University of Minnesota

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:

It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).

If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued “in the name of the United States of America” — won’t be some uninteresting and ignored “nuance” of trademark law to the justices.

Photo credit: G. Baird

Another Creative Brand Protection event is in the books, thanks to our incredible panel of experts:

  • Karen Brennan, Senior Director, Intellectual Property, Best Buy
  • Anne Hall, Technology Strategy Manager-Life Sciences, University of Minnesota
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Tim Sitzmann, Trademark and Brand Protection Attorney, Winthrop & Weinstine

Their insights and perspective on launching new brands and refreshing mature ones were priceless.

Aaron Keller, Tim Sitzmann, Karen Brennan, Anne Hall (Photo credit: G. Baird)
Anne Hall’s storytelling gifts were on display for all to learn from and enjoy (Photo credit: G. Baird)
Photo credit: G. Baird
Photo credit: G. Baird

Despite tricky last minute weather with a rainy metro area, an engaged audience still joined us.

Photo credit: G. Baird
Photo credit: G. Baird
An engaged audience with excellent questions (Photo credit: G. Baird)
Matt Smyth reading the fine print with encouragement from Kyle Kroll (Photo credit: G. Baird)
Kyle Kroll working the room and sharing the DuetsBlog wealth (Photo credit: G. Baird)

In typical DuetsBlog-style, we avoided legalese, to bring trademark and branding types together.

Photo credit: G. Baird

If there are topics you’d like to have us cover next time, please let us know, we’d love your input!

Yeah, we usually mean this Apple, when we spill digital ink, not today, instead the edible varieties:

Hat tip to Erik Pelton who tweeted about the federal registration of LUDACRISP for fresh apples.

We know something about non-ludicrous trademark protection for apples > First Kiss and Rave.

They are newly minted brands for the MN55 Apple, a cross between HoneyCrisp and MonArk.

As it turns out, Honeycrisp might have been a trademark, but for its inclusion in a plant patent.

If an apple a day keeps the doctor away, does that include juris doctors who are into trademarks?

Or, would it be ludicrous for Apple, you know the iPhone XS one, to name a device Honeycrisp?

If only Honeycrisp could be a University of Minnesota apple trademark; Apple still has a chance.

To grasp lessons learned from the Honeycrisp story, and fully digest the Best Buy brand refresh, join us in Minneapolis on Thursday, a few seats remain for our Creative Brand Protection II event:

Winthrop & Weinstine’s Trademark and Brand Protection practice group will host a few hours of trademark and brand protection education, food and drink, and networking!

For the educational portion of the evening, we’ll share valuable insights and guidance for those who love brands and want to learn creative strategies for maximizing their value.

Yours truly, will moderate a panel discussion joined by:

  • Karen Brennan, Senior Director, Intellectual Property, Best Buy
  • Anne Hall, Technology Strategy Manager-Life Sciences, University of Minnesota
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Tim Sitzmann, Trademark and Brand Protection Attorney, Winthrop & Weinstine

The panel will share best practices and creative approaches to both launching new brands and refreshing a mature brand. The panel will develop a robust discussion using the University of Minnesota’s MN55 apple launch and Best Buy’s brand refresh to explore the following themes:

  • Transforming a commodity into a valuable brand
  • Strategies for selecting and owning names and marks
  • Carving a path for global trademark and brand protection
  • Legal considerations for refreshing a brand’s visual identity

Reserve your spot now, space is limited. We hope you will join this lively and informative event!

And, I’ll say it again, if only Honeycrisp was an apple trademark, or an Apple trademark . . . .

In the meantime, since Honeycrisp is generic for fresh edible apples, is this stylization distinctive?

Nope, the pedestrian style is not striking enough to be trademark ownable, contrast Miller’s Lite.

Aaron Keller, Managing Principal, Capsule

Love and hate are only emotional states, but we’re swimming in murky waters today. In response to a massacre in South Carolina the politicians are fighting to remove the “rebel” flag as an icon. Then, we see a movement here in the Minneapolis community to remove the name John C Calhoun from a lake area. Why stop there, why don’t we dig up his grave and put his head on a spike outside the Calhoun Beach Club? Okay, maybe that’s going too far. Or perhaps the discussion about changing the name of a lake was already too far. Hate has continued to be a theme when it comes to the subject of slavery, the south and racial discrimination.

At the same time, we’ve lowered ourselves into the love pool of gay marriage with the supreme court decision. The love of two individuals can be bonded with a legal piece of paper giving them rights as a couple beyond those of individuals. Love is an interesting word, diametrically opposed to the word above, yet clearly defining an emotion.

Now to a shift of gears and the connection between emotion and symbols. The rainbow has been re appropriated to mean love in the GLBT community. And, the southern symbol of freedom and the right to fight for a belief system (though moronic and wrong) was re appropriated from this flag, the original secession flag of South Carolina. See more at the previous post by Brent Lorentz. Let’s remember none of these flags killed people, though people died below them on battle fields. And, the rainbow doesn’t create love it is just a rainbow. Yet, both insight love and hate, taking people to emotional extremes. Consider the visceral reaction you have to the Swastika, but yet read here all the wonderful meaning associated with it 5,000 years before Hitler re appropriated it to a holocaust.

Now, consider a young man of 29 years old coming out of graduate school at the University of Minnesota with the idea of starting a “design firm” with a design partner, Brian Adducci. All the big roles and financial rewards are going to those kids heading to Wall Street and the financial industry. And, this wide-eyed MBA is starting a firm to design symbols for clients, and his snarky MBA friends ask “you can get paid to do that?”

Well, here we are after writing two books working with clients like Patagonia, 3M, Target, Quirky, SmartWool, Byerly’s and many others. We are in the business of giving brands emotion. We are in the business of designing the symbols which pull people toward brands. We are in the business of designing the very intangible assets driving substantial quantities of value on Wall Street.

And, we love it.

– Draeke Weseman, Weseman Law Office, PLLC

Naming is a tricky business with important marketing and trademark considerations.  Recently, two Minnesota law schools, William Mitchell College of Law and Hamline Law School, took up this daunting task when they decided to merge into Mitchell|Hamline.

On February 13, 2015, William Mitchell Dean Eric Janus announced the newly named law school, with the following statement:

. . . The combined school will be named Mitchell|Hamline School of Law and will be located primarily on William Mitchell’s existing campus in Saint Paul. Mitchell|Hamline School of Law will be an autonomous, non-profit institution governed by an independent board of trustees, with a strong, visible and long-lasting affiliation to Hamline University.

According to Janus, the new law school will benefit students by giving them access to three nationally-ranked programs – alternative dispute resolution (Hamline), clinical education (William Mitchell College of Law), and health law (Hamline) – and more enrollment options than any other law school in the country, in part, due to the new online hybrid enrollment option pioneered by William Mitchell College of Law.  It will also create opportunities for dual degrees and give law students access to more robust university facilities, like an athletic center.

As an alumnus of William Mitchell College of Law, all of this sounds like good strategy under the circumstances facing law schools today.  Nationally, for several years now, law school enrollment has been in steep decline; and, here in the Twin Cities, the presence of four law schools just seems redundant.  (For out-of-towners, the law schools at the University of Minnesota and the University of Saint Thomas are the other two in Minnesota).  In such a tight marketplace, it became increasingly obvious that two schools with complementary offerings in close geographic proximity should not compete for the same students.  Furthermore, both schools have important historic and contemporary alumni, and the merger will create a new network of 18,000 alumni between the schools.

As a brand enthusiast, though, I have some apprehension about the new name.  In particular two things standout: the vertical bar between Mitchell|Hamline and the brick-red coloring for Hamline. (If you initially thought the coloring was for a hyperlink, you weren’t the only one!)  If, as school officials have indicated, the merger is a true combination of schools, why the visual barrier – the equivalent of a punctuation wall –  between Mitchell on the one side and Hamline, on the other.  Why the distinct coloring for Hamline?

I think these elements hinder the presentation of a new, unified brand.  And I think naming experts would agree.  Take for instance, the general advice of Laurel Sutton in her Fast Company article, “What’s in a Name? The Ability to Make or Break a Merger:

“A [merger] is a chance to re-evaluate and redefine two brands that may be on their way down. Everyone loves a comeback, and it’s an opportunity to either build a new brand or build upon existing, if slightly tarnished, brand equity. Think of it as repurposing and upcycling for capitalism, taking old brands and making them brand new again. But this whole process of evaluation is often delicate, because it means dealing with the very marrow of what makes a brand: its culture and people—and ultimately making a value judgment on what to retain and what to reject.”

To me, the vertical bar and the coloring suggest an incomplete evaluation of what to retain and what to reject.  They risk creating that the perception that the two schools don’t want to completely unite.  I would remove both.

As a trademark attorney, I have additional concerns.  Trademarks benefit from a long, established history of widespread use, and the new Mitchell|Hamline name eliminates that, unless tacking is available. Tacking – the ability to attach the history of an old mark to a new mark for legal purposes – is available when a new mark is the legal equivalent of the old mark.  As Tim blogged about last month, the U.S. Supreme Court recently unanimously affirmed a lower court’s decision that tacking applied between the marks Hana Bank, Hana World Center, and Hana Overseas Korean Club.  For Mitchell|Hamline, tacking would be unlikely because the new name is so different from either earlier mark.

This would not likely be true if, for example, the merger had resulted in the name “William Mitchell College of Law at Hamline University.” In that instance, both the Hamline University brand and the truncated William Mitchell brand would continue, and both are protected incontestable registered trademarks.  For a trademark attorney, this would be preferable to the possible abandonment of the mark William Mitchell.

Why didn’t the two schools go this route?  One explanation might be the economics of the deal.  According to the Star Tribune, Mitchell|Hamline is a financially independent entity from Hamline University.  Another related reason might be the perception that one brand had more equity than the other.  As Ms. Sutton suggests:

“Quite naturally, companies want to keep the name of the mightier brand. . . . Sometimes, it’s the acquisition that has better brand recognition. . . . More often, it’s the acquirer who bestows their name, perhaps to signify that they’re the victor.”

So what’s Mitchell|Hamline to do?  In addition to dropping the vertical bar and coloring, one strategy might be to immediately, at least in some contexts, further truncate the name to “Mitchell,” the nickname already in use for William Mitchell.  For the past four years, the truncated name Mitchell was used in a very successful fundraising campaign branded “If Not For Mitchell,” where more than $25 million was raised to support scholarships, faculty, and innovation.  In a bit of irony, this “new” truncated Mitchell nickname would have a date of first use earlier than Mitchell|Hamline (which isn’t in use yet and won’t be until the ABA approves the merger).  Whether this nickname would create an opportunity for tacking is a more difficult conclusion to reach, but not an unreasonable one.

What do DuetsBlog readers think of the new name?  How would you advise these two schools, or others that might be contemplating a similar merger?