Trademark Use Guidelines

It all started here, nearly ten years ago now, with our inaugural DuetsBlog post called Dr. No and the Parade of Horribles. We used a Seth Godin post called Looking for Yes as our launchpad.

The rest is history. Seth revealed himself a fan of the blog on our 4th birthday, what a surprise. He generously has engaged with us since then, weighing in on topics ranging from branding to trademark bullying to Velcro’s fear of trademark genericide, with so much more in between.

Recently, Seth generously agreed to answer the 12 questions below. What should we ask next?

Continue Reading Seth Godin Answers 12 DuetsBlog Questions

As the drum beat grows for our interview of Seth Godin tomorrow, it is only fitting that we are reminded of the importance of embracing tension and the ruckus we’ve set out to make here.

Seth’s fabulous and penetrating new book called This is Marketing, will be released tomorrow, no doubt another best-seller, a must-read for any lawyer who cares to make change for the better.

Until then, thanks again to Fred McGrath for this second video, capturing how we embrace tension:

In April, news broke that two iconic alcohol brands were joining forces to create a remarkable new beer: Jim Beam Budweiser Copper Lager. Fruit of the joint labor is now available for consumption:

The unique combination doesn’t appear destined to fall flat, as in the early days since launch, it seems to be attracting even self-professed “craft beer snobs,” which is probably the point for Bud.

When iconic brands come together in a co-branding arrangement, it’s interesting to note visual manifestations of the joint trademark use guidelines, a peek into who’s steering the Clydesdales.

Not surprisingly, the reigns of the Clydesdales appear most closely held by Budweiser, as the Copper Lager is beer, not whiskey, and BUDWEISER is the largest wording on the packaging.

That said, the Jim Beam brand name and logo does adorn the six pack carton’s front face with top line prominence, suggesting the brand power it brings to the party – liquid version of Intel Inside?

Figuratively though, not literally, as the Copper Lager isn’t a boilermaker beer cocktail, instead the Jim Beam name and logo indicates aging of the lager on genuine Jim Beam bourbon barrel staves.

One of the things the packaging does well, from a trademark perspective, is keeping the visual identities of the brands separate and distinct, as they appear together in this joint branding effort.

It’s really not a good idea, from a trademark perspective, to mix and blend the combined brands into a single new visual identity, as doing so raises questions of ownership and how to untangle.

So, the packaging does a nice job of keeping each sides trademark elements physically separable while communicating why Budweiser invited Jim Beam to team up for this Copper Lager party.

The trademark filings tell stories too. The only filings currently on the USPTO database that contain the terms Copper and Lager in a mark are owned by Budweiser parent, Anheuser-Busch.

So, Anheuser-Busch views the Copper Lager name to be part of the Budweiser Copper Lager and Budweiser Reserve Copper Lager trademarks, but it disclaims exclusive rights in Copper Lager.

What we don’t know (yet) from the disclaimers, is whether Copper Lager is descriptive (capable of being owned as a trademark element), or generic (you know, meaning zero trademark rights).

If Copper Lager is not a category of beer (i.e., generic and incapable of trademark status), and instead descriptive, since this isn’t Anheuser-Busch’s first such rodeo: acquired distinctiveness?

Either way, this joint effort does appear to be Jim Beam’s first rodeo when it comes to beer, as evidenced by the intent-to-use Jim Beam trademark application it filed in April 2018 for beer.

Thankfully these brand owners are sophisticated enough not to combine Jim Beam and Budweiser into a single trademark filing, sadly I’ve seen commingling before, and it isn’t much fun to unwind.

What do you think, is this joint effort a remarkable one? Is it likely to last, stand the test of time?

It’s been a little while since the last example we’ve shared showing a brand turning its face, or a blind eye, on age-old rigid trademark advice, counseling against using a brand name as a verb.

Given the more common trend of many alcoholic beverage brands focusing attention and their messaging on drinking responsibly, MillerCoors has made a surprising choice with Hamm It Up!

While we’re all for encouraging brand owners to carefully explore the true risk of genericide from verbing their brand name, encouraging drinkers to be “ridiculous or over the top,” is over the top.

We get it, Hamm’s is going gangbusters as an economy beer brand, but there is a way to verb an alcohol brand more gracefully, so I’m left wondering when MillerCoors will, let’s say, Hang it Up?

UPDATE: In case you’re wondering, the microscopic text in the lower right corner of the billboard reads like a disclaimer: “ENJOY IN MODERATION.” How’s that for a messaging mixed drink?

I’ll have to say, I really enjoyed Aaron Keller’s guest post from yesterday. In addition to the valuable insights he provided, it got me thinking about some perhaps unrelated, but parallel topics of likely interest to legal and marketing types.

Aaron wrote about the importance of a brand being honest with itself and others. He expressed the need for truth in brand messaging. Puffery leads to less trust in a brand. Less trust leads to less loyalty. His call to action was for more people to demand the truth for the brands in our lives. He concluded by asking whether your brand might be stretching the truth and whether it is living up to the brand’s implied and explicit promises.

Similarly, as Anthony Shore of Operative Words wrote before here on DuetsBlog, "truth is stronger than fiction" in brands.

Now, without putting words in Aaron’s or Anthony’s mouth, I’d sum it up by using a word they didn’t and saying: credibility is the key.

I can think of a few other examples where the absence of credibility leads to other kinds of negative consequences and, in some cases, bad behavior.

On the subject of bad behavior, Alec Baldwin recently received a lot of media attention over being kicked off an American Airlines flight for apparently not turning off an electronic device when told to do so by a flight attendant. Although I’ve never been close to being kicked off a flight, I’ll have to admit I harbor a healthy dose of skepticism in the repetitive, but unsupported claim that electronic devices risk flight safety by interfering with flight navigation and aircraft instruments. Apparently, I’m not alone.

Most recently, the Christian Science Monitor had this to say on the subject:

"Although many passengers are skeptical that using electronic devices can threaten air safety, some travel experts say the industry has good reason for its protocols on the use of cellphones and similar devices.

Geoff Thomas, editor of Air Transport World magazine, tells an Australian arm of ABC News that glitches appear to be ‘exceedingly random,’ but that there’s ‘enough evidence to suggest that it is a problem’ that can interfere with aircraft instruments."

That’s it, this was the end of the article that began this way: "Others say there is a reason for the protocol on ‘shutting off’ electronic devices." So, I was anxiously reading, hoping for more enlightenment in this article than a flight attendant on duty probably has time to provide, instead just more platitudes.

To quote Aaron in another context, really? Yeah, I’d like to see the evidence or at least something other than conclusory statements on the subject of signal interference. Without more substance or explanation, passenger skepticism is fueled, and credibility is out the window without a parachute.

In fact, I’d welcome an airline brand’s honesty on the subject. I’d certainly feel more trust and engender more loyalty toward an airline brand that just admits there is no conclusive evidence of a safety problem, but expresses that "we’re all about safety, and we simply won’t take that risk, no matter how remote, for fifteen minutes of convenience at the beginning and end of a flight."

There, I’d believe it, I’d trust it, and I’d stop questioning and being annoyed by the rote words surrounding purported signal interference.

And being worthy of trust is a wonderful thing for a brand, especially an airline brand, because I might even start believing some of the answers given to other common passenger questions like why I can’t place my room-temperature laptop in the seat pocket in front of me, or why a flight is late, delayed, sitting on the runway, or eventually canceled.

Last but not least, it’s time for trademark types to examine their personal brands and look in the mirror on the issue of credibility in assessing risk. As I have written before, there is a new breed of marketer — the type that expects much more from their trademark counsel than reciting all the trademark do’s and don’ts without being cross-examined on how realistic the risks might be of disregarding or not following some or all of the advice.

My growing sense is that in these increasingly competitive times, marketers want to probe previously unquestioned trademark use guidelines that forever have forbidden any brand or trademark use beyond that of an adjective. They are especially interested in knowing how realistic the risk of genericide is if they were to "verb" their particular brand. Moreover, they aren’t interested in following black and white rules that unnecessarily straight-jacket their creativity. Ever wonder why Google uses no trademark registration notice on their homepage?

Trademark types, are we ready to address the true risk of genericide and other so-called risks on a case by case basis and then work feverishly to help mitigate whatever that risk might be?

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?

The Grand Marshal in the Parade of Horribles, at least for some trademark types, is the one who forbids any deviation from the absolute "rule" against using brand names and trademarks as nouns or verbs, a standard "rule" commonly found in trademark use guidelines (only permitting the use of trademarks as adjectives). As I have written about previously, these "rules" they are a changing, or at least they’re seriously being challenged by some creatives and marketing types:

A couple of days ago I was reminded that the trademark verbing trend is not going away when I saw a light rail train in downtown Minneapolis fully encased in an advertisement for Cisco’s Flip video camera, asking consumers what its Silicon Valley neighbor Yahoo! Inc. used to ask in their advertising (Do You Yahoo!?), but of course, Cisco’s new and current use is tailored to Cisco’s Flip trademark, asking their consumers and potential consumers, do you flip?

 

Cisco is not only breaking the "rule" against "verbing" trademarks, but it also encourages the use of the Flip trademark as a noun too, in advertising telling prospective customers to "Find Your Flip," and then asking them to decide "Which Flip is right for you?"

Smartly, I believe, it also has filed a trademark application to register the Do You Flip? tagline and question (see point three in listing of how to manage the risk of genericide).

Although there is certainly no shortage of recent trademark genericness decisions, they focus on inherently generic marks, ones that started out generic, not ones that have become generic over time through misuse or changes in the English language.

The poster child for this type of genericness decision is "ScreenWipe" for wipes used to clean computer screens. Of course, vigilance to trademark use guidelines and other trademark "rules" is imperative when you’re on the border of the genericness or descriptiveness lines or the suggestiveness and descriptiveness lines, along the Spectrum of Distinctiveness, so, not a good idea to identify your ScreenWipe product as "a . . . wipe . . . for . . . screens."

I’m happy to be enlightened or steered in the right direction, but I can’t think of the last time an arbitrary, coined, or fanciful trademark degenerated into an unprotectable generic term, landing in the Trademark Graveyard, through the process known as trademark genericide. Can you?

Given how prevalent trademark and brand verbing is, why haven’t we seen any recent trademark genericide examples? Or, are they just on the horizon?

How realistic is the risk of trademark genericide anyway?