Juut, an award-winning salon and spa founded in Minneapolis, has grown over the last 30 years, expanding into Arizona and California, with a focus not only on beauty, but health and wellness.

Juut was founded by David Wagner (author of Life as a Daymaker — How to Change the World by Making Someone’s Day), naturally the Juut name means: “to uplift humanity and serve others.”

“We celebrate individuality, authenticity and real beauty. Our mission is to create dynamic and significant Daymaking experiences that positively impact people, society and the world at large. Our vision at Juut is to transform the world with beauty.”

What is Juut to do when a popular, nicotine-pushing brand, adopts this similar Juul visual identity:

It’s difficult to imagine “Juuling” (notice the brandverbing) being a welcome activity in a healthful Juut salon or spa, and it’s similarly hard to imagine nicotine-containing Juul pods being available for sale at a Juut salon or spa, but neither would be required to show likelihood of confusion.

Juul’s apparent mission is to: “Improve the lives of the world’s one billion adult smokers.” The problem, as noted by the FDA, is the product is being used by minors, not only adult smokers.

In fact, just a few weeks ago, the New York Times reported on the magnitude of the problem:

“The Food and Drug Administration on Wednesday declared that teenage use of electronic cigarettes has reached ‘an epidemic proportion,’ and it put makers of the most popular devices on notice that they have just 60 days to prove they can keep their devices away from minors.”

Juul has been targeted in recent lawsuits for targeting minors, as alleged in this Vaporized ad:

Given Juut’s laudable mission, any risk of its identity being confused with the likes of Juul would seem unwelcome, yet Juut has never taken any enforcement steps, at least none at the TTAB.

On the other hand, Juul has been busy at the TTAB, enforcing its federally-registered trademark rights in JUUL against the likes of JUUC for electronic cigarette chargers, JUUS for electronic cigarette holders, FUUL for electronic cigarette chargers, and MUUL for electronic cigarette cases.

So, what about likelihood of confusion? Do the very different missions of Juut and Juul portend no likelihood of confusion, or do they speak to the significant damage resulting from any confusion?

Hat tip to Sri for capturing this image of a passing by backpack, illustrating how much a little spacing can end up making all the difference in the world, when it comes to brand identity:

To the extent, IV IKE, I VIKE, or even IVIKE might be a legitimate backpack brand, when the letter “I” is tilted and compressed together with VIKE, it’s difficult not to see what seems likely to be the intended meaning and infringing impression: NIKE.

Compression undoubtedly works to the advantage of the provider of the IV IKE, I VIKE, or IVIKE branded backpack, and to the disadvantage of consumers by deceiving them not only as to source, but likely fraud as to the federal registration status too.

Probably no surprise, but my brief search revealed no such federal registrations and the website leads to a collection of apparent Chinese characters, anyone able to translate?

Unless you have created a highly stylized, distinctive, graphic representation of a generic designation, perhaps something like the Miller Lite script, don’t bother trying to own or enforce it:

 

Most likely, you’ll end up regretting the decision to enforce, when the court of public opinion weighs in, after the social media shame-wagon flogs it as another example of trademark bullying.

Lagunitas Brewing filed this complaint in federal district court for trademark infringement against Sierra Nevada’s Hop Hunter IPA, because the generic acronym IPA (standing for India Pale Ale) appeared in black all capital letters (perhaps the lowest common denominator for stylization):

 

 

 

 

 

 

 

 

 

Lagunitas claimed: “This proposed design uses all capital, large, bold, black ‘IPA’ lettering in a font selection that is remarkably similar to the iconic Lagunitas design and, indeed, is the central and most prominent feature of the new Sierra Nevada design, emulating the iconic Lagunitas family of IPA trademarks. . . . ”

The thing is, Lagunitas probably has the potential for a very, very narrow trademark right in its stylization of the IPA graphic, but I’d hardly call Sierra Nevada’s version “remarkably similar” — moreover, I’d suggest that near identity and probably other similar trade dress elements would be needed to have a plausible likelihood of confusion claim.

Lagunitas seems to have forgotten how it explained in far more detail — in paragraph 16 of its complaint — the claimed distinctiveness of its graphic representation of the generic IPA acronym on product packaging:

“The unique ‘IPA’ lettering used in the Lagunitas ‘IPA’ Family of Trademarks has a distinctive serif font, distinctive kerning (or letter spacing), between the ‘P’ and the ‘A’, slightly aged or weathered look, with uneven areas on each of the letters, and the elimination of any periods between the letters. These elements together are unique to the iconic design of the Lagunitas IPA. The overall effect of these factors (the all-capital, large, bold, black serif lettering style, and the placement with respect to other wording and design elements) creates a unique, iconic design that is associated with and signifies Lagunitas and its associated reputation for excellence in the craft brew industry and among consumers.”

Assuming for the moment that Lagunitas has a narrow trademark right in its graphic representation of the generic IPA acronym, the problem remains, all the claimed elements aren’t present in the Sierra Nevada Hop Hunter IPA package design.

Probably the most unique aspects of the visual identity (the “slightly aged or weathered look, with uneven areas on each of the letters”) are not present in the Sierra Nevada design, putting aside the fact that the HOP HUNTER trademark obliterates at least a quarter of the IPA lettering.

It’s kind of like complaining about the use of the words “Eat More Kale” when the words are spelled correctly without dripping black “Eat Mor Chikin” ink from cows with poor grammar and penmanship, or perhaps it’s also like targeting a monochrome red shoe when the non-traditional red color trademark covers only the red sole portion of the shoe as a contrasting color.

Let’s face it, Lagunitas is another painful reminder to brand owners that selecting appropriate trademark enforcement targets is no less important when narrow as opposed to strong trademark rights are claimed. Yes, the Lagunitas overreach reminds me of the ill-advised enforcement targets pursued by both Chic-fil-A and Christian Louboutin.

Having said all that, we remain hopeful this all ends well for Lagunitas.  Hopefully the wisdom of the Lagunitas’ apology and the almost immediate withdrawal of the lawsuit permits the brand to get back to business and avoid years worth of legal fees and further media flogging.

Legal types, would you have brought the Lagunitas’ trademark infringement claim?

Marketing types, how would you grade the Lagunitas’ apology in terms of content and timing?

Let’s suppose you’ve been asked to search and clear the name of a bar, without seeing the design mark in the upper right and lower left hand corners of this photo (from a recent trip to Boston):

When I first saw this design logo, I thought the name was probably W Bar, so you know where my mind went next, right?

Not there, but here, yes, I was thinking Alpha Watch again.

But then, I second-guessed myself and started seeing M Bar, still with Alpha Watch on my mind.

Next, I really started questioning my focus on single letter marks, seeing instead Un Bar, then Hi Bar (without the dot in the i).

What have you seen that I didn’t, as a possible bar name? If you’re familiar with Boylston Street in Boston, you’re disqualified from answering.

Back to your assignment now — the point is, had you merely been asked to search and clear M Bar as a name and mark, it is best to see how it actually will appear to potential consumers.

Curious cursive lettering or script can appear to be or mean different things to different people.

So, while the potential scope of rights in the resulting visual identity of the brand may be quite broad if cleared for use, the significant challenge during clearance and due diligence is to make sure the multitude of possible meanings have been considered as part of the search strategy.

Do you suppose the author of this article knows that Ball Park is a federally-registered brand name and trademark, not an unprotectable generic term synonymous with hot dogs and frankfurters? The growing prevalence of lower-case brand styles and visual identity has complicated the answer to this question a bit, I suspect. Nevertheless, we should probably chalk up another example for the genericide watch.

This interesting hot dog story from Southwest Airline’s Spirit magazine caught my eye this past month, for obvious reasons, as a trademark type. And, I suspect the legal team over at Sara Lee Foods who is responsible for the protection of the more than fifty-year old Ball Park brand and trademark cringe when they see this kind of misuse. But, I’m also guessing at least some marketing types would view this kind of “free publicity” as marketing nirvana without serious regard to the risk of trademark genericide.

Actually, this kind of media misuse is not too surprising when the brand owner adopts an all lower case style. It appears this visual identity change began for Ball Park, at least as early as April 2000, although the amendment to the original all capital letter rendition of the mark was not filed until April 2004), as shown here in the oldest registration existing for this mark (note the defensive “brand” reference built right into the amended mark): 

If you’re going to go all lower case, it’s probably a good idea to add the brand reference to the mark, but for a mark like this, it is still a risky experiment, at least from a legal point of view, since the lower case style probably encourages the kind of misuse shown in the Spirit article and also tends to confirm the questions about whether the words actually function more as a brand or more as a generic category term that is free for any competitor to use.

It is worth remembering that it is the understanding of the majority of the relevant consuming public that decides the brand/generic question, so the importance of properly educating the consuming public cannot be stressed enough.

Perhaps all this helps explain the more recent move by Sara Lee to the use of leading capital letters in the current Ball Park logo:

Putting on my consumer hat for a moment, I actually like the look and feel of the safer option anyway, don’t you?

What started as a fatherly trip to the mall with my daughter and one of her friends will end with a couple of blog posts, at least.

I don’t spend a lot of time in malls, so when I do, I’m typically on brand alert.

You could probably count on one hand the number of times I’ve entered Bath & Body Works — I normally wait outside.

This past weekend I entered and actually bought a few men’s items (I didn’t know they had any) — buy two get one free, just my speed.

Anyway, before finding the men’s items, I was slightly bored and looking for some mild enjoyment, so I snapped this photo, forwarded it to my wife, asking what I intended as a rhetorical question (I’m the one at the mall, afterall): Want Some?

I didn’t get a response in time to act, so all I brought home were the C.O. Bigelow products, for me and the boys to try.

Turns out, Stress Relief is a federally-registered trademark, owned by Gail Seymour Productions, Inc., based in Del Ray Beach, Florida.

So, I’m left wondering whether Bath & Body Works has a license, or whether they missed this one during due diligence, or perhaps they noted it is a Supplemental Registration, not a Principal Registration, leaving it unclear whether Seymour has been able to acquire distinctiveness since registration in 2008. Oh, the difficulty of navigating Supplemental trademark registrations.

And, now that brands commonly appear in all lower case style, does that impact what might otherwise be a strong fair use defense for Bath & Body Works?

Hopefully this post won’t cause Bath & Body Works the need to self-medicate.

Spring break brings my family to Las Vegas this year; when we made the plans, we never anticipated leaving behind better weather in Minneapolis, especially this time of year. Oh, well. At least it isn’t slowing down our hiking adventures in the amazing Red Rock Canyon area.

Meanwhile, closer to the strip and all the over-the-top commercial activity, one of the notable trends on steroids here in Vegas is the frequent use of lower case branding and visual identity — I’ll be sure to share some photos on this subject  later on. Until then, please remember these oldies, but goodies on the subject:

  1. lower case branding & visual identity
  2. i am ben
  3. Mayo Clinic Logo loses lower case visual identity

Since I’m largely unavailable and figuratively fishing in Vegas at the moment, if you’re looking for some fresh content on the nuances of trademark law, I’d encourage you to check out John Welch’s post today on the TTABlog. In his typically capable fashion, he reports on an appeal of a very interesting likelihood of confusion case involving federal registration of the automobile tire marks MILANZA, POTENZA, and TURANZA.

I remember being surprised a couple of years ago when the USPTO’s Trademark Trial and Appeal Board found MILANZA unlikely to be confused with Bridgestone’s prior POTENZA and TURANZA marks. As John reports, the Court of Appeals for the Federal Circuit just reversed that decision, with this little gem and sober reminder for our naming consultant readership:

“There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source. *** This court has cautioned that there is ‘no excuse for even approaching the well-known trademark of a competitor.’ *** This caution applies here; the prior user is entitled to the traditional protections of its marks of trade, as against newcomers choosing a confusingly similar mark for the same goods.”

Last, as I close out this potpourri post, I’d like to thank Marsha Ajhar of Hartman Craven and Katherine Brown of IBM, for their grand hospitality and the very kind invitation to speak last week at the International Intellectual Property Society’s monthly meeting in New York City, where we had a great discussion on trademark enforcement strategies and avoiding the social media shame-wagon in the context of trademark bullying.