For a few months now, the Minneapolis skyway system has been flooded with a variety of fresh, creative, eye-popping advertising to promote Pepsi’s new bubly sparkling water collection:

Although not a lie (the bottles I’ve seen clearly reference Pepsi), you’d never know from this ad or the trademark registration that Pepsi is behind bubly, since an Irish entity located in Bermuda owns the mark.

Thoughts about Pepsi’s line of reasoning for having ownership rest with an Irish entity located in Bermuda? Taxes maybe?

Yet, it is clear the market knows this is a Pepsi launch, wonder what Coke, owner of Tab, thinks?

Sipping a bubbly drink, like sparkling water, necessarily has bubbles, explaining why the USPTO required a disclaimer of the word “bubbly,” even though the mark includes bubly, not bubbly.

Although it might be nice to own a standard character registration for the misspelled and un-disclaimed wording bubly, that hasn’t been attempted, as the misspelling is likely not distinctive.

Holding a word only registration for bubly doesn’t appear possible any time soon, since the double entendre is only apparent from the stylized bubly sparkling water mark, not bubly standing alone.

Double entendre? Yes, the description of the stylized mark notes the “u” in “bubly” is “depicted as a smile,” which ties into the additional meaning of “bubbly” — lively, cheerful and talks a lot.

If the words “bubbly” and “bubly” can’t be owned here, may that inspire a truncation to bub, especially given this pending intent-to-use trademark applications for bub and Bub Sparkling Water?

A recent advertisement caught my ear because it involved financial services offered by a guy named Charles Hughes a/k/a Chuck Hughes and the catchy marketing phrase Trade Like Chuck:

It instantly reminded me of a piece I wrote in 2010 called: Exposing Two-Face Brands. One of the branding truncation examples I wrote about there noted how Charles Schwab exposed a much less formal and more personal and engaging face with the popular Talk to Chuck advertising campaign.

The folks liked it, so Susan Perera and I responded by writing a more in-depth version for Minnesota Business, providing other examples of the trend toward truncation and informality in branding — then, I wrote about Talk to Chuck in yet another version for World Trademark Review:

Apparently the Talk to Chuck campaign was quite successful too. But all good things come to an end, as the campaign was dropped in 2013, in favor of its current tagline: Own Your Tomorrow:

What I wondered was whether Charles Schwab had continued some (even modest) use of the Talk to Chuck tagline — to retain enforceable rights — or whether it simply chucked them out, since Mr. Hughes didn’t seem at all deterred with his apparent introduction of TradeLikeChuck.com in 2016.

Although there still may be valid use of Talk to Chuck that I’m unaware of, the visible signs all seem to point toward abandonment. The TalkToChuck.com domain name was originally registered back in 2005, yet today, it only redirects to the main Charles Schwab website with no visual Talk to Chuck reinforcement, so that mere redirection, shouldn’t constitute bona fide trademark use.

Perhaps even more importantly, searches for “Talk to Chuck” on the Charles Schwab website yield no results: “There are no results for ‘talk to chuck’.” And, each Talk to Chuck federal registration and application was allowed to expire or become abandoned (here, here, and here).

Why didn’t Schwab see some value in taking steps — even modest ones — to avoid abandonment of its federally-registered rights? Do you suppose Mr. Hughes has Schwab regretting that decision?

What if the web traffic to the Charles Schwab financial services site still had meaningful redirection coming from the TalktoChuck.com domain name, would that help establish lingering goodwill?

In the end, to “own your tomorrow” — from a trademark perspective — even when you’ve moved on to a new tagline, it might pay dividends to develop an intentional plan to avoid abandonment.

Otherwise you might as well roll up those rights into a round little wad of paper, and hurl them to your doggie with one of these federally-registered Chuckit! babies (here, here, and here):

A recent stroll through a big box store opened my eyes to a brand of steel toe boots I hadn’t encountered before, take a look at the CAT that will be protecting my son’s toes this Summer:

CatBoot

CAT is an excellent example of successful trademark truncation, a single-syllable truncated brand name for the four-syllable CATERPILLAR version (originally for heavy excavation equipment):

CaterpillarBoot

By the way, I love how the brand intelligently employs both versions (full and truncated) of the brand name on the goods and packaging for the goods. It permits Caterpillar Inc. to own trademark rights in both versions without risking a loss of trademark rights through abandonment when a truncation might otherwise lead to a complete phase out of the longer version.

Caterpillar Inc. also has built an impressive mountain of trademark protection for both word mark and stylized versions in many different classes of goods and services; the brand recently has asserted an impressive scope of rights. It also clearly thought about and began executing a truncation strategy nearly seventy years ago, with this very early CAT registration. Sad we won’t be seeing (again) bikes, trikes, or wagons, at least in the near future, it appears.

To be clear, brand owners should know there is no legal right for a business to be able to truncate a longer brand name, nor can one assume all brand extensions are legally viable.

As we have discussed before, a truncation strategy can make enormous sense, in part, because truncation yields a broader right (if allowed). However, it also can lead to more third party objections since there is necessarily less other matter available to help differentiate from others.

For these reasons and others, it is important for brand owners to jump in with both boots and move on the appropriate level of due diligence, not assume that the path for truncation and/or brand extension is a clear one (without the need for heavy excavation of the existing trademark landscape).

It has been a while since a billboard campaign has caught my interest and attention, but the currently running Absolut Goes Dark ads are an exception worth noting:

AbsolutJack

AbsolutJohnnie

AbsolutJim

Isn’t it interesting — at least in this context — how the simple references to Jack, Johnnie, and Jim, draw an obvious comparison to the distilled spirits brands Jack Daniels, Johnnie Walker, and Jim Beam? We’ve discussed here before similar fair comparative advertisements — in the context of Vodka brands no less — and brand leader references.

Although the JIM BEAM brand has been federally-registered a very long time, it doesn’t appear the brand has sought protection for the truncated version of its name, JIM.

Same story with JOHNNIE, but not so with Mr. Daniel — he seems to know more than Jack about protecting trademark truncations, having obtained a federal registration for JACK standing alone, more than a decade ago, and he recently used this specimen to keep it active:

JackAd

Swedish Absolut is not only on a first name basis with these well-known distilled spirit brands, but it also appears to know how to own federally-registered rights in the shape of its bottle:

AbsolutBottleNow, if Absolut were to truncate its name, should it target a low calorie version that allows drinkers to target their Abs? Look what one finds when searching for Abs Vodka . . . .

– Draeke Weseman, Weseman Law Office, PLLC

A benefit corporation is the term used when a company is created under corporate law and should not be confused with a “B Corp,” which refers to a company that is certified by B Lab to meet specific standards for social and environmental performance.

Why Consider a Benefit Corporation? Doug Bend and Alex King, Forbes.com (May 30, 2014)

Starting on January 1, 2015, Minnesota businesses will have the option to incorporate in Minnesota as benefit corporations, a new type of for-profit entity that commits to pursue social goals. More than half of the states in the United States have enacted some type of legislation allowing for benefit corporations (Maryland was the first in 2010).

Benefit corporations arose in response to the growing demand for socially conscious businesses. The group largely responsible for the benefit corporation movement is B Lab, a 501(c)(3) non-profit formed in 2007 that evaluates and certifies businesses according to a stakeholder and environmental impact scorecard, while also acting as a public promoter and supporter of such businesses.

B Lab (through B Lab IP, LLC) owns several trademark registrations or pending applications for benefit corporation related marks, including the following:

B Corporation

 

 

 

 

 

Brought To You By the Community of Certified B Corporations

 

 

 

 

 

On its website, B Lab describes its role as follows: “B Corps are certified by the nonprofit B Lab to meet rigorous standards of social and environmental performance, accountability, and transparency. Today there is a growing community of over 1,000 Certified B Corps . . . .”

Despite this clear statement about B Corps and the certification provided by B Lab, no trademark applications or registrations exist for the truncated marks “B Corp” or “B Corps,” or for the certification mark “Certified B Corps.” Instead, the marks registered by B Lab are service marks applied to “association services,” business “testing, analysis, and evaluation,” and “quality assurance” services.

This is surprising because both B Lab and the companies adopting the B Corp certification routinely use variations on the B Lab marks while mentioning certification. For example, below is a screenshot from the B Lab home page, followed by a screenshot from Patagonia’s website, both using the truncated B Corp mark and both prominently using the unregistered “Certified B Corporation” mark:

 

 

Continue Reading Would Benefit Corporations Benefit from Some Trademark Clarity?