Duets Blog

I'll Huff and I'll Puff ...

Brent Lorentz — Thu, 11 Mar 2010 04:00:18 -0600

Puffing, according to Black's Law Dictionary, is defined as:

The expression of an exagerrated opinion -- as opposed to a factual representation -- with the intent to sell a good or service.

Puffing, as a legal principle, has recently received a fair amount of attention as a result of Domino's new ad campaign.

Puffing generally exists whereever ambiguous and subjective words (such as good, better, best) are used used to describe goods or services. Some of you may recall the 3DO gaming system shamelessly touted as The Most Advanced Home Gaming System in the Universe. This is a classic example of puffery.

Importantly, however, puffing isn't merely a verbal concept. It also applies to visual depictions. A rather obvious example would be the animated advertisements showing Red Bull gives you wings. Obviously, the ordinary consumer isn't going to think that a slightly odd tasting taurine beverage is going to cause wing sprouting.

This brings us to the million dollar question though: Where is the line between puffing and deception? A fair rule of thumb is that it's probably when the advertisement presents something that borders on verifiable fact which a consumer might believe. For example, implying that your orange juice is processed by squeezing oranges directly into the carton (shame on you Tropicana) could cross the line. Or, presenting your product as having verifiably superior leak protection when, in reality, it's comparable to the competition (ahem, Glad-lock) is a no-no.

In the end, staying on the right side of the puffery/deception line can probably be accomplished with the old adage of "Think before you speak."

UPDATE: I forgot to include one of my favorite examples of puffing: the one-bajillion to one preference.

And The Oscar Goes To...Overbranding?

Karen Brennan — Wed, 10 Mar 2010 06:00:00 -0600

While watching the Academy Awards on Sunday night, the winner of the Animated Short Films category definitely caught my attention. The winner was Logorama - a 16-minute French anumation created around the use of 3,000 well-known trademarks.

The plot is described as a police chase through Los Angeles which includes a machine gun-toting Ronald McDonald who is a fugitive running from the police, played by the Michelin men. Every inch of the picture is made up of a trademark, logo or character, instantly causing sensory overload (see a prior blog by Brent Lorentz titled Sensory Overload here). According to Wikipedia, the creators described the film as the presentation of “an over-marketed world” where “logotypes are used to describe an alarming universe (similar to the one that we are living in) with all the graphic signs that accompany us everyday in our lives.” During his Oscar acceptance speech, the producer opened by thanking "the 3,000 unofficial sponsors" and assured them that "no logos were harmed in the making of the project."

Talk about Logorama is heating up on the Internet with most people wondering how they got away with it. In a brief clip, I noticed sporadic use of the registration symbol. One blog includes a quote from one of the creators after the film aired at Sundance, noting "no brand owners had objected yet," but "we hope there is no CEO of McDonalds here tonight." While everyone has a right to present artistic commentary, it will be interesting to see if any brand owners object now that the film has received so much press.

Another interesting tidbit - when I tried to watch a YouTube video clip on one website, it had been removed due to a copyright claim.

Total Recall

Guest Blogger — Tue, 09 Mar 2010 04:00:31 -0600

by Randall Hull of The Br@nd Ranch®

AKA: "Oh What a feeling".

Unless you have been on a trek to one of the poles or living in a cabin deep in the woods somewhere, you have likely heard about the huge problem facing Toyota Motor Corporation and its U.S. organization Toyota Motor Sales USA Inc. Here's a quick recap just in case:

Toyota Motor Corporation began a recall in late 2009, which – as of March – totaled 8.5 million cars globally due to braking problems and accelerator pedal defects which were initially blamed on other things such as "floor mat entrapment". The initial recall included Toyota's Corolla, Matrix, Camry, Highlander SUV, RAV4, as well as Tundra and Sequoia trucks. After Toyota admitted the 2010 Prius had a design defect in its anti-lock brake system, it too joined the list, and the U.S government began investigating the automaker.

And then there's the Black Box. As in commercial airlines, automobiles have "black boxes" known as Event Data Recorders, or EDRs, which keep a data record of various things the automobile was doing a few seconds prior to and after a crash. The EDRs in Toyotas use a proprietary software which, according to an Associated Press investigation, until recently could be read by only one laptop in the U.S. In response to growing pressure Toyota has delivered three laptops to the National Highway Traffic Safety Administration with the software capable of reading their EDR data. The AP investigation also found that Toyota was not offering full disclosure about what their device did and did not record.

Discussing the legal implications and what was and was not disclosed is beyond the scope of this article and my expertise. I want to focus on how this could throttle the Toyota brand and how they can put the brakes on this situation before it spins out of control. After reading all the news releases and legal saber rattling, "Oh What a feeling" is taking on a whole new meaning for me.

Toyota has been producing vehicles since 1936, and up to now, safety and reliability has been the foundation of their brand. Yet, in the middle of all this Toyota officials admitted the company's rapid growth may have gotten in the way of maintaining the highest standards of quality control. Its the familiar company profits before customer safety scenario -- hardly confidence building.

Added to this poor communications mix, when Toyota should have reassured the world they had the recall situation in hand, they made a fundamental faux pas, overlooking the importance of not only what you say but also how you deliver the message. In January, a Toyota executive addressed television cameras wearing – gasp! – a surgical mask. Perhaps this is common in Japan during cold season, but the message was broadcast worldwide, where a cultural nuance such as this could easily be misconstrued. First, it projected a "we are in toxic triage" image, and secondly, CEO Akio Toyoda should have delivered the message – sans mask. The U.S. marketplace, particularly, does not take kindly to aloof leadership in a crisis, and quite simply, this was a crisis of confidence, where brands live or die.

This debacle holds so many lessons for brand managers and executives, alike. Primary amongst them what not to do when your product demonstrates a performance problem that puts your customers at risk. When building public trust in your product and your company, transparency followed by action is fundamental. The risk in failing to staunch eroding customer confidence is forever tarnishing your brand.

The Toyota recall, of course, is not the first time well known brands have faced a crisis.

In 1994, a professor at Lynchburg College reported a bug in the Intel Pentium floating point unit. He sent a memo to Intel reporting what became know as the Pentium FDIV bug. Intel, caught by surprise, had no crises strategy in place and chose to deny the problem. When public pressure became too great, Intel announced a recall and Andy Grove, Intel CEO at the time, offered one of the greatest mea culpas in corporate history. Although jokes prevailed for some time, the public forgave and moved on.

Johnson & Johnson had a huge headache in 1982 when cyanide-laced Tylenol in the Chicago area resulted in 7 fatalities. Johnson & Johnson took only 6 days to respond and recalled 30 million packages. At the time the incident was thought to be fatal to the company, but the public saw the action as a prime example of corporate responsibility. The final result was tamper-proof packaging on medications and Johnson & Johnson's brand intact.

Perrier recalled 160 million bottles of mineral water in 1990 when traces of benzene were discovered. Although the amounts were not considered enough to present a risk, Perrier acted to protect its reputation and was hailed as responsible public citizens.

Companies, who have dealt with critical challenges promptly and well, demonstrate how a brand can be guided through crises and emerge untarnished, if not stronger for it. A genuinely sincere apology timed appropriately will go far in winning back customer loyalty and restoring trust. Many companies have learned their customers listen most closely when they honestly admit failure.

Toyota is one of the world’s strongest brands according the Interbrand's rankings. CEO Akio Toyoda must utilize his best public communication skills and convince the public that he has taken control of this crisis. Then act swiftly and effectively. Should Toyota successfully address the many product issues, they will recover with nothing more than a bloody nose. But should they fail to resolve the problems fully, as recent reports indicate, the damage incurred may be fatal and the Toyota brand could be so severely tarnished, it will take years and millions of dollars to restore. "Oh what a feeling" that would be.

More Godin on Trademark? The Sequel

Steve Baird — Mon, 08 Mar 2010 00:32:12 -0600

Last week we explored how at least some of Seth Godin's trademark advice is a bit dated.

This week, let's take a close and careful look at his advice concerning trademark registration:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

Actually, I've never met lawyers who "demand" that their clients register their trademarks. Strongly recommend, yes, and for good reason, yes, but demand, no. That is not a lawyer's role. Even inexperienced trademark lawyers know to explain the costs, benefits, and associated risks of pursuing or foregoing federal registration. Unfortunately, Mr. Godin appears to misapprehend all three.

We already have discussed the many and substantial benefits afforded to those who federally register their trademarks. These go well beyond what you have, "by the time you get to court." Indeed, in some instances, having the ® will avoid the need to go to court altogether, since the registration is actual proof of the claimed right and may be enough to move a squatter off your mark without even resorting to formal legal action. Good luck with that, if all you have done is "just ™ it." Moreover, in other instances, having the ®, can be the difference between continuing to use or expand the use of your trademark and not, so this is certainly more than "some" minimal benefit.

As to the risks, those who don't appreciate the value of a federal registration or the importance of filing prompt registration applications likely aren't aware of or don't understand this significant risk:

Now, some realize the importance of the protection, but in an effort to save or defer cost, they have considered holding off on filing a federal trademark application -- to see how the product does -- before making a final decision on the filing. If you or someone you know falls into this category, while I sympathize with your and their efforts to manage a tight budget, understand another risk that goes a step further than the risks already covered in the above-linked Create Magazine article.

To do so, after you have conducted the appropriate due diligence to clear use of the new name and mark, ask yourself how long it will take to get your product with the new name and brand in the stream of commerce and in the marketplace. Without the important benefit of constructive use relating back to the filing date of the federal trademark application, it is important to realize that your investment in preparing for the product launch may be lost altogether if another person or company files an intent-to-use trademark application, for a confusingly similar mark, even one day before you get to market with your newly named product. If this happens you and they may very well "see how the product does" with another name.

Now, as to the issue of cost, given the substantial benefits conferred and the substantial risks avoided, when those are recognized and understood, the financial cost of a federal trademark application seems well worth the $275 governmental filing fee toward the creation of an intellectual property asset of national scope.

Last, as to Mr. Godin's assertion that federal registration "doesn't actually increase the value of your trademark," he is simply wrong, so there you go. It stands to reason that national rights are worth more than local rights. Ask any party to a franchise agreement or even their informed bankers who loan money based on them.

Without a federal registration, rights are limited in geographic scope to those areas of operation where the use has been substantial enough to generate common law trademark rights. With a federal registration the trademark owner is deemed to have used his or her mark in every sliver, corner, and county of the U.S., as of the filing date, even though the trademark may never blanket the country with their goods or services. So, one need only consider the world of franchise relationships and trademark licenses to appreciate the enormous power and value a federal trademark registration brings to the table and to the bank.

Some other time, I'll explain some of the reasons for using the ™ symbol, but suffice it to say for now, doing so confers no legal rights. So, "when you come up with a great name" and you want to use it and have the best chance of expanding that use over time, as your business continues to grow, don't "just ™ it", instead, seek federal registration at the earliest possible opportunity.

Happy Birthday Duey!

Steve Baird — Fri, 05 Mar 2010 23:08:57 -0600

DuetsBlog celebrated its first birthday today, so that means Duey the squirrel is one year old. He has made a lot of friends over the past year (as have we), and he has come a long way (as have we) despite his exhaustion hording nuts (we haven't done any of that) for the long cold winter we had (hopefully this remains past tense).

This is some of what Duey has observed since our inaugural post entitled Dr. No and the Parade of Horribles:

Some 350 posts (part of the reason for his exhaustion);
Some 530 comments (part of the reason for your exhaustion);
Some 840 followers on Twitter;
Some 250,000 visits; and
Us, having a lot of fun . . . .

Here is a snapshot of where we were back in July 2009, and here is one from December 2009.

Thanks to our wonderful and growing group of talented Guest Bloggers, and thanks to you for your comments and interest in the conversation we have started here on DuetsBlog.

May all collaborations between trademark types and marketing types be early, often, personable, smart, enjoyable, graceful, and mutually beneficial.

Embrace Life: Raising the Bar for PSAs

Dan Kelly — Fri, 05 Mar 2010 04:00:37 -0600

For as long as I have been watching television, I have seen countless public service announcements telling me to wear a seat belt. One series that sticks out in my recollection is the "You could learn a lot from a dummy" ads. I think I recall these mostly because there were so many of them, and there was a modicum of character development involved--the dummies were Vince and Larry. These were not high art, but according to the Ad Council, they were effective.

There have been other seat belt campaigns. Here's a PSA from the 1970's, and here's one about the inventor of the seat belt. In the history of seat belt PSAs, there seem to be two principal categories: humor and shock. Often, these PSA campaigns have slogans, too: Click It or Ticket, Drive Alive, Buckle Up . . .

Until this week, it had never really occurred to me to appreciate the artistic side of public service announcements, and then I saw the Sussex Safer Roads Partnership "Embrace Life" PSA:

I believe this PSA was unveiled a little over a month ago, and it already has more than two million views on YouTube. The Sussex Safer Roads Partnership has a page discussing the making of this PSA and other elements of the campaign, which include the use of graffiti, which seems like a bold, novel step.

I think that the PSA and the "Embrace Life" slogan are both home runs. Well done!

The BAM in Obama?

Sharon Armstrong — Thu, 04 Mar 2010 04:00:29 -0600

The Los Angeles Times reported last week on an interesting nugget – the Missile Defense Agency’s new logo sports a blue O, a red-and-white swooping swirl, and white outlining to set the image off from a blue background.

The logo looks like this:

Remind you of anything? Say, this:

The LA Times article remarks upon a “perceived similarity” between the two. However, I submit that what is more interesting than this “perceived similarity,” is what the blogosphere is discussing as the perceived message behind the MDA’s new logo. An official at the MDA, Richard Lehner, states that “[t]he symbolism of the design is that it shows missile defense as a global system to defend the US, our deployed forces and allies and friends, as depicted by the path of an interceptor missile and a flash (not a star) denoting a missile intercept.”

The Washington Post, on the other hand, asks “Is the Missile Defense Agency's logo Obama-meets-Islam?”, pointing out that “conservatives’ charges that a logo being used by the Pentagon’s Missile Defense Agency looks very much like a fusion of the Muslim crescent moon and star and the Obama campaign logo. Some folks even detected a similarity to the Iranian Space Agency logo.”

What I find most interesting is that, according to Mr. Lehner, the MDA began using the logo to its materials three years ago to save costs over using its previous logo. I couldn’t find any information on when the Obama logo debuted, but I’m wondering whether the blogosphere has considered the possibility that it is the Obama logo that is newer than the MDA logo.

What do you think?

I Want My MTV, Hold the Music

Sharon Armstrong — Wed, 03 Mar 2010 04:00:53 -0600

A few months ago, my colleague Karen Brennan blogged about the Sci-Fi Channel’s name change to SyFy and removal of its Saturn logo. As Karen explained, part of the reason Sci-Fi/SyFy company heads wanted to change the name was to update the brand to appeal to a wider audience.

Now MTV is “changing” its logo as well. To what, you ask? MTV. MTV? MTV.

MTV isn’t changing the hefty, 3-D “M” or the graffiti-esque “TV.” MTV is simply doing away with the tagline “Music Television.”

Rolling Stone is calling it “a move that signifies the end of an era”, while the LA Times reports that “[f]or its part, MTV says viewers had moved beyond what the old logo said. ‘The people who watch it today, they don't refer to MTV as music television.’”

Rather than a move to expand its audience, however, MTV’s logo change comes across as a bit of coming clean – I was five when MTV debuted and spent most of my single digits pestering my parents so that they would install cable so I could watch it, and I don’t ever recall calling MTV “music television.” The on-line petition to convince MTV to change its name supports my theory, at least in part.

And besides, as my post last week indicated, we all know what MTV is really known for now.

Goodbye, Process of the Past; Hello, Trust and Engagement

Guest Blogger — Tue, 02 Mar 2010 04:00:45 -0600

by Jodi Petrich, Senior Director at Fast Horse

More brands are turning to social media to engage consumers. Social media are a great tool for launching new products or services, sharing promotional offers, hosting contests or simply connecting with loyal fans.

One big challenge is that the approval process in many companies doesn’t lend itself well to social media. For example, consider the process involved in the development of a print or TV ad. A strategy is created and a creative brief is written; creative teams develop concepts; concepts and copy are routed to clients and legal; clients and legal provide input; and the concepts are revised and approved.

It’s a process that (perhaps) works when creating an ad, but it lessens the opportunity for impact when applied to social media. The intent of social media is to be interactive, to share news in a timely fashion, to be authentic and relevant, and to allow for instantaneous or even spontaneous connectivity. Processes of the past simply aren’t nimble enough to allow companies to take full advantage of all that social media offers.

But what is the right process for new media? Take this tale of two brands on Facebook.

Brand A is mired in heavy process. Anyone who wishes to post content on the page must fill out and submit a request form a minimum of five days in advance of when the post will run. There are only five posts allowed per day, and only one per region, which can post on select days. The brand has a great following, but users are the recipients of very calculated messages.
Brand B has no process. In turn, many of its individual properties have created their own Facebook pages and post content freely. There isn’t a consistent brand presence, there are no standards in place to guide postings, and postings are often completely irrelevant to the business (actual Tweet example from a franchisee: “I got to work today and have on two different shoes. LOL!”).

On the one end, the five-day process ensures that messages are appropriate and approved by everyone, but it doesn’t allow the opportunity to react or respond to news or announcements that might help the brand be more relevant.

On the other end, the lack of process allows freedom and flexibility but creates the risk of ultimately hurting the brand’s reputation.

Social media can be a powerful tool for brands when used appropriately and timely. Doing so requires a level of flexibility and the ability to let go of processes of the past. Should brands have a social media strategy? Absolutely. Should there be a process in place to ensure messages and content are brand appropriate? 100% yes. Should the social media content that brands produce be held to the same standards as traditional marketing? Even more so. Should every Tweet and Facebook post be routed for approval? That’s where things get sticky.

Every brand needs to develop its own comfort level, and the keys are trust and education. You trust your employees to represent your brand everyday, why shouldn’t you when it comes to social media? Consider taking the time to educate your team on the essential brand messages and character you wish to convey. Draft up some key brand attributes and circulate them widely. Let people know how you want your company or brand to be perceived. Then trust them to deliver the messages, just as they do every day in the off-line world.

Seth Godin on Trademark?

Steve Baird — Mon, 01 Mar 2010 00:05:56 -0600

Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about.

When it comes to Mr. Godin's trademark advice, however, I'm not feeling it, sorry (that wasn't an apology either). Some of it is, well, lacking an indispensable quality. Even when it is accompanied by this witty disclaimer: "I'm not a lawyer. I don't even play one on TV. If you rely on my legal advice, you're getting exactly what you paid for."

The problem is, sometimes you end up getting much less than you anticipated and actually end up much worse off, when you follow down even a "free" path based on misunderstandings and misconceptions, at least as they relate to one's legal rights.

I'll never forget one evening watching Geraldo Live during the O.J. trial, more than fifteen years ago, as a young trademark lawyer. There was quite a stir about some trademark applications Mr. Simpson had filed for O.J. Simpson, Juice, and O.J., around the time of O.J. Simpson being charged with the murder of Nicole Simpson. I recall one of Simpson's defense lawyers, the brilliant constitutional lawyer Alan Dershowitz, rebuffing criticism about the trademark filings, unwittingly contending that Simpson never intended to use or benefit from those applications, he simply filed them to make sure no one else could. My jaw dropped when I heard this, because it provided a legal basis to immediately invalidate each one of the applications. In addition, had anyone followed this defensive "legal advice," their trademark filings would have been wasted money and considered invalid and void ab initio, since U.S. trademark law requires that an applicant must have a bona fide intention to use the mark on each and every good and service listed in the application.

Back to Godin on Trademark*, and even more recently, a couple of months ago Seth Godin wrote about how to protect your ideas in the digital age:

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client 'owns'. News flash: trademark law is designed to make it clear who makes a good or a service. It's a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol.

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

For the garden variety and non-famous trademark, the scope of rights is defined by whether or not there is a Likelihood of Confusion.

With respect to what trademark law was designed for, and while I don't consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

I'm not saying Seth Godin's opinions about trademarks are Out of Bounds, I'm simply saying some of them are out of date.

With a little luck, and assuming I can get in enough time in front of my Stuart Smalley mirror between now and next week, I'll explore another misconception or misgiving it appears Mr. Godin has about the registration of trademarks:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

So, stay tuned.

Big Numbers in Downloads and Domain Names

Dan Kelly — Fri, 26 Feb 2010 04:23:35 -0600

You may have heard the news that iTunes has hit the 10 billion (with a "b") mark in number of songs downloaded. Sales began in 2003. That's an average pace of more than 1.4 billion downloads a year. Considering that a typical single song retails for $0.99 on iTunes (likely higher than average price, as many albums with more than ten songs go for $9.99), I thought, "Wow, that's about $10 billion in sales!" Well, yes and no. It's only $9.9 billion in sales--$100 million short of $10 billion. I sometimes tend to think that one decimal place, one hundredth, is "close," and in a sense, $9.9 billion is close to $10 billion. In another sense, $100 million is a lot of money standing on its own.

This reminds me of a point made at a trademark infringement trial a few years ago. A lawyer (not me) asked a business owner whether a production cost difference of a few pennies per piece part was a big deal--hoping to make the point that it was insubstantial. The owner replied, "It's a big deal when I'm ordering hundreds of thousands of parts." All of this, of course, is not new. I recall learning about economies of scale in my 10th grade Economics class, though the lesson obviously continues to impress.

But here is another big number to consider: the folks over at FairWinds recently discovered a company that was losing 47 million initial web impressions to typosquatting domain names. Josh Bourne has a recent post at the Domain Name Strategy blog discussing this and some related SEO (search engine optimization) issues, and it is worth a read.

Pay attention to how those little things add up!

Trademark Lessons from "Jersey Shore"

Sharon Armstrong — Thu, 25 Feb 2010 08:09:44 -0600

At the risk of giving the readers of this blog the wrong impression about my tastes in entertainment, I have to mention the MTV show Jersey Shore. In just a few months, this reality television series about a group of proud New Jerseyans (or Jersyeites?) living at a beach house in the Garden State has partied, squabbled and otherwise worked itself in to the hearts of millions of viewers. The cast of memorable “characters” includes Mike “The Situation,” Jenni "J-WOWW," and Nicole “Snooki,” among others.

With monikers like those and their rapid rise to fame – their salaries have risen from a purported hundreds of dollars per episode to $10,000 dollars per episode - it was only a matter of time before one of them sought to protect the names that many Americans can recognize in an instant. Indeed, the New York Times reports that both Snooki and The Situation are seeking trademark protection for their names.

However, parties cannot seek trademark protection simply for their names. Trademark protection is extended to the use of a name or designation in connection with goods and services. Many celebrities file applications for the services that they provide as a natural result of being famous and on television – entertainment services. Snooki has done this, filing

an application for “entertainment in the nature of personal appearances by a television personality” with the addition of “printed matter, namely, books.”

But Mike “The Situation” does not appear to have filed for these services yet. Instead, the USPTO database reveals four recently filed, pending applications for THE SITUATION – all by different owners, none of whom are an individual named Mike – including “clothing for domestic pets, dog apparel,” “eau de toilette,” “clothing, namely t-shirts and underwear,” and other types of clothing too numerous to list here. Given the range of subjects covered by the characters of Jersey Shore, none of these goods seems implausible – only time will tell if The Situation will live on in American popular culture as an entertainer, a purveyor of doggie duds, or a clothing label.

Shaun White's Trademark Move

Karen Brennan — Wed, 24 Feb 2010 06:00:00 -0600

Shaun White recently won gold in Vancouver in the halfpipe with a near-perfect score. At 23, this already his second Olympic games and his second gold metal in this event. Since 2002, he has also won 9 gold, 3 silver, 2 bronze medals in the X Games. Anyone who saw him in the Olympics has to be as awe-struck as I am.

He has many "trademarks," including the name Flying Tomato for his long red hair or, more recently, Animal. His most recent trademark is a move - the Double McTwist 1260 (see him perform it here). While the “McTwist” isn’t his to claim (move invented by a skateboarder 25 years ago), he is the first and only to perform the Double McTwist 1260, a two board-over-head flips inside of 3 1/2 turns. Apparently, he developed this move over two years before he tried it out at the Grand Prix in Park City, Utah a month before the Olympics.

While he can’t really protect his “trademark” move, maybe he can own it by virtue of the fact that no one else can do it. He has already suggested he might be back in 2014 with more new moves.

The Long and Short of Name Development

Guest Blogger — Tue, 23 Feb 2010 04:00:16 -0600

by Mark Prus of NameFlash^SM

Some of my name development clients are fans of long, keyword-rich names. Obviously the appeal of a search engine spotting your website is driving this approach.

Some of my naming clients are fans of short names that can be easily shared on Twitter.

Which approach is better?

I will confess I am a fan of short, memorable names. Steve Baird would agree. As Steve so eloquently puts it, “we live in a sound bite world.”

But I strongly believe that picking a name because it would be more attractive to search engines or because it is short enough to Tweet is a huge mistake. Any time you allow tactics to drive your strategy, you are heading down the road to ruin.

A far better approach is to hone your brand’s strategy and test it with consumers until you find the positioning that is going to make all the difference in your business, then develop a name. David Ogilvy once said "The results of your campaign depend less on how we write your advertising than on how your product is positioned." The same is true for your name. Spend time developing a positioning that rings the bell with consumers and then go find the perfect name that brings that positioning to life.

Sound like a difficult thing to do? Not really. I know I am biased by my 25+ years of experience in building great consumer brands, but this task is not difficult. Time consuming? Yes. At times painful? Yes. Expensive? Could be. But in the end, the process of honing the brand positioning and using that as a basis for name development will pay dividends for years to come.

If the name you choose ends up short enough to Twitter, then you may wish to include that tactic in your arsenal. If your name includes relevant keywords, so much the better! But please, don’t pick names because they work better with tactic A or Tactic B!

Your thoughts?

Color Trademarks, Red Knobs, and Secondary Meaning

Steve Baird — Mon, 22 Feb 2010 00:39:41 -0600

More on single color trademarks today. Eighteen months ago, Wolf Appliance obtained a federal trademark registration in connection with "a red knob or knobs" of "domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills."

Wolf put its registration to the test a couple of weeks ago in a federal trademark infringement action, venued in the Western District of Wisconsin, in which it asked the court for immediate injunctive relief to stop arch-rival Viking Range from offering a Red Knob Kit as an accessory for its competing high-end residential cooking ranges (typically equipped with standard black knobs).

Here is a pdf of the decision, granting Wolf's request for a preliminary injunction. The Wisconsin State Journal reported on the decision. Last December, ApplianceAdvisor.com shared a rather cynical view of Wolf's single color claim of exclusivity when the lawsuit was first filed.

So, how did Wolf pull it off? Well, here's the short answer:

Before bringing the lawsuit, Wolf obtained a federal trademark registration for the knobs, entitling it to a presumption of validity when the time came to enforce exclusive rights;
To demonstrate secondary meaning in its red knobs, Wolf made good use of "look for advertising" on its website: "Choose black knobs, or let everyone know it's a Wolf with our distinctive red knobs;" in catalogs: "Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature"; and in advertising: touting the red knobs as "distinctive" and an "exclusive Wolf feature";
Viking apparently stopped selling a range with red knobs back in 1993, and since 2000, Wolf had made "substantially exclusive" use of red knobs on domestic cooking ranges; and
Greatly assisting its secondary meaning claim to the red knobs, Wolf enjoyed the benefit of significant media attention and stories, specifically mentioning Wolf's "distinctive," "iconic," "classic," "recognizable," "status symbol," "trademark," and "signature" red knobs.

Trademark types, doesn't the court's recognition and reliance on this very helpful media attention evidence make you want to collaborate with your favorite PR type the next time your client is pursuing a single color trademark or some other form of non-traditional trademark rights?

With respect to the question of likelihood of confusion, the Court was moved that there could be initial interest confusion through this hypothetical scenario:

"Suppose a potential range customer is at a dinner party and the hostess tells the potential customer how much the hostess enjoys her range. The range happens to be a Wolf range with red knobs. Several weeks or months later, when the potential customer enters a retail store to browse ranges, he or she sees a stainless steel Viking range displayed with red knobs that looks similar to the red-knob range he or she has seen in the past. There are no other ranges displayed with red knobs. The customer does not remember the brand of the hostess' range, but the customer knows that Viking is a well-known manufacturer in the high-end range market. The red knobs look familiar, so the customer thinks this is the range to which the hostess spoke so highly. . . . Such a situation could qualify as 'initial interest' confusion, because defendant would be reaping the benefit of the goodwill that the plaintiff has developed in its mark."

Are you concerned? Do you find this hypothetical scenario plausible?

What remains to be seen is whether the case continues to conclusion for the entry of a permanent injunction after a full trial. While it is true that the grant or denial of a preliminary injunction often results in an amicable settlement of the lawsuit, this case may not end that way.

Even though Viking lost the first round in this bout, it has brought a counterclaim to cancel the red knob trademark registration issued by the U.S. Trademark Office in 2008. Moreover, if Viking determines that it has a commercial and competitive need to offer the Red Knob Kit, it would be rather easy to resume distribution of the kits at a later time, provided it is able to either invalidate the registration or win on the ultimate issue of whether there is a likelihood of confusion in the marketplace for residential cooking ranges.

To the extent Viking Range decides to continue its defense and counterclaim to invalidate Wolf's red knob registration, I predict that discovery will vigorously probe functionality as a possible basis for invalidation. A win on functionality would be complete, it would knock out the registration, and make it unnecessary to even consider the likelihood of confusion question of infringement.

In case you're wondering about scope, it would appear that both commercial ovens and toy ovens having red knobs are outside the scope of Wolf's registered trademark.

Stay tuned for more on this interesting case.

Tiger's Personal Brand of Apology?

Steve Baird — Sun, 21 Feb 2010 00:58:02 -0600

Putting aside the questions of whether Tiger Woods needed to or should have made a public apology, the timing of it, and even the content of it, now that Brand Tiger made the decision to do so and did so last Friday, I'm interested more with how Tiger conveyed it and the likely impact it will have on his personal brand going forward.

What struck me most about Tiger's 14 minute public apology (actually Tiger worked in more than an apology during this time) was the fact that he read it, word for word, rather stiffly, from a prepared script, and from behind a podium. Doing so begged for me the question of who wrote it, in the same way we might ask who a famous politician's speech writer is. Reading from a script or teleprompter behind the security of a podium works well for politicians, I'm not sure it is the best way to convey a heart-felt apology, ok, I am sure, it's not.

After seeing the entire 14 minutes, I had to check with the U.S. Trademark Office to determine whether Brand Tiger had any registered protection for trademarks in Int'l Class 35 for the "production of public service announcements." But, I couldn't find any . . . .

So, why the script, why the podium, why the presidential-blue backdrop? No doubt, this was a carefully controlled message with nothing left to chance, and no chance for surprise. So, that probably answers that. However, it seems to me the tightly controlled format squandered an opportunity to create a more meaningful connection, or perhaps reconnection, with Brand Tiger.

This morning I saw an interview on ESPN with one of the golfers on tour who thought it would have gone better if Tiger had not read a script, but instead spoken from the heart, perhaps guided by a few bullet points in some notes. I tend to agree and believe doing so would have conveyed far more emotion, truth, and authenticity. So, who recommended or chose this format for Brand Tiger?

I'm thinking it was a left brainer, not a right brainer, because striving for a more natural, emotional, and authentic expression from Tiger seems like a no-brainer to me, at least, if the goal is to resurrect, or at least begin the resurrection of Brand Tiger. Or, perhaps a right brain advisor recognized that the target audience for Brand Tiger's apology skewed toward left brainers who would feel themselves more comfortable with this controlled format too? By the way, if you're not sure which of your hemispheres is dominant, here is an interesting and brief online 18 question test.

Left brain dominant Accenture was the only sponsor mentioned by name, do you suppose they had any say in the chosen format?

For further guidance on my hemispheric brain hypothesis, I consulted Al & Laura Ries' most recent and highly acclaimed book War in the Boardroom, which explains the conflict and divide between management and marketing types by their respective emphasis on left and right brain thinking:

If you're the CEO of a major corporation, chances are good you are a left brainer. Before you make a decision, you want to be supported by facts, figures, market data, consumer research. It couldn't be otherwise in a world where the ultimate measurement is the bottom line and the stock price.
If you have a job in marketing, chances are good you are a right brainer. You often make decisions by "gut instinct" with little or no supporting evidence. It couldn't be otherwise in a creative discipline like marketing.

Another striking difference: left brainers have a strong preference for verbal thinking, while right brainers favor visual thinking.

When a management type makes a speech, he or she usually stands behind a podium and reads a script or the words on a teleprompter.

When a marketing type makes a speech, he or she usually stands in front of a screen using dozens of visuals.

Again, all signs seem to point to the left side of the brain on the format. Now, I'm not suggesting that Brand Tiger would have benefited from a Ross Perot style speech complete with charts and graphs, but I do think that Tiger would have chipped his personal brand out of the rough far more effectively without a podium, without reading a speech, and he wouldn't have needed 14 minutes to do it. No doubt, this was only the first public step toward resurrection of Brand Tiger.

As Laura Ries blogged last December on Ries' Pieces, and as I suspect will always be the case, It's What Tiger Does Next That Counts . . . .

Trademark Likelihood of Confusion Seminar

Steve Baird — Sat, 20 Feb 2010 16:31:31 -0600

Twelve more days until an all-star panel of speakers share their insights during an in-depth focus on arguably the most important trademark issue to brand owners, marketers, naming consultants, and their trademark counsel. The seminar will focus on the many faces of trademark confusion, with a special focus on initial interest confusion, reverse confusion, survey evidence, and post-sale confusion theories.

Promises to be a good program, we hope you join us, special guests Ron Coleman and Nancy Friedman will be in town, Paul Mussell from Wells Fargo, Lora Mitchell Friedemann from Fredrikson & Byron, Tony Zeuli from Merchant & Gould, survey expert Ivan Ross, and Michael Olsen, Peter Gleekel, and yours truly from Winthrop & Weinstine, P.A., see here for the link on the Minnesota Continuing Legal Education website. See here for a pdf of the brochure, please check it out.

We hope you join us.

A Frisbee By Any Other Name?

Dan Kelly — Fri, 19 Feb 2010 04:00:37 -0600

In reading news of the passing of Fred Morrison, inventor of the Frisbee ®, I was surprised to learn that the Frisbee wasn't always called "Frisbee." Morrison sold his rights to Wham-O in 1957 ("sold" being used loosely -- he apparently earned more than $2M in royalties). Morrison had dubbed earlier prototypes of the flying disc with the following names: the Pluto Platter, the Whirlo-Way, and Flyin-Saucer. Morrison's reaction to Wham-O's name of Frisbee? "I thought the name was a horror." He later recanted. According to CNN, Wham-O's inspiration for the Frisbee name was the Frisbie Pie Company, whose pie tins were apparently used by college students as early flying discs.

So, let the speculation begin: how much is the success of the Frisbee due to the name, and how much is due to everything else (design, functionality, enjoyment, etc.)? Although it is probably impossible to ever know the answer, I submit that a good name is probably worth at least 10% of sales. (The above reports peg sales at 200 million units.) Is there a rule of thumb in the marketing industry for this, or is anyone aware of any studies that have attempted to quantify this? I also note that Frisbee is a solid, almost staccato two-syllable word, like iPod, Apple, Sony, Honda, Nike, Kindle, and many other popular brands that seem to have staying power.

By the way, you want horror? How about the horror of this: point your browser to frisbee.com. Go ahead, try it. As of this writing, it redirects to this page--a big pay-per-click page of flying disc ads, none of which mention "Frisbee." The page is titled, FLYINGDISCS.ORG, with the subtitle, "Ashes fly back into the face of him who throws them." Sounds like there may be some bad blood there!

I should also point out the "horror" of the name "Frisbee Golf," both from a trademark standpoint and as an avid player in the game of disc golf. While I am generally a fan of Wham-O products, I think Wham-O was a little late to the modern incarnation of disc golf and the specialized discs used in the sport, which are substantially smaller and flatter than a traditional Frisbee disc (think Ultimate Frisbee) with a heavy, hard rim. I daresay Wham-O would not take kindly to the Professional Disc Golf Association changing its name to the Professional Frisbee Golf Association. (FYI, two of the more popular brands in the disc golf biz are Innova and Discraft.)

And the real geeks can see Morrison's original design patent here, and the later utility patent for the distinctive grooves that appear on the shoulder of Frisbee discs here. (Distinctive? Yes. Trademarkable? No, because the grooves are functional. I'll spare you the calculus that explains the aerodynamics . . . for now.)

A Parody Is Forever?

Brent Lorentz — Thu, 18 Feb 2010 04:00:32 -0600

Recently, a new Verizon commercial caught my eye. Perhaps you've seen it:

This immediately reminded me of a circa 1993 (has it really been that long?) De Beers commercial (seen here). Apparently, this is one of at least two Verizon commercials intended to "spoof" some of the classic, well-known commercials from our past. My immediate reaction, to these commercials was to start brainstorming all of the conceivable bases on which Verizon might be liable given the similarity of its commercials to clearly recognizable commercials from the past. Under the right factual circumstances, I could see all sorts of claims for unfair competition, trademark infringement, copyright infringement, misappropriation, etc. (not saying those facts exist here).

AdFreak, a blog which I just recently became aware, described these commercials as "parody." However, I seriously question whether these commercials would be able to successfully meet the legal requirements for a parody fair use defense. The fair use defense is a relatively difficult defense to establish, particularly where the "parody" is being used for commercial benefit.

Moreover, parodies are generally understood by the law to be a criticism of something represented by the underlying material, not merely a clever transformative use. Compare the above Verizon "spoof" to this, where the use is plainly intended to comment on De Beers alleged enabling of the "conflict diamond" trade. Or compare it to this "vicious" (WARNING: GRAPHIC AND DISTURBING CONTENT) parody of "overwrought De Beers jewelry commercials." Each of these uses is categorically different from Verizon's use here. So, I hope Verizon had something else in its bag of tricks besides the "parody" argument before running these commercials.

Ultimately, the moral is that its important to always recognize the danger in "borrowing" someone else's marketing concept or intellectual property, no matter how limited or transformative the use. Additionally, its important to recognize the fair use defense is not always the best shield to protect yourself, particularly if you're involved in commercial advertising.

Name That (Zombie) Brand

Guest Blogger — Wed, 17 Feb 2010 00:30:34 -0600

Losing a trademark challenge is bad news, right? It’s costly, it’s embarrassing, and it can damage a brand’s reputation.

And yet in one well-known instance, losing a trademark challenge didn’t hurt a brand at all. In fact, it ensured the brand’s immortality.

The product name I’m thinking of existed for just three years in the 1990s before the death-dealing trademark challenge. The company name survived in slightly altered form; the product name was replaced by a series of successor names.

Now, more than eleven years after that legal defeat, the original product name is still used, erroneously but ubiquitously, to describe an entire class of products—products that themselves exist mostly as fading memories.

What's the product name?

I'll give you one more hint: it's a technology brand.

Answer after the jump.

The product name is PalmPilot, the first-generation personal digital assistant (PDA) introduced in 1996 by Palm Computing, then a division of U.S. Robotics. The Palm trademark was challenged by pen manufacturer Pilot, which had used "Pilot" as a brand name for its products since 1918. Palm lost, and since 1998 no Palm product has borne the Pilot name.

In fact, Palm no longer makes PDAs at all. Instead, it makes smartphones or app phones (Treo, Centro, Pixi), which have subsumed the old PDA category and added innumerable extra functions.

And yet...

"PalmPilot"—sometimes rendered as Palm pilot or palm pilot—refuses to die. Here are a few examples from 2009 alone:

[A]s Professor Tushnet of Georgetown Law School has documented for her trademark law class, a 2004 Palm pilot [sic] ad campaign included the catchy slogan: “go places, google things.”

—"The Power of the Brand As Verb," New York Times, July 19, 2009. (There was no PalmPilot in 2004.)

"I've been reading ebooks on my Palm Pilot for 5 years." "I've been reading ebooks for years, first on a Palm Pilot and now on an iPhone."

—Comments #11 and #13, "Cellphone Apps Challenge the Rise of E-Readers," New York Times, November 18, 2009. (The PalmPilot was never capable of being an e-book reader, and the brand hasn't existed during the last five years.)

Someone apparently removed a screen to a ground-level window and took two Palm Pilot PDAs, valued at $400 each.

—"The Grinch Who Stole the Snow Blower," in The Local, the New York Times's New Jersey blog, December 22, 2009. (Even as antiques, PalmPilots probably wouldn't be valued at $400.)

I don't mean to pick on the Times exclusively. Here's a recent example from the New Yorker:

Next to the chimney, on top of the stove, is a piece of black duct tape with a small silver disk beneath it. Plug the disk into a Palm Pilot, and it will tell you exactly when and for how long that stove was used in the previous month.

—"Annals of Invention: Hearth Surgery," by Burkhard Bilger, December 21/28, 2009. Full text available only to subscribers; abstract is here. Citation is on page 91 of the print edition.

And how about this, from the Cape Cod Times:

In an era when Internet access is available in the palm pilot of your hand, it's hard to believe that some Massachusetts residents still struggle for a Web connection.

—"State-federal link boosts Web access," December 27, 2009. And just a couple of weeks ago, when former vice presidential candidate Sarah Palin was photographed in Nashville referring to notes scribbled on her hand, several commentators joked about the "Palin Palm Pilot." (The Times of London called it "the Hillbilly Palm Pilot.")

I think that's enough evidence to make my point. PalmPilots: dead. PDAs: dead. And yet PalmPilot/Palm Pilot/palm pilot lives on!

It's as though all video games were today generically known as Pong. Or as though you called your iPod your Walkman.

What accounts for this persistence of memory? Your guess is probably as good as mine. Yes, the double-P alliteration is catchy, but no catchier than some other less-successful brand names. PalmPilot was one of the earliest PDAs to be offered, but it wasn’t the first. Maybe the familiar associations of both “palm” and “pilot” helped make the PalmPilot’s breakthrough technology more approachable and thus memorable.

Or maybe it was a pair of New Yorker cartoons—both of them published in 2000, after the brand was officially dead and buried—that guaranteed the PalmPilot’s robust afterlife. One depicted an actual airline pilot (“This is so cool! I’m flying this thing completely on my Palm pilot!”—note lower-case “pilot”). The other showed a hooker leaning into a prospective client’s car window and offering, “For an extra fifty bucks, I’ll let you show me your Palm Pilot.”

Can you think of another brand with such a short life and such a long-ago death that survives in everyday parlance? I can't.

—Nancy Friedman, Chief Wordworker at Wordworking