I consider it my duty to give credit where it’s due, and to point out accurate analyses of intellectual property rights by non-IP geeks. Corby Kummer does an excellent job in this article about bread wars; or, what happens when collaborators in a recipe split up. Kummer makes clear that neither a recipe nor a method of making bread is subject to protection, and that apart from a catchy and non-descriptive name, trademark protection isn’t available either. Indeed, Kummer quotes baker Jim Lahey as saying “rather than squabble, bakers should do their best to help each other increase sales and steal back sales from the industrial producers that caught on to the idea that “artisanal” bread sells.” Hmm . . . should the fashion industry take a slice from the bakers’ loaf instead of clamoring for protection of clothing designs?
“Change isn’t just a slogan.” That’s Barack Obama today in New Mexico, commenting on John McCain’s recent habit of swiping Obama slogans. It’s an interesting push-pull on the descriptiveness issue: Obama, by providing concrete evidence of the changes he hopes to make as President (e.g., on health care), uses “change” descriptively and comparatively. McCain’s use, on the other hand, is suggestive to the extent he’s not offering proposals for change – yet descriptive if we’re looking at his flipflopping on issues.
Now for a gratuitous Obama photo, taken Monday in Pueblo, Colorado:
I figure that Obama’s repeated mention of McCain’s slogan theft is a faint but legitimate excuse for introducing more political discussion on a trademark blog. Plus, in the immortal words of Queen Elizabeth in BlackAdder, “who’s Queen?”
Well, I’m not the only one to see that P&G’s new ad campaign for Secret has a lot going for it: “Because you’re hot” is one of the best double entendre taglines I’ve seen in advertising lately. And “Flawless” is an outstanding mark, though I would caution the admakers against weakening it by using it in copy (e.g., “5 new facets of flawless performance.”) And although the Secret website is clearly focusing on the younger market, I think it may be the older ones among us who get the bigger chuckle out of “because you’re hot.” I know I do . . .
I say this over and over again: Certain terms and ideas are not capable of exclusive appropriation by one party as trademarks. Keith Olbermann gives a stellar real-life example of my oft-repeated maxim in the context of what he sees as one party – here, the Republican party – attempting to appropriate for itself as its brand the tragedy of September 11, 2001.
Kudos to Keith for his grasp of what a trademark is, and more importantly, for his insightful message.
The commenters on this Jezebel post about Kate Moss’s new perfume Velvet Hour really say it all – except for the fact that it appears that an ill-advised layout can sabotage the impact of a good mark.
Suggesting flatulence? Not really the best idea for a fragrance ad.
Pedicure time! And you know that means a hefty dose of magazines. Hit the jackpot today reading Marie-Claire (not nearly as good as the original French magazine, but fine for my purposes) where I learned about Ralph Lauren’s new fragrance, Notorious.
Evocative, sexy, brooding – just the right kind of name for a perfume. And then, while researching Notorious, I found he’s also got one out called Pure Turquoise, which, IMHO is pure genius. But then I learned more.
Here’s the deal. I don’t for a moment begrudge Mr. Lifshitz’s having changed his surname. I think “Lauren” balances out Ralph nicely, and the full name has obviously acquired tremendous cachet. Certainly naming a perfume “Lauren” was a no-brainer. But “Ralph” alone? Sorry, not the equivalent of “Lauren.” This is one case where the whole is definitely greater than the sum of its parts. I’m at a loss to understand how a name that is slang for “vomit” can form the anchor of a line of perfume marks. Yes, there’s not only Ralph, Ralph Hot and Ralph Wild, there’s also Ralph Rocks.
I’m all over vanity marks in the perfume biz – I see nothing wrong, for example, with Michael Kors naming his fragrance line Michael. (A scent l can actually wear without succumbing to migraine, in fact.) But that’s Michael, and not Ralph. My guess here is that the Ralph Lauren brand has such cachet and draw for the young adult market that the slang meaning is irrelevant to the purchasing decision. I can just envision that unfortunate conversation though:
A: What’s that perfume you’re wearing?
A: That makes sense.
A: Because that’s what it makes me want to do.
UPDATE: In discussing this post with my brother-in-law Paul, aka the Funniest Uncle on the Planet, we came to the horrifying realization that Ralph Rocks would be a great name for a brand of petrified vomit . . . that is, if such product existed.
Fun fact: A family friend almost married the then-Mr. Lifshitz. Her parents discouraged her, however, as he was in the shmatte business and they thought he wouldn’t amount to anything. Oh well.
Watching the women’s bike racing right now, as the peloton slogs through the rain and pollution. Give me the Tour de France any day for scenery, but one thing that caught my eye was the bicycle brand Cervelo. What a great name: it combines the French words for brain and bicycle, and is not appallingly unpronounceable in English. Bravo!
Former NFL quarterback Drew Bledsoe . . . wait, did anyone ever think I’d begin a post with such words? Well, never say never. Bledsoe, now retired from football, has gone on to literally greener pastures, recently opening Doubleback Winery in Walla Walla. I wish the winery great success, and commend them for selecting a terrific name – one that is evocative of both Bledsoe’s career and his return to his hometown.
H/T Catie at Through the Walla Walla Grape Vine.
I’ve recently noticed several businesses in our area that all seem to follow a similar naming convention: A single word name that’s suggestive of an element of the underlying business but not technically descriptive. Here are my sightings: Sauce, a pizza/pasta joint (registered); Splitz, a bowling center (registered); and Squeeze, a smoothie bar (also registered). (Full disclosure: I have eaten at Sauce and will definitely return!)
I like these names a lot, yet wondered whether the PTO had found any of them descriptive of the services. A quick check of TDR for all of the marks indicated that all went straight through without objection. That surprised me, because I cannot begin to count the times I’ve had to argue to the PTO that a particular term is not immediately descriptive of the goods or services at issue, but rather descriptive of some elemental function or feature of the product or service, consequently not descriptive to the consumer – and thus suggestive and registrable. Sometimes I win, sometimes I get stuck with the Supplemental Register. (Sometimes I even lose, but can’t bear to link to one of those.) In any event, the fact that these three marks above were all registered without a hurdle reminds me again what a crapshoot the PTO game is.
Meanwhile, bravo to these marks’ creators.
Updated: Duh. I forgot about two local notables in this realm: Chipotle (now nationwide, got its start in Denver in 1993) and Garbanzo. I am trying to provide sufficient substantiation so that I am not called out for a “bogus trend story.”
Observed near the Factoria Mall: Store called “Wide Shoes Only.” Not protectable, certainly, but an example of clear communication of the store’s purpose.
More to come!
Mike Atkins points to this Inside Counsel article on the TTAB’s crackdown on overly broad — and thus fraudulent — statements of use in registrations and renewal applications. Hallelujah, I say. If a trademark registration in the US is to be worth the paper it’s written on, it should cover only those goods and services on which the trademark owner can show actual use. But while everyone is worrying about audits and ensuring they’re not caught on the next renewal, how do we prevent the problem in the future?
Well, how about filing the original application only for those goods or services the mark is being used with? Sounds crazy, no? Alternatively, file your ITU applications broadly — but when the time comes to file a statement of use, how about knocking out those items on which the mark isn’t being used? It could work! Similarly, when it comes time for the 8 & 15 or renewal filings, don’t just ask the client if the mark is in use, give them a checklist to tick off each item or service, and advise them of the risk involved for saying something’s in use when it’s not. This is not magic here.
But still, how did we get to this point? My guess is that somewhere along the way US trademark practitioners started filing unreasonably broad identifications in their US clients’ applications, maybe because of section 44 envy (oh, those class headings!), and because they could tell their clients that gave them “broader coverage.” But that long laundry list isn’t better (and from my past experience, who really needed to include athletic supporters among the promotional items bearing a media company’s mark anyway?) if you actually need to enforce one of those registrations against a competitor — who turns around with a counterclaim for cancellation and fraud.
What I think has changed over the past few years that others haven’t yet raised is that the Internet has made it extremely simple to verify the bona fides of a particular registration. If my client’s application is being held up by an older registration with a laundry list of goods, I’m almost guaranteed the ability to track down an item listed in the registration that’s no longer being sold, contact that registrant or its lawyer, and advise them of their registration’s vulnerability, and get a consent for my client’s application. But that’s fine, in my book. Nothing wrong with keeping us honest, especially where there are declarations under oath involved, right?
I always say that a trademark registration is not your corporate mission statement; neither is its purpose to reflect the full product line to which your company aspires. It is a snapshot of a particular state of the world at a certain time. If there is a purge and certain party members fall out of favor, do yourself a favor and purge those members from the list of goods.
(I think I need some metaphor therapy, stat!)
Next stop in the ranting express: Registrations for promotional items. Betcha can’t wait!
Well, I missed my 25th reunion but at least managed to get to Providence and Newport, RI, and Westport, MA, in the reunion year. The girls and I enjoyed our friends’ 18th-century home, digging for horseshoe crabs and shells at the beach, and I tried to figure out how to get my body to handle humidity again.
Of course, there was a bit of touring. Chief among the highlights on the trip was the excursion to Dartmouth, Mass., and the marvels of the Christmas Tree Shops store. Any retail establishment with a slogan (registered!)like DON’T YOU JUST LOVE A BARGAIN? is a siren call to me, of course, but this one was junk shopping paradise. Had I not been traveling carry-on only (after the Heathrow debacle of the spring, natch), it could’ve been a pricey trip. As it was, I managed to spend $33, pass a delightful hour there, and come home with dish towels, potholders, paper lanterns, cocktail napkins, potentially counterfeit foam clogs for the other trademark lawyer in the family to examine, and a charming cow-shaped bag for stashing supermarket shopping bags, all cleverly secreted in my luggage.
But what I didn’t buy was so thrillingly emblematic of the store and its commitment to quality that I must share it:
At only $1.99 it was so darn tempting, but I had to refrain. The girls needed sweatshirts from Brown (yes, they now aspire to follow in Mom’s footsteps there, but I keep reminding them that knowing their multiplication tables will really go far to ensuring even initial consideration) and I just had a horror of checking baggage through O’Hare. So the photographic memory will have to suffice.
But it wasn’t just shopping and wet towels. The stroll down memory lane at Brown was thrilling (was it really that small?), and the visit to the Touro Synagogue in Newport moving, particularly George Washington’s assurances to the small congregation back in 1790 that the then-infant nation would give “to bigotry no sanction, to persecution no assistance.” Wise to remember that today.
Next stop: A return to Seattle!
Introducing JetBlue’s new slogan: Happy Jetting! With website sections titled “Are you a flyer or a jetter?” “The Rise of Jetting,” and statements like “JetBlue brings humanity back to the skies with a new form of aviation called ‘jetting,'” “Explore the many ways of jetting,” and a triumphant phallic-appearing announcement that “Today Jetting Rocks,” JetBlue is clearly trying to generate enthusiasm in a hungry, thirsty, crowded, tired, smelly and overcharged flying public.
From a trademark perspective? Not so much. In fact, they’ve pretty much violated every rule in the Jessica Stone Levy book of trademark selection. JetBlue has: (a) taken a colloquial term used in the English language by consumers of the services; (b) defined their view of “jetting” exhaustively in marketing materials; and (c) used other formatives of the word (e.g., jetter). If, for example, a competitor were to use a slogan like “I jet around,” or “Jetting off to Cabo was never easier,” and JetBlue sued, I’d say those three actions above would be Exhibit A in that competitor’s defense.
This campaign reeks of the trademark-antithetical “branding initiative,” launched by marketers with little concern for the practical aspects of securing trademark registration and more importantly, of acquiring and enforcing trademark rights. Paradoxically, after reviewing Jet Blue’s full website, I think the campaign is actually quite clever and entertaining, and if Jet Blue can be the rising tide to lift planes (?) in this horrible market, more power to them. Just don’t think that you can then turn around and be a trademark bully with the trademark rights equivalent of a pair of batacas.
A visit to the “Inspiring Impressionism” exhibit at the Denver Art Museum. Outstanding exhibit and museum. We’ll definitely go back. Plus, the girls really like the T-shirts that say “DAM . . . That’s good art.” Not quite as awesome as the “Say Hey to Monet” slogan that I think came from a North Carolina museum (one that apparently possessed no Monet in its collection), but darn close.
Lunch, of course. Well, when in doubt, go to a pub. And Pints Pub didn’t disappoint. Loved their Airedale Pale Ale — with this cute mascot, who wouldn’t?: