World Trademark Review

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

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):

That’s our motto here, but we live, eat and breathe trademark protection, so no surprise.

Our friends in the creative and design community also know the value of trademarks.

Love to see the bean-counters getting on board with this mantro too, a pleasant surprise.

In case you missed it, Tim Lince over at World Trademark Review did an interesting piece last month, entitled: “Groundbreaking study suggests trademark count, rather than patent count, is a better predictor of innovation.”

It draws from the results of a study called “Innovation Worth Buying: The Fair Value of Innovation Benchmarks and Proxies,” written by two professors at The George Washington University (James Potepa and Kyle Welch).

The World Trademark Review summary piece/interview definitely is worth checking out, in addition, here are some notable clips directly from the study, that sound pretty good to us:

  • “trademark counts significantly predict innovation-related intangible assets”
  • “trademarks represent an innovation measure much less covered in the literature, yet they have potential to capture innovation distinct from patents”
  • “if a product or service is unique enough, trademarks enable a firm to protect the innovations deployed in delivering the product or service”
  • “trademarks are significantly and positively associated with brand innovation”
  • “trademarks are positively and significantly associated with innovation”
  • “trademark count is a robust proxy for brand innovations but research and development expenditure is not”
  • “trademarks are also a significant predictor of the market’s value of innovation”
  • “AirBnb, Uber, and Netflix have transformed markets, yet patents don’t defend their core innovations.”

In addition, one of the authors of the study, James Potepa, also revealed in an interview:

“It is clear that having a recognisable name and an associated reputation is valuable, but our evidence indicates trademarks are able to pick up something above and beyond the value of recognition. Trademarks can actually predict the value of a firm’s expected future advances, which is amazing but not entirely surprising. In fact, it is worth considering whether trademarks are actually undervalued.”

Bottom line, we look forward for more and more scientific and scholarly research that will continue to validate what we already know to be true, the value of trademarks to an organization or business should never be minimized or underestimated.

In the meantime, we fully recognize that not all trademarks are created equal, so let’s do our part — as trademark types and marketing types — in collaboration, to steer trademark investments into inherently distinctive vessels with more potential for achieving great value.

Let’s just say, I’m honored for the privilege of having my writing and article about trademark truncation and two-faced brands published and featured in the prestigious and influential World Trademark Review magazine:

"While there are many successful examples of brand truncation, for both marketing professionals and trademark counsel the decision to create alternative faces for existing marks is one that should be approached carefully."

For a link to a pdf of the entire article, see here

This complete article first appeared in World Trademark Review magazine issue 32, published by The IP Media Group. To view the issue in full, please see, here.

For an earlier and — shall we say — truncated version of the article, co-authored with Susan Perera, see here

For the genesis of this series of articles, see an even more truncated version, here.