Las Vegas has a welcoming brand, probably best known by the nearly decade old famous and iconic slogan: What Happens in Vegas Stays in Vegas.

LVCVA owns it for gaming machines, slot machine services, and “promoting the Las Vegas, Nevada area as a destination for leisure and business travelers.”

If you’re not aware of the origin and the connection to Minnesota, here you go.

Las Vegas has welcomed the SHOT Show for many years, so here we are, once again, connecting with our many brand-toting friends in the industry.

Although I haven’t yet noticed evidence of it on the streets or the strip, the famous WHIVSIV slogan is reportedly back from its brief hiatus.

MGM Resorts’ Aria appears to be building on the meaning of Vegas with a fairly new slogan of its own that interestingly employs the term being used as a verb:

Given all the other places we’ve seen and reported on brandverbing to date, and now that we know it happens in Vegas too, only time will tell if it stays in Vegas:

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

All that said, Aria’s This is How We Vegas, should not be confused with This is How We Hotel, much less, This is How I Vegas, for sure, or even this one either:

 

Welcome to another edition of trademark stories that are inspired by billboard advertisements:

This one was captured for obvious reasons, if you’re familiar with our interest in brandverbing:

Putting aside whether early October is too early to be promoting holiday wine shopping without a hint of a Halloween theme (there’s Stellaween for that), thoughts about the Stellabrate verbing?

Does Stellabrate make you want to throw a party? Hamm it up? Tanqueray? Or, count bottles?

Stella Rosa (Star Rose) has poured itself an overflowing glass of Stella-trademarks (Stellabrate, StellabrationStellaweenStella Peach, Stella Berry, Stella RedStella Pink, Stella Gold, Stella PlatinumStella BiancoStella Babies, Stella Moscato, Stella Rosso, Stella Rose, It’s Stella Time, and Stella Gets Around), but it does not own the six-letter, one-word, star of the trademark show:

If the actual Stella trademark was in Stella Rosa’s constellation of trademark rights, it likely wouldn’t need to be coexisting or peacefully orbiting with the likes of these other wine “star” marks: StellaGrey, Stella Bella, Stella MaePoggio Stella, AquaStella, and Buona Stella.

While Stella Rosa can continue to brandverb with Stellabrate, and grow its constellation of Stella-trademarks, without Stella, becoming a really bright trademark star isn’t likely in this wine galaxy.

Much less in a beer garden:

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?

— Jessica Gutierrez Alm, Attorney

Many of us have been eagerly waiting to see whether the Supreme Court would consider Google’s potential genericness.

As Martha explained, the case began in 2012, after petitioners Chris Gillespie and David Elliot attempted to register hundreds of web domains that included the word “Google” together with a variety of different people, products, and brands (i.e., googlestarbucks.com).  Google objected to the registrations, and Elliot filed a complaint (joined by Gillespie) in federal district court.  Elliot and Gillespie argued that “google” had become a generic term due to its common use as a verb.  The district court ruled against Elliot and Gillespie on summary judgment.

On appeal, the Ninth Circuit affirmed the lower court’s opinion.  As Tucker discussed recently, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  The court clarified that the mere act of using the term as a verb does not render the mark generic unless it is used to refer to a type of good or service (i.e. an internet search generally).

Without comment, the Supreme Court denied Elliot’s and Gillespie’s petition for review.  (Notably, of the 7,000-8,000 petitions filed each year, the Supreme Court grants and hears argument in only about 80 of them.)

While Google is surely celebrating the Supreme Court’s refusal to hear the case, Band-Aid, Xerox, and Rollerblade are cheering right along with them, while cellophane, aspirin, and thermos look on with envy.

Yes and no are at opposite ends of the spectrum. North Pole, South Pole. Night and day. Win, loss. Black, white. Available, unavailable. Protectable, unprotectable. Infringing, non-infringing. They represent a binary proposition, like a traditional light switch with two settings: on and off.

My daughter loves the yes end of the spectrum; no, not so much; and maybe is tolerable, because it’s easy to get hopes up and accelerate to hearing yes. The problem is the large chasm between maybe and either end of the yes/no spectrum. Maybe can be uncertain and confusing.

Maybe spans a great distance between yes and no. Maybe can mean a slight possibility, or it can also mean a strong probability — creating a vast range of very different options that can be rather unhelpful to those who are paying for legal advice to make smart business decisions.

As we have written before, marketing types understandably love to hear yes too, when they seek legal advice about trademarks, and they are ever more prepared to probe, question, and challenge advice when they hear no, by way of example, remember the brandverbing trend?

Although we launched this blog seven years ago from the springboard of distancing ourselves from Dr. No and his Parade of Horribles, it is also worth noting, lawyers are frequently criticized for not giving a straight answer because, after all, it depends! Sounds like maybe, right?

For those of you who may not have been engaged here for our inaugural Dr. No blog post, might you remember J.D. Waffler: The Art of Taking a Position? If not, maybe you should check it out?

Over the weekend, we didn’t just have our seventh birthday, our friend Seth Godin artfully wrote again (like clockwork) about “Saying No,” and with the passing of former First Lady Nancy Reagan, we were all reminded of the simplicity of her famous “Just Say No” anti-drug campaign.

So, I’m left wondering if the historically rigid trademark advice against verbing and other concepts sounded in no as a way of keeping the advice simple to avoid client confusion and potential adverse outcomes, no matter how remote? Perhaps a strong candidate for a maybe?

It seems to me the key to successful relationships with trademark types is being able to enjoy the benefit of their experience, clear communication, and trust, and knowing that getting to yes is often possible and worthwhile, but not always the easiest or most direct path from maybe.

And, just maybe, your favorite trademark type can help remove for you the confusing and uncertain nature of the it depends and the maybes of trademark life.

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)

Our friend Professor Eric Goldman, over at his Technology and Marketing Law Blog, reported earlier this week that the Google trademark has survived a genericness attack by a fellow named David Elliot. Here is a link to Mr. Elliot’s complaint filed in Arizona federal court back in May of 2012, and here was Martha’s coverage. And, here is more coverage at the time labeling the challenge as being from the “land of slightly crazy lawsuits.” And, here is the Arizona federal court’s decision rejecting the genericness challenge. There.

Mr. Elliot’s focus in attempting to take down the Google trademark was primarily directed to the common verb meaning of the word to search the internet using any search engine, but the court wasn’t moved:

“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”

The court noted that even if the third meaning was proven, the first meaning is the key meaning because the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”

Does this decision slam the door to all successful genericness challenges based on the verbing of your favorite brands? It would be a mistake to read it that broadly, in part, because the plaintiff was an individual, and the defendant was, well, Google — a brand reportedly worth more than $150 billion.

While you will recall that I have not been a nervous nellie when it comes to the risks of genericide based on the verbing of brands, if your opponent is not an individual and you’re not Google, this reading on the subject of trademark verbing and the risk of genericide is still highly useful and recommended:

Having said all that, I’m thinking the brand managers over at Rollerblade must be breathing a sigh of relief with this decision.

How concerned are you about genericide?

When we mention confusion on DuetsBlog, we’re typically referring to the well-known likelihood of confusion test of trademark infringement. But today, we’re focused on the apparent confusion many have about the important question of: When copyright protection comes into being. If you ever have wondered whether something is or has been “copyrighted,” this post is for you.

In case you’re wondering, the inspiration for this post comes from my daughter wanting my wife to enter a photo of our four-year-old Rat Terrier (named “Lucky” — long story) in the current Orvis Cover Dog Photo Contest. (By the way, judging from the popularity of the contest, the Orvis brand is engaging in a brilliant use of social media engagement and networking). As you might imagine, I was called upon to provide some pro bono legal advice to a determined minor this past weekend on interpreting the official contest rules (containing a release and license), and this important requirement:

“Photo must be original, unpublished, and not copyrighted.”

Let’s break it down, bit by bit, as I did for my daughter:

Original: The “originality” requirement is straight-forward enough; it simply means that the photo must be an original photograph, not a copy of another’s original work of authorship or public domain material. For example, a scanned digital copy of a professional photographer’s work would not qualify as original. Originality also may imply that the photo doesn’t infringe any valid copyright held by another. Having said that, it’s hard to imagine an owner’s personally-taken photograph of his or her dog not meeting the originality requirement. We snapped Lucky’s photo ourselves, and we didn’t model the setting or pose upon another’s work, so it is original.

Unpublished: It is also understandable that Orvis doesn’t want to consider any dog photo entries that already have been published elsewhere. To be on the safe side, and to stay on my daughter’s right side, as much as I wanted to, I did not include the submitted photo of Lucky in this post, so you’ll have to check out the link to the Orvis site to witness his worthiness!

Not Copyrighted: The most curious aspect of the above-quoted contest requirement is what Orvis means by the phrase “not copyrighted.” This phrase and additional requirement is confusing, especially given the previously-discussed originality requirement, and it probably makes more than a few intellectual property types cringe, perhaps almost as much as asking whether a logo or tagline has been “trademarked“.

Why? As Karen Brennan has explained before, copyright protection exists the moment an original work of authorship is fixed in a tangible medium of expression. So, the moment we snapped the photograph of Lucky, we owned not only the tangible physical digital image of him, but the underlying intangible legal copyright in the image too. And, presumably, the same would be true for all other entrants who snapped their own photographs of their dogs. Importantly, registration is not required for the creation or securing ownership of a copyright, but it is required before one can bring a federal lawsuit to enforce rights in the copyright. So, what exactly does Orvis mean by prohibiting photos that are “copyrighted” when virtually any original photo might be considered “copyrighted,” i.e., “protected by copyright“?

To avoid internal inconsistency within the contest rules, presumably, Orvis only intends to preclude from consideration photographs that are the subject of copyright registrations, because precluding all photos “protected by copyright” would disqualify virtually all entries (as demonstrated above in the discussion on originality). The uncertainty and confusion stems from the fact that the common dictionary meaning of “copyrighted” is “protected by copyright,” and “copyright” is not only a noun meaning the “exclusive right to make copies,” but it also has a defined verb meaning: “to secure a copyright on” something that is copyrightable.

So, as is the case when one uses “trademark” or “trademarked” as a verb, it is equally important to seek clarification on what is intended by the verbing usage of “copyright” or “copyrighted” — depending on the context, it may or may not mean that a copyright registration has been obtained. Again, in the context of the Orvis contest rules, it seems to me that “not copyrighted” must be intended to exclude only photos subject to registered copyrights, since a copyright is protected and can be considered secure merely upon fixing an original work of authorship within a tangible medium of expression. We haven’t sought registration of the copyright in the submitted photograph of Lucky, so we should be good there too. But, let me know if you disagree.

In any event, my daughter kindly requests that you vote for Lucky, early and often.

And after you vote for Lucky, please remember these related oldies, but goodies too:

With the upcoming 2012 presidential election, this is the time during our American political cycle where spinning is almost a sport — at least an expected activity. Puns intended, as you’ll see.

Over the last several years, I’ve heard my wife speak about “spinning classes” at a local health club (mind you, not at the local political party caucuses) — so, a different type of spinning altogether. This spinning, I’ve come to learn, involves “classes centered around choreographed group rides on stationary bikes, usually led by an instructor with heavy background music to keep you moving.”

So, after a loyal DuetsBlog reader brought these Spinning (note the capital S) trademark use guidelines to my attention, I felt compelled to ask my wife whether the spinning she had often spoken of was a branded activity or a generic one that anyone could offer. She indicated the latter (along the lines of pilates, yoga, or karate), and trust me, those in my house are well-educated about the difference between brands and generic terms.

Having said that, what my wife didn’t know is that one of her other favorite activities called “pilates,” was once a registered trademark, and as of at least 2000, it was found generic and to be part of the public domain as the common generic name for an exercise method, not a trademark. And, she also didn’t know that Mad Dogg Athletics, Inc. owns a large collection, dare I say, family of SPINNING and related trademarks:

  1. SPINNING in Int’l Class 41 (training and instruction);
  2. SPINNING in Int’l Classes 9, 25, and 28 (videos, clothing, and exercise equipment);
  3. SPINNING in Int’l Classes 9 and 16 (computer software and manuals);
  4. SPINNING in Int’l Class 32 (sport drinks);
  5. SPINNING in Int’l Class 5 (nutritional supplements);
  6. SPINNING in Int’l Class 12 (bike parts);
  7. SPINNING in Int’l Classes 3 and 18 (non-medicated lotions and sports bags);
  8. SPINNING in Int’l Class 41 (providing facilities for recreation);
  9. SPINNING in Int’l Class 41 (providing information over the Internet);
  10. SPINNER in Int’l Class 28 (exercise equipment);
  11. SPIN in Int’l Classes 28 and 41 and (stationary bicycles and physical fitness instruction); and
  12. SPIN in Int’l Class 5 (nutritional supplements).

So, what will be the long term fate of this impressive “family” of trademarks? Will the fate be the same as the “pilates” term, or will the referenced trademark use guidelines save the day for Mad Dogg? As we have cautioned before, here and here, the Spinning guidelines correctly discourage lower case type styles (i.e., no “spinning” or “spinner” uses, please), they also discourage verbing (i.e., no “Come spin with us,” please), and they also discourage nouning (i.e., no “Get Spinning,” please). But, I’m sorry, I thought “spinning” was a verb?

Well, I wouldn’t hold your breath (on the trademark use guidelines saving the day), while riding your stationary cycle anyway (especially if combined with any pilates activity, as breathing is quite important to, at least, the pilates method, I’m told).

Now, if you’re steadfast in preventing your trademark from spinning out of control and degenerating into a generic term, would you link it to other known generic exercise terms and methods? You might be surprised to learn that these three composites are currently federally-registered trademarks of the same Mad Dogg owner: SPIN FITNESS, SPIN PILATES, and SPIN YOGA (fitness, pilates, and yoga, all disclaimed). I’ll have to say, these combinations seem like a recipe for a trademark disaster.

Perhaps most surprisingly the Spinning trademark use guidelines state:

“The word Spinning as it pertains to indoor cycling was coined by our company, and is an arbitrary word we selected for our stationary bicycle exercise program. We also coined the name Spinner for our stationary exercise bicycle.”

Are you buying this birth story? Wouldn’t an admission of suggestiveness garner more credibility without sacrificing inherent distinctiveness, at least at birth?

Let’s just say, when the wheel on the stationary bike goes round and round, another more efficient way to communicate the same motion is to say it spins or is spinning. Coined? Arbitrary? Really?

And, as you will recall, one of the points I’ve made before about avoiding the hazards of trademark genericide, especially when a new product or service launches an entirely new category (as the case appears to be here with Spinning, since Mad Dogg’s website lauds itself as the “Creators of Indoor Cycling”) is to make sure the brand owner also adopts a commercially acceptable generic term for the good or service — one that easily will be used and embraced by the relevant comsuming public.

Remember how it took Rollerblade ten costly years of trademark misuse in the public to come up with the efficient generic designation “in-line skates”? — having started out with the far more wordy and complex “boots equipped with longitudinally aligned rollers used for skating and skiing.” I see that the Spinning website nicely refers to “indoor cycling” — yet, here is the twenty year old relic from one of its early trademark filings: “providing training and instruction to others by simulating an outdoor bicycle workout completed indoors on a stationery bicycle.” 

In the end, do you believe that a majority of the relevant consuming public views Spinning as a brand name or the generic name for an activity or method of exercise?             

So, I must ask you dear readers, is the Spinning trademark spinning out of Mad Dogg’s control, or should we be asking the question in past tense?

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?