The anticipation is building for this inaugural battle of the bands to raise money for a great cause:

“The Twin Cities advertising and communications industry lacks diversity. It’s a serious challenge. And it’s a problem that won’t be solved overnight. But there’s no reason we can’t have a little fun as we work to ensure our industry better reflects society as a whole.”

“The local marketing community will descend on First Avenue on December 6 for a friendly battle-of-the-bands competition that will raise scholarship money for diverse students seeking a career in the advertising and communications field. The scholarship fund is part of a new collaboration between the University of Minnesota’s College of Liberal Arts, CLAgency, its student-run agency, and The BrandLab.”

We look forward to spending time with our very creative friends in the Twin Cities advertising and communications community — thrilled to be the law firm sponsor of this incredible event, please join us at First Avenue Thursday December 6, from 5 – 11 PM ($20 tickets are available here).

OK, we won’t be singing the notes, strumming the guitars, pounding the keyboards, or blowing on any horns ourselves, but we’ll proudly beat the drum hard for this awesome competition and fundraiser event, as we sip on our signature cocktail for the evening, please come, see you soon:

Recently traded this picture (credit to this G, not that one) for sub-zero temps in the Twin Cities:

Wonderful time spent with family; looking forward to sharing lots of trademark stories in 2018.

Do you have any wishes for 2018? Do you have any 2018 resolutions you’d like to share?

The former implies a lack of control. The latter suggests an ability to control with some discipline.

My wish for our Vikings is to enjoy home field advantage during Super Bowl LII, and win!

My 2018 New Year’s Resolution is modest and achievable: Continue rising 30 minutes earlier, to enjoy a good stretch complete with deep and inspiring thoughts.

Happy New Year to each and every one of you!

 

The above advertising billboard is plastered all over the Twin Cities at the moment, and it got me thinking, so here I am, once again, writing about Coke Zero, remember this can?

Coke obtained a favorable decision from the TTAB early last year, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

So, why on earth has Coke positioned SUGAR immediately next to the word ZERO beneath the Coca-Cola script in widespread billboard advertising and packaging?

Putting the key trademark issue aside, it doesn’t even look like there is a good business case for it?

Had the above billboard advertisement and depicted bottle been part of the TTAB case decided last year, instead of specimens like the above can, seems probable we’d have seen a different result.

Has Coke forgotten that like functionality for non-traditional trademarks, genericness can be raised as a validity challenge for word marks, at any time?

Coke Zero, welcome to the Genericide Watch.

By now, you’re familiar with my enjoyment in capturing and sharing new billboard signage that hits the streets of the Twin Cities. Question, what tagline might have inspired this one?

Was the Minnesota Renaissance Festival inspired by Nike’s famous “Just Do It” tagline?

Almost four years ago now, we noted — in this gem from the archives — the following about Nike’s famous “battle cry” tagline when we discussed “Just Ship It” reluctance with Seth:

“The irony in Nike’s ‘battle cry’ tagline is that its trademark enforcement program for the ‘Just Do It’ tagline and mark is not a model of clarity or simplicity, much less one easily understood by those paid to advise clients about the risks of potentially conflicting trademark rights.”

We further noted that Nike had only filed two oppositions with the TTAB enforcing its “Just Do It” tagline since Nike’s previous resounding TTAB win against Just Jesu It back in 2011.

Since that October 22, 2013 blog post gem, Nike appears to have stepped up enforcement activities at the TTAB, filing twenty “Just Do It” oppositions at the TTAB, with all concluded proceedings showing victory for Nike:

  1. Just Fake It for clothing;
  2. Just Mak’in It for clothing;
  3. Just Fix It for golf equipment;
  4. Just Chew It for chewing gum;
  5. Frac-N-Hose Just Frac It & Design for clothing;
  6. Life Just Live It for clothing (opposition withdrawn after “Just” removed from applied-for-mark);
  7. Just Did It for clothing (Board granted opposition, sustaining likelihood of confusion and dilution by blurring grounds);
  8. Just Choose It for clothing;
  9. Just Weld It! for clothing;
  10. Just Be It! for clothing;
  11. Just D!dIt & Design for online marketplace services;
  12. Just Taste It! for dietary supplements (still pending);
  13. Just Beer It! for clothing;
  14. Just Ripp It for clothing;
  15. Just Dough It for cookie dough;
  16. Just Girl It! for group coaching services;
  17. Just Bring It for clothing (WWE withdrew application with prejudice);
  18. Just Taste It for advertising services (still pending);
  19. JustSayIt for books and ebooks concerning positive oral communication (still pending); and
  20. JUSTKIT for clothing(still pending).

This recent timeline of oppositions seems to show more clearly that third party trademark applications employing the “Just __ It” format will draw attention/opposition from Nike.

Interestingly, since it doesn’t appear that the Minnesota Renaissance Festival is seeking federal registration, we might never know whether Nike objects to the use shown above.

Instead of tweaking the middle term of Nike’s tagline — “Do” — as all of the oppositions above show, the Renaissance Festival’s format plays on the leading word “Just,” substituting “Joust,” a term with special meaning in the context and theme of its festival.

Is this a material difference that justifies peaceful coexistence, or is it simply a new form of “battle cry” that similarly will be linked to Nike?

If you were advising Nike, would you recommend activating a trademark “battle cry” against use of “Joust Do It!” in the above billboard advertisement?

What if this tagline became an annual tradition for promoting the Renaissance Festival’s entertainment services?

What if a federal trademark or service mark application was filed?

Finally, what if the tagline was applied to clothing to promote the Renaissance Festival?

FrydayT-ShirtWhen I recently snapped the above image of a t-shirt on display at a large retailer in the Twin Cities, it made me want to ask the same question many survey experts will ask of respondents to determine whether a likelihood of confusion exists in the marketplace: Who put this out?

What percentage of respondents do you suppose would answer: The same one that puts out these french fries (specimen of use from this non-traditional trademark registration):

McDonaldsFrySpecimen2007

Note how the Golden Arch is not part of the claimed mark, as registered, only the colors, the predominant red color with vertical yellow lines exposed from the inside of the carton.

So, do you suppose Ronald is lovin’ it, the t-shirt that is, or not?

uberUber, the popular brand that helps people arrange prompt ground transportation, is now also being called a verb. The Star Tribune recently reported that the founder of iHail, a recent competitor of Uber in the Twin Cities market, would like to achieve the same anointed status: “I want iHail to become a verb, just like Uber.” So, let’s say trademark types might be cringing.

Let me know if you’re still cringing after reviewing these gems from the archives on the risk of trademark genericide through trademark verbing:

Hat tip to Joel Leviton, who by the way did a very nice job earlier today presenting “Key IP Issues in Advertising Law” at the Minnesota IP Institute in downtown Minneapolis.

My question, has Uber become the brandverb über alles? (the link exists for those of you who didn’t get the pun in the title of my post or take German in high-school)

There’s a sports fever in the air of the homeland of the DuetsBlog team.  The World Cup final is Sunday and, from my office window, I have seen an ever-growing number of soccer fans on the rooftop lawn of Brit’s Pub to watch the matches.  I’m not much of a soccer fan, but I am a huge baseball fan and so I am thrilled that my home state will be the stage for the MLB All-Star Game, which will be held at Target Field on Tuesday.

Photo from sportslogos.net

Can you imagine if a baseball stadium filled with fans started chanting:  “I BELIEVE…I BELIEVE THAT…I BELIEVE THAT WE…I BELIEVE THAT WE WILL WIN!  I BELIEVE THAT WE WILL WIN!”  No – baseball is America’s sport.  We don’t need belief; we know our team is going to win.  (Well maybe not our team lately.) Apparently San Diego State University has sought trademark registration for the mark I BELIEVE THAT WE WILL WIN.

Of course, with all major sporting events, there is a bunch of All-Star Game memorabilia or swag that will be sold to fans, who may or may not have had one too many ounces from the self-serve beer vending machines at the stadium.

There was a story in the local media yesterday regarding the prevalence of counterfeit All-Star Game memorabilia.

I was surprised to see that the MLB or the Office of the Commissioner of Baseball does not file trademark applications for the All-Star Game logos; they simply have one registration for ALL-STAR GAME. If they have a trademark registration or a copyright registration, they can record these rights with the U.S. Customs and Border Protection (CBP) for a nominal fee of less than $200 per class for up to ten years of protection.  As part of the recordation process, the CBP requests information regarding licensees and manufacturers who may be transporting product to the US.  When an importer does not match the CBP’s records for allowed users of the mark, the CBP will detain the product, investigate its authenticity, and destroy the product if it is counterfeit – all without the MLB having to do anything but register their trademark with the CBP.

But what if someone were to use the background of the logo, not include the registered ALL-STAR GAME wording or the MLB symbol until it was delivered to the U.S.  If I had Photoshop, I would show you what I mean. Without protection of the design elements of the logo, that product wouldn’t be stopped at the border by CBP.    Now the All-Star Game may present a poor example of this because they use a new logo for the Game every year and they build up some common law rights in the mark (which can’t be registered with the CBP), but think about your business and your client’s business.  If someone eliminated your protected words from your design logo, would you be adequately protected?

While of course I am not encouraging this, I do hope to see a vendor cheekily selling Derek Jeter gift baskets.

 

Since 2000, Capital One Financial — the nation’s largest direct bank — has been promoting its credit card services by asking What’s in Your Wallet? Three years later it began promoting banking and other financial services using the same iconic tagline, slogan, and question. By 2011, it had achieved so much traction that What’s in Your Wallet? was inducted into the Advertising Walk of Fame as one of the 16 Greatest Slogans in History.

Given what I recently saw on Boylston Street in Boston, the question might need to be updated to take into account the Capital One 360 Cafés popping up across the country.

Blending credit card, banking, and financial services with restaurant and cafe services appears groundbreaking for a financial services brand. Capital One 360 invites consumers to “Swing by a Café today and discover a bank disguised as a place you’d actually like to be.” Their Twitter page reads: “Saving money should be as easy as grabbing a coffee. We’re not just another bank, we’re a community space for you. Stop by, grab a coffee, say hi & save a bit.” Their website goes on, “Let’s Make Banking History”:

“At Capital One 360®, we believe banking should fit comfortably into everyday life. That’s why we’re not just online and mobile; we can now be found in Cafés opening across Boston. A place where you can get your banking questions answered or simply recharge your lives with free WiFi, tips on saving time & money, and freshly-brewed Peet’s Coffee®. See for yourself how together we can challenge every preconception of what a bank can be.”

It will be interesting to follow this generous offering of space and free services to see whether the business model can be sustained, as there are some skeptics in the crowd, given the high cost of real estate and the usual expense of operating retail locations. It’s notable that St. Cloud, Minnesota already landed a Capital One 360 Café, not the Twin Cities yet, but perhaps Cafés are on the way to us too!

Marketing types, if you’ve seen this concept executed before by another financial services or banking brand, please let us know, because it appears to be a novel undertaking for a credit card and bank brand. It remains to be seen, however, whether this creative and engaging brand extension will disrupt the category and force competitors to follow suit.

Extending credit card brands to provide restaurant reservation services is nothing new, but before seeing the Capital One 360 Café in Boston, I haven’t seen any credit card brand serving up actual restaurants or cafes themselves. For example, American Express, Visa, and Mastercard all have been providing restaurant reservation services for some time.

So, imagine my surprise to learn that Visa actually has a federal registration for the VISA mark in connection with “restaurant services” — without qualification or limitation.

The 2008 specimen of use in the prosecution history at the USPTO is questionable to say the least. Indeed, it appears the more recent description of services covering Visa’s single-letter V mark is a little more intellectually honest, given the submitted specimen of use: “Restaurant services, namely, restaurant reservation services, and restaurant ratings and reviews, providing information in the field of fine dining restaurants and fine dining events.” It will be interesting to follow whether Visa modifies the “restaurant services” description when it files a Section 8 & 15 Declaration for VISA in Int’l Class 43.

Having said all that, for the trademark nerds in the crowd, if this Capital One 360 brand extension is really ground-breaking and intended to “make banking history,” you’d think the appropriate trademark filings would be there to support the new services, right?

It was more than a bit surprising, especially considering how robust the Capital One trademark portfolio is, to find no coverage of record at the USPTO for any cafe or restaurant services, under any of their marks. Any ideas why? Hopefully this is not an indication of Capital One’s limited commitment to this new offering.

With brand extensions as far afield is this one appears to be, it’s even more important to lock up the rights early to facilitate a more graceful geographic expansion of the concept.

Hopefully for Capital One, it won’t encounter (during its expansion) any local owner of conflicting trademark rights who is inclined to ask Capital One, by the way, “What’s in Your Wallet?”

It’s that time of year again, the Minnesota fishing opener is upon us this weekend, so Rapala is sporting its new billboard in the Twin Cities metro area, as shown below:

“Winner, winner, walleye dinner,” is an obvious play on the far more frequently uttered “winner, winner, chicken dinner” positive outcome phrase, that apparently derives from early casino dining experiences. In fact, Ballys has decided to cash in on this phrase by obtaining a federal registration covering the phrase for gaming machines.

And, last year, Raising Cane’s, a fast food chicken restaurant chain (one that my kids strongly prefer over Chick-fil-A, by the way) obtained a federal registration for the same phrase in connection with restaurant services.

Yet, less than two months ago, an intent-to-use application for “Winner! Winner! Grouper Dinner!” was filed by Team Lobo in Naples, Florida, for t-shirts, so I suspect we won’t see Rapala’s above tagline appearing on t-shirts this year. For a comparison of nutritional facts concerning grouper v. walleye, see here.

Curiously, last year Rapala expressly abandoned its “Bass Friends Forever” t-shirt trademark application, shortly after it was published for opposition, leaving us to wonder who may have added some tension to their fishing line? Perhaps PVH Corp, based on these rights in BASS?

So, here’s my suggested Rapala billboard tagline for next year: Eat More Walleye.

What do you suppose Chick-fil-A would have to say about that?

In case you’re wondering about status of the Eat More Kale dispute — the USPTO has been sitting on Bo Muller-Moore’s 71-page Office Action Response for eight months now, so stay tuned.

James E. Lukaszewski, ABC, APR, Fellow PRSA, President, The Lukaszewski Group Division of Risdall McKinney Public Relations

I’m sitting here at 7:45 a.m. moving very slowly in what is the first of four daily rush hours in this lane of eastbound I-494 in South Minneapolis. One has to wonder what all the media excitement is about. I’ve just listened to Lori Sturdevant, an opinion writer for the Minneapolis Star Tribune, talk on CNN about how upset, angry, and distraught Minnesotans are over the government shut down.

I may be missing something, but it seems to me that from the traffic in this part of town, there are an awful lot of people struggling to get to work, as they do every day, and probably not giving too much of a hoot about the state being shut down.

Seems to me the only people upset, angry, and distraught are reporters who are trying to make something out of this, and those who have temporarily lost their jobs, while the public goes about their business, raising their eyebrows at the media coverage with that increasingly common expression, “There they go again.”

In fact, my guess is sooner or later we’re going to begin wondering the reverse: Why do we have so much government? Why all the time, and what does it really accomplish?

Things are working. Nine out of ten people who want to work are working. Most of us seem more worried about our personal future than what a bunch of politicians are busily not doing wherever they happen to be during the shut down.

In the good old days before air conditioning, the legislature would meet once every two years for about three months and take care of the State’s business. Now the State has 24,000 employees, each of whom is presumably doing something important every day. But Minnesota’s shut down graphically illustrates perhaps how dramatically the government could be streamlined and operate far less frequently, on a much smaller number of levels.

The only thing that truly changes the direction of a democracy is catastrophe. What we’re learning from the current government shut down is that far from being a catastrophe, it’s an object lesson in how poor leadership can accidentally reveal some powerful and important insights about how the State should actually be run, or not run, depending on your perspective.

What Governor Dayton should be doing at this moment is proposing an entirely new government structure for Minnesota involving a radically reduced, far more efficient and effective State organization. He can start doing this by only inviting certain departments, agencies, and offices back into operation when government function resumes. Clearly, one of the major ways to resolve a deficit in the family budget, as well as the government budget, is by reducing expenditures and simplifying how things are done. The question should really be “How much government do we really need?”, rather than “How do we resolve the deficit issue?” The longer the State remains shut down the better the illustration of how badly basic change is needed.

Let’s be clear, I believe in government. I served in the Wendell Anderson and Rudy Perpich administrations. I believe that government is not a “business” subject to business rules. Government is an entity designed by the people to serve the peoples’ interests and needs. Those needs should be provided directly at the level closest to the populations being served.

This is an opportunity to develop a much better government rather than simply start up the old big one, all over again. Think what an inspiration this would be if something like this came from the mouth of the political leader.

One thing we know for sure, the media’s purpose is to irritate, agitate, and aggravate, and foster contention, confusion, and consternation.

It is an example of the “Murdoch Effect”. If the news isn’t juicy enough, spice it up. If things aren’t happening, make something happen. If something irrational is happening, blame it on those who are acting responsibly and make them explain those who aren’t.