For a few months now, the Minneapolis skyway system has been flooded with a variety of fresh, creative, eye-popping advertising to promote Pepsi’s new bubly sparkling water collection:

Although not a lie (the bottles I’ve seen clearly reference Pepsi), you’d never know from this ad or the trademark registration that Pepsi is behind bubly, since an Irish entity located in Bermuda owns the mark.

Thoughts about Pepsi’s line of reasoning for having ownership rest with an Irish entity located in Bermuda? Taxes maybe?

Yet, it is clear the market knows this is a Pepsi launch, wonder what Coke, owner of Tab, thinks?

Sipping a bubbly drink, like sparkling water, necessarily has bubbles, explaining why the USPTO required a disclaimer of the word “bubbly,” even though the mark includes bubly, not bubbly.

Although it might be nice to own a standard character registration for the misspelled and un-disclaimed wording bubly, that hasn’t been attempted, as the misspelling is likely not distinctive.

Holding a word only registration for bubly doesn’t appear possible any time soon, since the double entendre is only apparent from the stylized bubly sparkling water mark, not bubly standing alone.

Double entendre? Yes, the description of the stylized mark notes the “u” in “bubly” is “depicted as a smile,” which ties into the additional meaning of “bubbly” — lively, cheerful and talks a lot.

If the words “bubbly” and “bubly” can’t be owned here, may that inspire a truncation to bub, especially given this pending intent-to-use trademark applications for bub and Bub Sparkling Water?

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):

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items.

A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16.

Despite other confusing media reports that the WWE has “trademarked” 3:16, IPBiz is correct that an intent to use trademark application was filed by WWE at the end of July.

While I could hazard a guess, technically it is presently uncertain whether WWE intends a religious meaning, at least from the application file, as no specimen of use is of record yet.

Ironically, our firm’s firewall leaves me to hazard a guess on WWE’s intended meaning too.

Yes, our sturdy firewall has deemed anything appearing on the WWE website to be “unsafe or unsuitable” for access, so we may need the kind assistance of our dear readers to assist in our understanding of the meaning intended by the WWE for this claimed mark.

Either way, it will be interesting to follow the USPTO’s examination of this application, given the newly minted Examination Guide 2-17 on “Merely Informational Matter,” which directly targets religious matter, among other matter (citations omitted from below quote):

Some proposed marks comprise direct quotations, passages, or citations from religious texts (e.g., JOHN 3:16 and I AM THE WAY, AND THE TRUTH, AND THE LIFE. NO ONE COMES TO THE FATHER EXCEPT THROUGH ME).  Religious texts are holy books or scriptures, such as the Bible, Quran, Torah, and Diamond Sutra, which the different religions or spiritual movements consider sacred or essential to their religious traditions and beliefs. Such quotations, passages, or citations are often used by the providers of goods/services (and by consumers) as an expression of affiliation with, support for, or endorsement of the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing such wording used in this manner in the marketplace, consumers are unlikely to perceive it as indicating source and instead would perceive the wording as conveying a merely informational message of religious affiliation, endorsement, or support for the messages in the texts.

Where a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, such wording fails to function as a mark.  The refusal applies regardless of whether the identified goods/services themselves are religious in nature.  However, the inclusion of religious goods/services further supports this refusal.  The following examples illustrate this point:

  • Mark is comprised, in its entirety, of a direct quotation/passage and/or citation from a religious text (e.g., Allah is the Light of the heavens and the earth The Qur’an, Surah An-Nur 24:35; I AM THE WAY, AND THE TRUTH AND THE LIGHT.  NO ONE COMES TO THE FATHER EXCEPT THROUGH ME; or MATTHEW 19:26).  The entire mark must be refused registration because the matter fails to function as a mark.

  • Mark is comprised, in part, of a direct quotation/passage and/or citation from a religious text and registrable matter (e.g., Hear, O Israel: The Lord is our God; the Lord is one and the image of the Earth being held in a pair of hands; ROMANS 8:28 and an image of a teddy bear).  The direct quotation/passage and/or citation must be disclaimed because they fail to function as marks.

Do you think the WWE will be wrestling with USPTO over the meaning of 3:16 soon?

If so, how might the USPTO explain the issuance of these registrations: 3:16, Studio 3:16, and 3:16 Lure Co?

And, finally, might the newly minted examination guide conflict with the recent Supreme Court decision in Tam, holding that the USPTO’s refusal of federal trademark registration based on viewpoint violates Freedom of Speech?

SteepTea

The grocery aisles are fertile grounds for my keyboard, as you know. And, while I’m generally far more interested in coffee grounds than tea leaves (unless we’re speaking of the iced variety or reading between the lines of court decisions), the above shown box of tea bags caught my eye.

What initially captured my interest is the large yet engaging lower case branding of the word “steep” followed by the diminutive signature line “by BIGELOW” in all caps.

Given the descriptive character of the visually-emphasized word “steep” in connection with tea, and the “by” signature line of the well-known BIGELOW tea brand, my instincts told me a USPTO search would reveal a crowded field of marks containing STEEP, likely fueling my assumption that “steep” couldn’t be owned as a trademark for tea standing alone.

Turns out, STEEP was federally-registered back in 2004, for tea (as a single word mark with no style limitations), pursuant to an apparent showing of acquired distinctiveness under Section 2(f) of the Lanham Act, but the registration expired in 2010 and was cancelled under Section 8 of the Lanham Act in 2010, making way for the crowded field I imagined.

It also turns out, there is more to the story than I have time today to turn over every tea leaf of this one: The apparent principal behind the expired registration is back at the USPTO with a new STEEP application, claiming continuous use of STEEP for tea since 1994.

The irony is that the STEEP BY BIGELOW registration (first use in 2015) is now barring registration of the new STEEP application, here is the recent likelihood of confusion refusal.

So, I’ll leave you with a few questions that come to mind.

First, what’s the next move for the STEEP applicant?

And, looking back in time, did Bigelow add the signature line underneath the prominent use of “steep” to facilitate registration of STEEP BY BIGELOW and perhaps reduce the perceived risk of a trademark conflict with the prior registrant of STEEP for tea?

If so, will Bigelow regret not volunteering a disclaimer of the descriptive word “steep” since the USPTO oddly didn’t ask for one?

Assuming there are prior common law rights in STEEP and Bigelow wants to explain the lack of a disclaimer, might it point to the unitary mark theory?

Better yet, will the ineffective opposition (filed by the apparent principal of the prior registrant of STEEP) bar a future petition to cancel STEEP BY BIGELOW (to clear the path for re-registration of STEEP standing alone)?

If there are, in fact, prior common law rights in STEEP and the principal behind the STEEP application finds a way to federal court, has Bigelow relinquished a classic fair use defense in making “steep” part of its trademark use?

Finally, if risk avoidance is the goal (hoping for a steep slide into neutralizing a likelihood of confusion claim), might it be more effective to play with the meaning of the marks element of a likelihood of confusion claim, perhaps by adding graphic elements that invite other meanings of “steep” as compared to the more obvious one for tea?

A recent stroll through a big box store opened my eyes to a brand of steel toe boots I hadn’t encountered before, take a look at the CAT that will be protecting my son’s toes this Summer:

CatBoot

CAT is an excellent example of successful trademark truncation, a single-syllable truncated brand name for the four-syllable CATERPILLAR version (originally for heavy excavation equipment):

CaterpillarBoot

By the way, I love how the brand intelligently employs both versions (full and truncated) of the brand name on the goods and packaging for the goods. It permits Caterpillar Inc. to own trademark rights in both versions without risking a loss of trademark rights through abandonment when a truncation might otherwise lead to a complete phase out of the longer version.

Caterpillar Inc. also has built an impressive mountain of trademark protection for both word mark and stylized versions in many different classes of goods and services; the brand recently has asserted an impressive scope of rights. It also clearly thought about and began executing a truncation strategy nearly seventy years ago, with this very early CAT registration. Sad we won’t be seeing (again) bikes, trikes, or wagons, at least in the near future, it appears.

To be clear, brand owners should know there is no legal right for a business to be able to truncate a longer brand name, nor can one assume all brand extensions are legally viable.

As we have discussed before, a truncation strategy can make enormous sense, in part, because truncation yields a broader right (if allowed). However, it also can lead to more third party objections since there is necessarily less other matter available to help differentiate from others.

For these reasons and others, it is important for brand owners to jump in with both boots and move on the appropriate level of due diligence, not assume that the path for truncation and/or brand extension is a clear one (without the need for heavy excavation of the existing trademark landscape).

Love the simplicity and honesty of this sign, captured on vacation, in a cozy crepe spot (had to get out of my chair and walk across the dining room to read the smaller print, well worth the steps):

LessisMore

As Seth recently noted, there can be room for improvement when it comes to making signs (we have too), and he further notes, depending on your approach, it is possible and can be best to have more and less (although not of the same things).

As a late and gentle kick-off for the New Year, and after a long weekend of some pretty amazing NFL football games, here are a few additional thoughts about more and less (no particular order):

Less Single Letter Brands, Especially When it Comes to Equis:

MaxDosEquis

(Photo Credit and Hat Tip to Maxwell)

More Showing, Less Telling:

Especially With Effective Non-Verbal Brand Signals:

StarbucksSirenLogo

“Show, don’t tell . . . . the value of design.”

More Naming of Distinctive Product Design Features:

LexusSpindleGrille

Less Unnecessary Touting of Function Over Form

 More Creative Signs That Move Us to Be Better and Engage More

Less Pavlov in Your Hands, Especially During Meals:

Calypso

More Creative Wifi Passwords:

CalypsoWifi

(Calypso Grill Photo Credits and Hat Tip to Maxwell)

Here’s to all of us having more amazing collaborations, connections, and relationships in 2017.

One of the blessings of homeownership is the surprise that accompanies a major appliance breakdown.  I had the pleasure of experiencing one of these events over Labor Day weekend when my dryer decided it was done working.  Labor Day is one of the weekends you want to have it happen because there are plenty of sales.  I went to one of the local box stores to figure out which dryer worked best for me, and also look at some washers (mine currently is predisposed to ripping holes into fabrics).  As I perused my options (the most critical of which was whether, at my short stature, I could reach anything within the washer or dryer), I came across this Maytag washer:

FullSizeRender(4)

Three trays, one for “softener”, one for “detergent”, and one on the right for…”oxi.”  Oxi?  I immediately thought “oh that must be for Oxi Clean” and no, not some white powdery drug.   In either event, how can you not think of this guy (and one of the greatest South Park episodes)?

 

goon meet

But…maybe it’s not for Oxi Clean.  There are a number of trademark registrations involving laundry detergent that include “OXI,” none of which disclaim OXI as being descriptive.   For example:

Even the product labels seem to encourage consumers to assume that the products are infused with Oxi Clean.

cholrox2oximax  wiskoxi oxiclean-large sun-plus-oxi-detergent-is-my-choice-for-low-cost-laundry-soap-21668894

The stylization of the lettering on each looks very similar, lending credence to the concept that there is some infusion with the Oxi Clean product or its formatives.  But compare these with Arm & Hammer:

armandhammeroxy

If the dispenser on the Maytag washer is intended for Oxi Clean detergent and was a permitted, licensed use, it would be highly desirable for the dispenser to show the OXI CLEAN mark in full.  But is it for that, or is it not?  The “detergent” portion of the dispenser says “liquid only”, so can you put Oxi Clean powder in the “oxi” dispenser?  That seems unclear.  There was no clear connection to the Billy Mays brand nor were there any clear instructions on the lid of the washer on how to use “OXI” as there was for “detergent.”

There seems to be some unapparent history here regarding the use of “OXI” but brands should beware of permitting uses of a mark without control  – or allowing it to be truncated on product packaging by not acting against such uses – in ways that may ultimately dilute the brand.

The day has finally arrived – the beginning of 2016 presidential debate season!  The best reality TV showdown around!  Democrat or Republican, I don’t discriminate, political debates are probably the only fighting “sport” in a ring that I enjoy watching.  Fox finalized its debate card for the first debate of the season and, with the number of candidates, settled on an opening showdown and a prime-time main event.  So I thought why not have a DuetsBlog logo smackdown!

The early draw (with strong potential for gaffes and oopsies) features candidates that aren’t polling as high as the 10 candidates in the main event.  (Jim Gilmore doesn’t appear to even have a logo yet.).  Definitely some points here for thinking outside the box when it comes to some of these logos.
earlydraw

In the main event, we have this following group of presidential potentials.  While Trump has been getting much attention, he doesn’t seem to have a logo or an established campaign website, so I included the logo below that seemed most fitting.

mainevent

2016TC

Then, on the Democrats’ side we have these declared candidates:

2016HRC2016BS2016Mo

Hillary’s logo has been the subject of much ridicule, including an arrow pointing directly towards “the right” and seemingly similar to a hospital sign.   To me, her logo seems basic, cold, square, and rigid.  I’d like to see the other logo options were presented to her that she turned down in favor of that one.

Your brand is your promise to your consumer, and your logo is the key way that you communicate your brand and your identity to your consumer.  Without overstating the obvious, presidential campaigns are brands too, but given the logos above, are they selling hope, change, or really anything?  Or are they really just more of the same?  Why in the high stakes road to 2016 do we seem to not yet have something akin the Obama “O” logo?  Start your own debate below and let us know what you think of these presidential logos.

It has been a while since a billboard campaign has caught my interest and attention, but the currently running Absolut Goes Dark ads are an exception worth noting:

AbsolutJack

AbsolutJohnnie

AbsolutJim

Isn’t it interesting — at least in this context — how the simple references to Jack, Johnnie, and Jim, draw an obvious comparison to the distilled spirits brands Jack Daniels, Johnnie Walker, and Jim Beam? We’ve discussed here before similar fair comparative advertisements — in the context of Vodka brands no less — and brand leader references.

Although the JIM BEAM brand has been federally-registered a very long time, it doesn’t appear the brand has sought protection for the truncated version of its name, JIM.

Same story with JOHNNIE, but not so with Mr. Daniel — he seems to know more than Jack about protecting trademark truncations, having obtained a federal registration for JACK standing alone, more than a decade ago, and he recently used this specimen to keep it active:

JackAd

Swedish Absolut is not only on a first name basis with these well-known distilled spirit brands, but it also appears to know how to own federally-registered rights in the shape of its bottle:

AbsolutBottleNow, if Absolut were to truncate its name, should it target a low calorie version that allows drinkers to target their Abs? Look what one finds when searching for Abs Vodka . . . .

When my daughter walks into a Starbucks (given her avid fan status, she does so often with her spending money in hand), she is typically greeted by an employee who says, “I love your shirt, where did you get it”?

Her response, “I made it” (turns out that is pretty easy), frequently prompts a flattering comment about my daughter’s fashion sense — by the way, she has some street cred, as she was recently voted by her class as the most likely to be a fashion designer living in Paris:

Starbae1Starbae2

Starbae3

 

 

 

 

 

 

 

As it turns out, Paris or not, my daughter’s co-creation efforts are not limited to making her own t-shirts (don’t worry Starbucks, she doesn’t sell any, she wears them herself, like a free and flattering traveling human billboard for the brand) to express her passion and creativity for the living Starbucks brand, but she also has coined a nickname for the brand, namely, Starbae.

Apparently, it is her truncation of Starbaby or Starbabies (other endearing nicknames) — an endearing co-created brand name to demonstrate loyalty for her favorite Starbucks brand. As Geoff Gower, executive creative director of ais London, recently wrote for The Guardian:

“By giving millennials the opportunity to co-create, you’re automatically encouraging brand loyalty. By becoming directly involved with a brand, they gain a feeling of influence and control, while seeing that their input actually matters – thus this encourages them to continue to engage.”

Given how my daughter’s ideas tend to spread, I’m thinking Starbucks might want to get out in front of this one, and Starbae appears to be available, only one phonetically equivalent registration for wooden furniture.

Perhaps my daughter will design Starbae uniforms when she is old enough to work for them . . .

My recent trip to St. Louis for the Public Relations Society of America Midwest District Conference yielded another example of co-created branding symbols worth sharing:

RoyalCard

As you might imagine, the woman wearing this home made shirt (who agreed to pose for my photo) can’t decide whether to root for the Kansas City Royals or the St. Louis Cardinals (her other family members were solidly in the Royals camp, given their attire). And, does that make her a RoyalCard fan, if she were to co-create a blended brand name for her favorite team(s)?

Marketing types, what do you think of these examples of co-creation, do you embrace them, or do they make you nervous?

Trademark types, same questions . . . .