Recently, a friend and I were watching The Bachelor—I know, I should be ashamed. During one of the commercial breaks, a spot appeared on-screen showing a woman wearing an elegant dress walking through a hallway. She turns into a doorway, and blue, shimmering light projects onto her face, as if she was underwater. A speaker off-screen says, “Open the door to a beautiful new experience for your home.” The commercial cuts to a small bottle with a spray nozzle on top. The bottle has a typical shape, but its packaging includes, near the top of the bottle, a “No. 3.” Are you thinking what I’m thinking? Immediately, my mind goes to Chanel’s timeless No. 5 perfume.

The speaker continues, introducing “Glade Fine Fragrance Mist.” The woman then crosses through a vertical air-water surface, as if she is entering a Stargate. She passes the boundary and floats in the adjoining room, which is filled with water. The speaker describes the “mist” as a bouquet of “florals, beechwood, and lush fruits that whisper a story on the air.” We also learn that the mist is infused with “essential oils” and “artfully crafted. Imagination? We have a fragrance for that.” The screen then shows the “Glade” logo, and the speaker identifies “S.C. Johnson, a family company.”  Take a look for yourself:

After watching the commercial, my friend remarked, “Hey, doesn’t that sound a lot like Chanel No. 5?” I thought the same thing. Just take a look at the branding for the advertised “Glade Atmosphere Collection”:

Now compare the “No 1,” “No 2,” “No 3,” and “No 4” for the above bottles to the Chanel No. 5 registered mark (which, by the way, has been registered since 1960, whereas the “Glade Atmosphere Collection” mark has only been registered since 2017):

Notice the similarities? The ‘o’ of the “No” is super-script in both marks. And, as anyone who passed Kindergarten will surely agree, one cannot help but intuitively notice that No. 5 follows 1, 2, 3, and 4. Combine that with the fact that air fresheners are similar to perfume, in a sense, and you have a formula for some potential consumer confusion. The use of small bottles and elegant advertising furthers the connection. And when you consider the historical fact that Coco Chanel picked No. 5 from a batch of perfumes labeled 1 through 5 (as well as 20 through 24), one cannot help but think that the similarities are more than just coincidence and happenstance.

Although floral scents are common, that Chanel No. 5 has a distinct smell of jasmine, bergamot (citrus/spicy orange), rose, lemon, linen, neroli (bitter orange), ylang-ylang (woody, an “essential oil”), lily of the valley, and iris makes the comparison to Glade’s Atmosphere Collection even more uncanny. Indeed, Glade “No. 1” has scents of jasmine and rose, in addition to cedar and apple. No. 2 smells of sweet pea and pear. No. 3 exudes beechwood, starfruit, and coconut—not that far off from No. 5’s tropical notes.  And No. 4 is a “velvety kiss of patchouli [a member of the mint family] and amber.” These scents certainly seem similar to Chanel’s No. 5, even if spread across multiple bottles.

What do you think? Do Glade Nos. 1 through 4 come dangerously close to No. 5? Given the similar marks and smells, one cannot help but make the comparison.

Last year we took a whiff of Hasbro’s application to register the smell of its Play-Doh® for “toy modeling compounds.” We didn’t think the application was ripe for a functionality refusal, but a refusal on the ground of a lack of acquired distinctiveness seemed like a certainty.

An Office Action issued on May 26th, 2017, refusing the application on the ground of a lack of acquired distinctiveness. The Office Action also included a number of Requests for Information to determine whether a functionality should issue, too.

For the uninitiated, a trademark must be distinctive in order to be protectable. Because a scent mark cannot be inherently distinctive, an applicant must establish “acquired distinctiveness,” also known as “secondary meaning,” to obtain a registration. Essentially, acquired distinctiveness means that the claimed mark may not have been a symbol of the source of the goods, but because of advertising, commercial success, publicity, etc., the public has come to recognize the claimed mark as a identifying a particular source for the goods.

For attorneys looking for a good playbook as to how to establish acquired distinctiveness, look no further than Hasbro’s Response, filed on November 27. The Response includes pretty much every piece of evidence that you could ask for.

It included the classics:

  • Sales numbers, more than a billion since 2004 in the U.S.
  • Advertising numbers, $77 million since 2004 in the U.S.
  • Longstanding use, since the year 1956
  • Unsolicited media attention referencing Play-Doh’s “unique and distinctive smell” and its “legendary scent”

It included new hits, like screenshots of social media of consumers talking about the memory of the smell of Play-Doh as a child. It also included “blogs written by experienced attorneys who opine on the source-identifying function and registrability of the applied-for mark.” Looking at those articles, you might even recognize a familiar blog post. No need for any thanks, Hasbro. But on a completely unrelated note, this R2-D2 Play-Doh set looks pretty great. Just saying.

The Response also included the obligatory declaration from a Hasbro head honcho to support these claims. The declarations always have at least one over-the-top assertion that you just can’t help but include. Here, it was the reference that Play-Doh for some people is “as identifiable as their mother’s faces.” Might be a bit of a stretch, not that I’m saying I wouldn’t have included it though. For me, the gem is the strange but unforgettable fact that since 1956 more than 950 million pounds of Play-Doh had been sold. If only it had included a reference as to how big that Play-Doh boulder would be.

And yes, the Response even included the coveted, but not always available “look for advertising”:

I’m not entirely convinced this qualifies as “look for advertising” though. It doesn’t direct consumers to the claimed trademark like a “look for the purple cap!” might do. Just looking at the advertising doesn’t tell me what type of smell I’m looking for. It’s close enough though, and the rest of the evidence is pretty compelling.

So, do you think the evidence was successful? Could the examiner smell what Hasbro was cooking? If you guessed yes, then congrats. The application published on February 27. Now all that is left is to see whether any of Hasbro’s competitors file an opposition to the application.

It’s certainly possible that a competitor might feel that providing Hasbro with ownership of the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough” might put them at a non-reputational, competitive disadvantage. In theory, it doesn’t seem like granting Hasbro the registration will be problematic, but in practice it will depend upon how broadly Hasbro interprets its rights.

But that may be parting the cart before the horse. Let’s wait and see how the next 35 days go before we start talking enforcement.

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend:

NASCARGasolinePump

So, what do folks think, does this photograph of a gasoline pump constitute “use in commerce” of the NASCAR trademark and brand in connection with gasoline, classified in Int’l Class 4?

NASCAR has all sorts of stuff that can be purchased online with it’s brand name and trademark on it, but to serve a trademark function (identify, distinguish, and indicate the source of gasoline), and to demonstrate proper use in commerce of a word mark (as opposed to non-traditional subject matter like colors and scents — we’ll pass on the possibility of taste for this one though), applying the mark directly on the goods isn’t possible given the liquid state.

NASCAR also has an impressive trademark licensing program and more than a semi truckload of federal trademark and service mark registrations to protect its licensed brand, but interestingly, none presently covering Int’l Class 4 or gasoline.

It appears the closest NASCAR has come to protecting gasoline in Int’l Class 4 is through this expired NASCAR registration for motor oil and automotive greases in Int’l Class 4.

Yet, I’m thinking TMEP 904.03(c) contemplates the issue and fully supports using the above photo as an appropriate specimen to demonstrate use in commerce of the NASCAR mark for gasoline, by showing the mark directly on the containers or packaging for the goods: “gasoline pumps are normal containers or ‘packaging’ for gasoline.

Why do you suppose NASCAR hasn’t taken this step (yet)?

Aaron Keller, Managing Principal, Capsule

How fast are you getting at typing with your thumbs? My high school typing instructor would be so proud of my advancements. I’d say 60 words a minute if I am humming along with an idea of what to write. Not bad, proud to say I am writing this post on my Apple iPhone 6, and though my thumbs are manly, the letters are accommodating.

Now, what makes me curious is the rewarding outcome for all this work. The sound when I have finally completed my effort and this message is sent. I know the sound, it feels like a small jet taking off from my desk.

The sound brings a little rush and a mental reward for all my effort and tired thumbs. To me the sound has a feeling attached, the feeling of accomplishment.

So, in my searches for the entity owning this sound, I have explored the world of Apple intellectual property. I’ve found a registered trademark for the Mac startup chime and a trademark for the store design layout, both I have enjoyed and agree there should be some attribution and ownership.

But, nothing on the sound rapidly approaching as I finish this blog post. Perhaps it has been filed and just not obtained yet, or maybe this is a gap in the legal department at Apple (not likely).

I also have to admit to an anterior motive for finding the intellectual property behind this story. As an author of our next book on The Physics of Brand, we are seeking stories of brands protecting intellectual property surrounding the less considered sense (sound, taste and touch).

So, if you’re also getting excited about finishing this blog post and wondering, “what stories do I know about non-traditional trademarks,” leave a comment. Perhaps we will be able to share your name and story.

Although once illegal in the United States, absinthe can now be consumed in your local bars.  It was a favorite drink of writers and artists such as Ernest Hemmingway, Vincent van Gogh, Oscar Wilde and Pablo Picasso.  Unfortunately, this green anise-flavored spirit did not fare so well in Swiss Court last week.  The Swiss court blocked reservation of “absinthe.”  It was found to be a generic term along with “La Bleue,” or “Fée verte” (translated as “The Green Fairy”) which also describe the popular drink.

These three terms had previously been registered as trademarks in Switzerland in 2010.  However, numerous objections were filed against these registrations.  They were ultimately defeated last week.  We will have to see if this defeat sticks or if there is an appeal to Switzerland’s Federal Supreme Court.

Trying to obtain the term “absinthe” for the popular alcoholic beverage would likely suffer a similar fate in the United States.  However, I found an intent-to-use application for the clever mark ABSINTHE MINDED for beer containing absinthe flavoring on the Principal Register.  It would likely be a hit for Saint Patrick’s Day. 

I wonder if Oscar Wilde was drinking absinthe when he penned the quote “Anyone who lives within their means suffers from a lack of imagination.”

Aaron Keller, Principal at Capsule

During this time of year there are plenty of fright “experiences” where you can drag a loved one into a heart thumping confrontation of fear. These experiences are elaborately designed and those who attend know the rules, like “this one doesn’t allow the characters to touch you.” Apparently others do and, of course, the use of touch increases the fear factor another scream decibel.

Even if you’re not comfortable with Freddie running full speed at you in a dark cornfield, these events are good for research. They are designed for a singular purpose and extract significant dollars from your wallet for a negative emotional reaction. The other negative emotion, anger, doesn’t really have a day of the year or a place where you can face or express it. Perhaps there should be a day and a place. So, fear is a great place to learn how an experience can be designed for one emotion.

Here’s an exercise. There are only six basic emotions: fear, anger, disgust, sadness, surprise and joy. Consider how you would design an experience with a singular focus on one of the six emotions. It’s an exceptional creative tool to discover how to touch emotions in ways not considered by anyone else. Then filter through the stereotypical methods to find the gems, the more uncommon methods to include in the experience you happen to be designing.

Back to fear. Many of the scare experiences in this season use the classic stereotypes, because they’re easy. But, then there are moments when you run into something original. The Soap Factory is such a place. While it has unique methods for taking the sound from you fast and without warning, it also uses more of the five senses than most. They pipe in a smell that seems to epitomize fear. With the direct connection our sense of smell has to our brains, it’s no wonder this one will leave you with a few years removed from your life and a smile on your face.

So the question is, what is the smell, or perhaps better said, what smell do you fear?

There aren’t too many things I enjoy more than speaking about the legal implications of branding.

Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here.

Some of the topics I discussed include:

I’d love to hear any feedback on the talk.

I’d also love to hear from you if you have a group or team that might be interested in having me deliver a talk on trademarks and the legal implications of branding.

–Dan Kelly, Attorney

I’ve often thought that copy writers could do worse than to make a close study of some of Charles Dickens’ work.  Perhaps too wordy a model for most copy, especially advertising and marketing copy, but he could paint a picture with words.

[T]he people who were shovelling away on the housetops were jovial and full of glee; calling out to one another from the parapets, and now and then exchanging a facetious snowball–better-natured missile far than many a wordy jest–laughing heartily if it went right and not less heartily if it went wrong. The poulterers’ shops were still half open, and the fruiterers’ were radiant in their glory. There were great, round, pot-bellied baskets of chestnuts, shaped like the waistcoats of jolly old gentlemen, lolling at the doors, and tumbling out into the street in their apoplectic opulence. There were ruddy, brown-faced, broad-girthed Spanish Friars, and winking from their shelves in wanton slyness at the girls as they went by, and glanced demurely at the hung-up mistletoe. There were pears and apples, clustered high in blooming pyramids; there were bunches of grapes, made, in the shopkeepers’ benevolence to dangle from conspicuous hooks, that people’s mouths might water gratis as they passed; there were piles of filberts, mossy and brown, recalling, in their fragrance, ancient walks among the woods, and pleasant shufflings ankle deep through withered leaves; there were Norfolk Biffins, squab and swarthy, setting off the yellow of the oranges and lemons, and, in the great compactness of their juicy persons, urgently entreating and beseeching to be carried home in paper bags and eaten after dinner. The very gold and silver fish, set forth among these choice fruits in a bowl, though members of a dull and stagnant-blooded race, appeared to know that there was something going on; and, to a fish, went gasping round and round their little world in slow and passionless excitement.

The Grocers’! oh the Grocers’! nearly closed, with perhaps two shutters down, or one; but through those gaps such glimpses. It was not alone that the scales descending on the counter made a merry sound, or that the twine and roller parted company so briskly, or that the canisters were rattled up and down like juggling tricks, or even that the blended scents of tea and coffee were so grateful to the nose, or even that the raisins were so plentiful and rare, the almonds so extremely white, the sticks of cinnamon so long and straight, the other spices so delicious, the candied fruits so caked and spotted with molten sugar as to make the coldest lookers-on feel faint and subsequently bilious. Nor was it that the figs were moist and pulpy, or that the French plums blushed in modest tartness from their highly-decorated boxes, or that everything was good to eat and in its Christmas dress; but the customers were all so hurried and so eager in the hopeful promise of the day, that they tumbled up against each other at the door, crashing their wicker baskets wildly, and left their purchases upon the counter, and came running back to fetch them, and committed hundreds of the like mistakes, in the best humour possible; while the Grocer and his people were so frank and fresh that the polished hearts with which they fastened their aprons behind might have been their own, worn outside for general inspection, and for Christmas daws to peck at if they chose.

But soon the steeples called good people all, to church and chapel, and away they came, flocking through the streets in their best clothes, and with their gayest faces. And at the same time there emerged from scores of bye-streets, lanes, and nameless turnings, innumerable people, carrying their dinners to the baker’ shops. The sight of these poor revellers appeared to interest the Spirit very much, for he stood with Scrooge beside him in a baker’s doorway, and taking off the covers as their bearers passed, sprinkled incense on their dinners from his torch. And it was a very uncommon kind of torch, for once or twice when there were angry words between some dinner-carriers who had jostled each other, he shed a few drops of water on them from it, and their good humour was restored directly. For they said, it was a shame to quarrel upon Christmas Day. And so it was! God love it, so it was!

Difficult not to drool on the page while reading such passages.

Merry Christmas to one and all!

Brands communicate with the world through a series of message delivery systems such as broadcast advertising, web sites, company representatives and product interaction. These systems utilize brand signals to communicate. While these signals commonly take the form of brand names and logos, they can also extend into sight, sound, touch, taste, smell or even action such as a brand ritual.

Brand signals are far more than an aesthetic veneer. They turn abstract meaning into tangible cues, allowing consumers to better navigate the marketplace. Functioning as vessels, these signals carry learned and associative meaning. That meaning is often instilled by the brand owner and further enhanced by the audience. The connotation of a brand signal evolves over time, as either the brand owner or its audience fills the vessel with new meaning that displaces the original. Take for example, two well know brand signals that once represented something very different than they do today, the ENRON name and logo. The original meaning was displaced by consumers’ new understanding of “ENRON.”

The most effective brands use a wide array of signals to manage consumers’ expectations. Many of these are co-authored by the brand owner and its audience. These signals communicate on multiple levels: Specifically and Categorically, Individually and Collectively.

Specifically and Categorically
When a signal is specific to a given brand, it directly equates to that brand: The names McDonald’s and Big Mac directly equate to the McDonald’s brand as do the golden arches and Ronald McDonald. Yet, we also recognize brand signals by category. These signals indicate brands by type. We relate the yellow and red color scheme to the fast food/burger category. Have you ever noticed how McDonald’s, Burger King and Wendy’s all share the same color scheme? Coincidence? McDonald’s (first to market) established the color scheme that has defined the fast food burger joint category for generations.

Individually and Collectively
Some brand signals carry enough meaning to hold up individually such as a company’s name, its logo or even an iconic shape. Such is the case with Coca-Cola’s “contour bottle.” With its distinctive curves, it is one of the most recognized icons in the world. Designed so it could be identified in the dark and shaped so that, even if broken, it is identifiable at a glance; the unique bottle design ensures that Coca-Cola is never confused with competitors.

Other brand signals work collectively. A slice of lime on its own says nothing. However, when it adorns the neck of a clear beer bottle, the lime says Corona! Add a tropical beach and it screams!

Of course, individual signals can contribute to the collective, and categorical signals can contribute to the specific. Be they specific or categorical, individual or collective, not all brand signals are created intentionally. Many are associated with or equated to the brand over time. These signals are of no less value than those which are developed intentionally by the brand owner. The Corona lime ritual was not created by Corona, but rather a California bartender who, in 1981, made a bet with his buddy that he could start a trend. Corona might not have started the lime ritual, they may not own it legally, but they benefit from this well know brand signal.

Your own brand likely has signals that extend beyond its name and logo. By identifying and refining these signals, your brand can begin to own these mental cues to build a more engaging brand experience with your audience.

Mark Gallagher, Brand Expressionist® at Blackcoffee®.