quality of a brand is far more important than the fit between the heritage product it is known for and the new extension. He quotes Kelly Goldsmith, Assistant Professor at Northwestern’s Kellogg School, as saying: “Historically, there has been an overestimation on the importance of fit,” with the research apparently concluding that Nike deodorant (high perceived quality, low fit brand extension) would fare much better than CVS deodorant (high fit, low perceived quality brand extension).

So, on the risk side of the trademark equation, the larger the gap between the core goods and the newly expanded goods, the greater the chance for a serious conflict with intervening third party rights that must be taken into account when determining availability of the brand-name and mark for use on the new goods.

And, on the reward side of the equation, to the extent this research begins to justify brand extensions here-to-fore thought too far afield to be viable, they have the potential for greatly expanding the strength and corresponding scope of trademark rights since they will not only be unrelated to the brand’s core goods, but they are also likely to be unexpected or otherwise surprising to consumers.

Of course, the more unrelated the expanded goods are to the core goods and the more unlikely consumers would expect them to come from the same source, the stronger and broader the resulting rights will become. 

What do you think, are we going to start seeing more “less-fitting” brand extensions?

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.

 On this Valentine’s Day, after enduring weeks of the same endless running of national retail jewelry chain advertising, leading up to this annually celebrated day of love and affection, I thought it might be fitting to try a few retail jewelry store taglines on for size and examine — at least from a trademark perspective — their protect-ability and likely placement on the Spectrum of Distinctiveness, leaving for our friends who are genuine marketing types an assessment of the taglines’ color, clarity, carat, and cut.

(1) "The Diamond Store":

Zales apparently has been using "The Diamond Store" as a tagline for over thirty-five years, but its latest federal registration for "Zales The Diamond Store" still disclaims exclusive rights to "The Diamond Store." Also no surprise that Zales was unable to federally register "America’s Diamond Store". It appears Zales never has attempted to register "The Diamond Store" standing alone, obviously there are more than a few other competing "diamond stores" out there.

For example, the "Most Dominant Diamond Store in America" was refused registration just last month, based on mere descriptiveness. And, the very same applicant fared no better with this tagline: "The World’s Best Diamond Store" — similarly refused under Section 2(e)(1) of the Lanham Act for being merely descriptive of jewelry store services.

No imagination, thought or perception required for any of these claimed taglines, so there’s clearly no hope of being inherently distinctive, and it’s even hard to imagine any of them actually acquiring distinctiveness either, so really, what’s the point?

Marketing types, aren’t there more creative ways to communicate that you sell diamonds?

Actually, it appears Zales may have one such tagline pending: "Wish Upon a Diamond". Now, that’s much better.

(2) "Every Kiss Begins With Kay":

Kay Jewelers apparently has been using the "Every Kiss Begins With Kay" tagline for about ten years, and the federal registration reveals no disclaimers and no need for proving acquired distinctiveness, so this tagline falls squarely within the suggestive category, as an inherently distinctive mark. Bravo Kay!

Interestingly, Kay Jewelers at least used to be "The Diamond People" — and this tagline is still federally-registered, but curiously, at least one internet listing for a competing Zales store refers to "The Diamond People" — not, "The Diamond Store" as indicated above.

Amazing how substituting the word "people" for "store" can make such a difference from a trademark ownership perspective, and from a relational or emotional one too, the latter being of particular interest to marketing types, I trust.

(3) "He Went to Jared":

As far as I’m concerned, this tagline really takes the prized jewel. But, I never would have guessed so, had I been clearing the proposed tagline before its first use years ago. Why? The words themselves seem so pedestrian and on print advertisements they seem totally void of any life or emotion. I’m not saying the phrase would be merely descriptive, it probably does have sufficient creativity to satisfy the suggestive category on the Spectrum of Distinctiveness. But the bare words seem, well, boring and lifeless.

Obviously, those behind the creation of the words knew how they could be given life in television advertising. Indeed, it seems to me that what has given this tagline more life and interest (and trademark strength) than any of the others is the television advertising that provides the repetitive (annoyingly so to many) and emotional connection to the phrase. There are spoof ads galore on the web ridiculing the "He Went To Jared" ads. Clearly, this tagline resonates in very strong ways, both pro and con.

My son confirmed this for me over the weekend when he shared a funny incident in his 4th grade history class from last week. Apparently his teacher was looking for students to fill in the blank on her question, "He went to . . ., He went to . . ." — looking for the answer to be the place where Napoleon apparently went on a certain occasion, and one of my son’s friends loudly said, "JARED," and the entire class, including the teacher, burst into laughter.

Clearly, there is power in the "He Went to Jared" branding. Indeed, when typing into the Google search engine the words "he went" the top suggested search completes the request as "he went to jared".

My question is, when a trademark owner has such a recognizable tagline as "He Went to Jared" — why not federally register it? Especially when the very same owner has taken the time, effort, and expense to register the bland, laudatory, and virtually unknown "It Can Only Be Jared" tagline. This one certainly would not have drawn any laughter in my son’s history class.

Bonus questions: Did you know that Sterling Jewelers Inc. apparently owns both the KAY and JARED jewelry brands? By the way, does anyone know why both brands are maintained? Do they compete for different demographic segments of the population? Perhaps you can tell from my questions, I’ve never been inside Jared: The Galleria of Jewelry.