Bad Decisions Part One

Pick a great trademark. Register it.

Sounds easy but people get it wrong all the time. Today, we’ll focus on mistakes people make when they pick a trademark. The next post will focus on mistakes people make when they try to register their trademark.

I’m picking a trademark so that everyone will know what we sell right away.

There are so many problems with this:

  • At best your trademark will be incredibly weak and virtually indefensible. At worst, it won’t have any rights at all. Like FLAT FIX.
  • Everyone will confuse you with everyone else. Which of these is the most memorable: Staples® OfficeMax® or Office Depot®?
  • You’ll be locking yourself into whatever you describe so that your brand can’t grow and change as your business does.

I’m naming it after myself.

Trademarks that are proper names are weak, both legally and from a marketing perspective. They also involve risks that other trademarks don’t have:

If those ideas are bad, what should you do?

Pick a trademark that tells your customers how they’ll feel or what they’ll experience when they use your product or service: Nest®; Sir Kensington’s®; Roomba®. A suggestive trademark is easy to defend and a marketer’s dream. Go suggestive. You’ll never regret it.

 

 

Big shout out to the members of Pilotworks in Brooklyn, for suggesting this topic! What do you want to know about?

 

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Wild Flower and du Pont

I hand you a box of WILD FLOWER brand gumdrops and a box of WILD FLOWER brand donuts.

Do you think the gumdrops and the donuts came from the same company?

You’re probably thinking something like this:

Candy and donuts are sort of related and it’s not hard to imagine a candy company also selling donuts but, off hand, I can’t think of a company that sells both under the same brand.

Would your answer have been different if I had given you a box of candy and a bag of cement mix? What if I had handed you a box of gumdrops and a box of jelly beans?

You’ve just done an analysis similar to what trademark attorneys do all the time. You considered the “relatedness of the goods and services” to figure out whether trademarks are “confusingly similar.”[1]

  • Do the goods/services feel related? Would you find them in the same type of store, like handbags and jewelry? Would you find them in the same department of a store like pants and belts?
  • Can you think of a company that sells both under the same brand?

Both of the bulleted question-types are important. Sometimes goods are closely related even if there’s no company that does both. Other times, there can be one brand used for lots of really different stuff: Yamaha Corporation uses the YAMAHA® trademark to sell everything from motorcycles to trumpets and lots of stuff in between.[2]

“Confusingly similar” is both a difficult and complicated concept and pure common sense.

 

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[1] There are a bunch of these question tools. Trademark attorneys call them the “du Pont Factors” because they come from a case involving E. I. du Pont de Nemours & Co. Here are the most important ones:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

[2] Here’s a partial list of the stuff Yamaha Corporation sells under its YAMAHA brand: Musical instruments, skis and ski bindings, motorcycles, motorboats, eyeglasses, golf clubs, badminton rackets, robots, semiconductors.

Immorality and Scandal

What’s been happening at the Trademark Office since the floodgates to immorality and scandal were opened?

You may remember that the United States Supreme Court ruled that it was unconstitutional to refuse to register trademarks that include disparaging words. Soon after, the Circuit Court of Appeals for the Federal Circuit applied the reasoning in the Supreme Court decision to shitcan rejecting trademarks with immoral or scandalous words.

Here’s a rundown of applications filed in the first year following the Supreme Court’s decision that have a least one of the Seven Words You Can’t Say On Television:

SHIT: 80 applications filed. My favorite: EAU SHIT for cologne.

PISS: Not a popular choice. Only 3 applications. Fave: PISSPERFECT for “artificial penises that release fluid.”

FUCK: 82 applications. I’m sorry to report that most of them are boring AF but I do rather like NAMASTE AS FUCK.

CUNT: Only 2 applications and both filed a full year after oral argument.

COCKSUCKER: 0. Zip. Nada. Zilch. I’m sure there are some missed branding opportunities here.

MOTHERFUCKER: Only 2, but you gotta love Y’ALL MOTHERFUCKERS NEED JESUS for clothing. The applicant has been using the trademark since 2011. A real groundbreaker.

TITS: Only 8 applications, including CHECK YOUR TITS AND PITS for “charitable projects . . . to promote breast cancer detection.”

I also checked on filings of applications containing disparaging words. There were only a handful. Several were filed by Snowflake Enterprises, LLC with an address on King Street in Alexandria, VA, just a short walk from the Trademark Office. Cool.

 

Big shoutout to Cody B., who asked me a question that led to this post. What do you want to know about?

 

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Can I Use This Logo?

I’ve written a ton of blogs on how to figure out whether a word is available for use as a trademark, but how do you know if a logo is safe to use?

Each registered trademark that includes a logo has a description of the logo as part of the registration. For example, here’s the description of Happy Bee that Beeline uses:

Bee only.pngThe mark consists of a stylized side view of a bee comprised of: a semi-circle outlined in grey, filled with a gradient of color ranging from orange to yellow with three vertical grey lines depicting stripes and a grey circle depicting the eye; emerging from the semi-circle are two curved grey lines depicting the antennae and a small grey triangle depicting the stinger; and above the semicircle are two overlaid blue stylized wings.

Yup. I actually get paid to write stuff like that.

Every registered trademark with a logo also has design codes assigned to it by the Trademark Office. Here are the design codes for Happy Bee:

03.23.06 – Bees; Hornets; Wasp; Yellowjackets
26.01.06 – Circles, semi; Semi-circles
26.17.01 – Bands, straight; Bars, straight; Lines, straight; Straight lines, bands or bars
26.17.04 – Bands, vertical; Bars, vertical; Lines, vertical; Vertical lines, bands or bars

The process for searching for “confusingly similar” logos is something like this:

  • Search for key words in logo descriptions.
  • Search for relevant codes in design codes.
  • Look at the actual pictures that the search brings up.
  • Apply judgment using the DuPont factors. Two logos might use similar words to describe them and yet be totally distinctive.

Twitter bird.pngBird in flight.png

Each of these trademarks uses the phrase “bird in flight” in the description, but they are not similar in appearance.

 

Can you guess these incredibly famous trademarks from their descriptions? Scroll down for answers.

  • The mark consists of a circular seal with the design of a siren (a two-tailed mermaid) wearing a crown.
  • The mark consists of a red circle and a yellow circle that interlock to create the color orange.
  • The mark consists of lower case letter “B” in a circle.

Next you’ll want to know how to check the availability of a sound mark. Yikes!

 

Big shout out to Ava, for suggesting this topic! What do you want to know about?

 

 

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The three trademarks described are:

  • The Starbucks® siren.
  • The Mastercard® logo.
  • Beats® headphones logo.

A World Without Trademarks

We almost never personally know the person who makes the things we buy and, yet, we blithely go into the world and buy stuff.

That would be insanely more difficult without trademarks.

Imagine a trip to the grocery store where the packages identify the contents with generic names but nothing else.

You liked the IPA you bought last week. Is the bottle that says “IPA” from the same brewery? That TP was soft and yet strong. I wonder if this package labeled “toilet paper” is the same stuff?

Maybe you fall back on knowing the grocer personally and that she stocks stuff only from reputable suppliers, but last week you bought three cans of tomato soup. They were all good, but one was creamier, just the way you like it. Here you are facing a shelf of cans marked “tomato soup.” Which have the soup you like?

It’s hard enough to imagine traditional commerce existing without trademarks, but how would e-commerce ever work? What good is a product review without branding? How much confidence would you have in the goods you’d receive from Amazon® or PeaPod® without being able to order by brand?

We sort of know how it would be. Not many people are comfortable ordering produce online because the brand doesn’t really tell you whether the item is overripe or has been mishandled.

Now imagine that every purchase was as involved as finding that perfect peach.

Trademarks are awesome.

 

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Insomnia Cookies® and Momspit®

Some companies just nail the trademark choice.

They hit that sweet spot between coming right out and saying what they are (think Pizza Hut®) and having a trademark that tells you nothing at all (think Starbucks®).

In the trademark world, that sweet spot is called a “suggestive” trademark.

Suggestive trademarks are unlike any other kind of trademark. They “require imagination, thought, or perception . . ..” unlike a descriptive trademark “which immediately tells something about the goods or services.”*

Here are some of my favorite suggestive trademarks:

  • Insomnia Cookies®
  • Momspit™
  • Soylent®
  • Nest®
  • Roomba®
  • Smartmouth®

Each one gives you just a faint idea of what it is and what it stands for. Each pops up in the corner of the customer’s eye and reels her in. Great suggestive marks contain some or all of these elements:

  • Incongruity – The trademark contrasts with the product or service in some way.
  • Humor – The trademark makes you laugh because of the incongruity or surprising connotation.
  • Stickiness – The incongruity, humor, or another element of the trademark makes the trademark easy to remember and distinguishes it from the trademarks of competitors.
  • Relatability – The trademark reaches your memories or feelings in a direct way.
  • Imagination or mental pause – There may be a moment between hearing or seeing the trademark and fully grasping all of the connotations and hidden meanings.

It’s crazy hard to think up a suggestive trademark, but it’s worth its weight in gold.

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*Trademark Manual of Examination Procedure Section 1209.01(a)

Color Me Jealous

We’ve looked at the strength of color as a trademark. Recently, a federal court had a chance to decide a case that’s all about color. Before we get into it, let’s try a quick test:
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Which airline flies this plane?

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Which company made this piece of equipment?

Scotch.png

 

What brand of tape is this?

 

If you thought the middle one was made by John Deere, you aren’t alone. Seventy-four percent of respondents can identify John Deere farm equipment just by the colors.

What does it take to have that strong of a color mark? Here’s what the court talked about:

Protect your trademark: “Between the late 1980s and today, Deere sent communications to [40] companies requesting that they cease using the green and yellow color combination.”[1]

Use your trademark for a really long time: “For more than 100 years, Deere has sold a wide variety of . . . equipment” using those colors.[2]

Spend a fortune on advertising: “In 2016, Deere spent roughly $80 million on advertising its agricultural equipment . . ..”[3]

Dig up the dirt on your competitor: “FIMCO chose its green and yellow color scheme to associate with Deere’s famous green and yellow tractors.” [4] “If a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity.”[5]

We’ve seen how important it is to pick a mark that has the potential to be strong. Now we know what it takes to build that muscle: Time, money, effort.

 

 

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[1] Deere & Company v. FIMCO Inc., d/b/a/ Schaben Industries, USDC Western Dist of Kentucky, Case No. 5:15-CV-105-TBR, at page 67.

[2] Deere v. FIMCO Inc., at page 4.

[3] Deere v. FIMCO Inc., at pages 10.

[4] Deere v. FIMCO Inc., at page 98.

[5] Deere v. FIMCO Inc., at page 84.

 

Photo of Southwest® Airlines plane ©2014 Tomàs Del Coro licensed under Creative Commons Attribution-ShareAlike 2.0, with modifications by Beeline.

Grow or Go to Zero

What business doesn’t want its assets to grow over time?

The choice you make at the start can have a huge impact on whether the value of your trademark will grow or wither.

Chart

If you start with a wonderful trademark like Nest®, Staples®, Google® or Moo®, the sky is the limit for trademark value. Whether the mark actually attains that value depends on lots of things, but at least there’s nothing about the trademark itself that will hold you back.

If you start with a trademark that:

  • Consists of words that everyone and her brother are using, like Office Depot® or United®; or
  • Merely describes what you sell, like Radio Shack® or Century Theatres®; or
  • Is already owned by someone else;

then you’re starting with two strikes against you. Your trademark will be at best neutral and at worst a liability.

Coming up with a clever trademark is hard. Coming up with a trademark that is clever and that no one else is using is even harder but, isn’t it worth it so you don’t have to worry about its holding you back? Isn’t it worth the effort and the cost to get this one thing right at the beginning?

 

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Three Stripes, You’re Out

There’s a brand that’s going after the owners of each of these trademarks for infringement against its famous logo. Can you guess what these trademarks are all allegedly infringing?

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No? You can’t figure out who’s going after Futbol Club Barcelona’s jersey stripes, Huck Faters’s stylized bird-flipping, Turner Sports’ stylized “E”, God is Limitless’s . . . whatever that is, and Tesla’s stylized “3”?

Here’s a hint:  They make clothing and shoes, but are best known for their shoes.

Still not sure?

Scroll on down for the answer.

 

 

It’s Adidas®, THE BRAND WITH THE THREE STRIPES® .

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Were you confused into thinking that Turner Sports was connected to Adidas?

Did it seem to you that Tesla had adopted the three horizontal lines to capitalize on Adidas’s fame?

I’m all for going after infringers. I completely understand the need to protect a trademark or risk losing it, but I think it’s possible to go too far.

What’s next? Suing Calphalon® if they use a picture of a frying pan with three strips of bacon? Forcing the U.S. Navy to change the insignia on a seaman’s uniform? Going after Verizon® when it provides good, but not great, cell phone coverage?

Sigh.

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Sextuple Burger?

Smashburger® recently started calling one of its hamburgers the TRIPLE DOUBLE.

In-N-Out Burger® and its DOUBLE DOUBLE® burger and TRIPLE TRIPLE® burger have a problem with that.

Waddaya think? Should Smashburger get to keep using TRIPLE DOUBLE?

Hold that thought while I add some more facts.

In-N-Out started using TRIPLE TRIPLE in 1966 (and registered it in 1990). It’s been using DOUBLE DOUBLE since 1963 (and registered it in 1973).

Knowing that its use goes back to before most of us were born probably makes In-N-Out’s case stronger in your mind. Why is that?

Long-time readers will remember that infringement boils down to whether or not the use of the trademark is likely to cause confusion among consumers. How does longevity make confusion more likely?

If a trademark has been in use for a very long time, it comes more easily to mind among more people. You don’t have to stop and think: “Hmm. Where have I heard something like that before?” Instead, you think: “Woah! Doesn’t In-N-Out have a burger called DOUBLE DOUBLE?”

The longevity also makes it seem like Smashburger (a relative newcomer to the burger biz) is using TRIPLE DOUBLE as a way to get people thinking about In-N-Out, rather than as just a catchy burger name they came up with out of the blue. That piggy-backing on someone else’s fame is a big no-no in the world of trademarks.

If you were advising Smashburger, would you tell them to fight or change the burger name?

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