Copycat?

CEC logo

In December 2019, Canadian Energy Center rolled out its new logo across its social media accounts.

Progress Software logo

The Twitterverse was quick to point out that the new logo was identical to the logo used by Progress Software Corporation, except for the change in color.

CEC “alternate logo”

Bowed but unbroken, Canadian Energy Center quickly pivoted and started using what a CEC spokesperson referred to as “an alternate logo.”

ATK logo

It didn’t take long for ATK Technologies to point out that CEC’s new logo was suspiciously like ATK’s logo.

Leaving aside whether the logos selected by CEC are infringing, how did this happen? Was it a coincidence? Did the agency who prepared the first logo actually copy the Progress logo? Was whoever created the second logo also a copycat?

It’s hard to know whether these are cases of blatant copying. Creatives who work on logos tend to notice logos. They may not consciously realize they’re copying something they once saw in passing.

That’s why it’s up to the client to check on what’s out there before launch. Even if you’re not infringing, it’s embarrassing to screw this up. Screwing it up twice looks like you have no idea what you’re doing.

Shout out to Liz B. for sending me the information that led to this post.

An OK Way to Use Someone Else’s Trademark

Q: My bakery sells cakes with crushed NILLA® wafers mixed into the icing. We call it the “The Nilla Nihilation.” Is that okay?

A: Nope. You can’t use someone else’s trademark like that without their permission.

Q: Then how do we tell people what’s in it?

A: You can use NILLA in the description of the cake, like this: “A vanilla lover’s dream. Moist yellow cake, richly coated with buttermilk icing mixed with crushed Nilla® wafer cookies.”

Q: What’s the difference? I’m still using NILLA. Why can’t I put it in the name of the cake?

A: Describing your cake as containing Nilla® wafer cookies isn’t using NILLA as a trademark. It’s just naming an ingredient. It’s a subtle but very real legal difference.

Q: Okay. Anything else I should know?

A: It’d be a good idea to include this in the fine print: “Nilla® is a registered trademark owned by Intercontinental Great Brands LLC.”

Q: NILLA wafers contain high fructose corn syrup, which, yuck! We found vanilla wafer cookies that don’t use corn syrup. We’re gonna use those instead.

A: Then the description of the cake can NOT include NILLA. Remember Ben & Jerry’s® Coffee Heath® Bar Crunch ice cream? That’s now called Coffee Toffee Bar Crunch because Ben & Jerry’s stopped using Heath® bars.

Q: I can’t believe Nabisco would even care.

A: They will. Many companies have licensing deals with other brands and the trademark owner has to make sure other people aren’t using the trademarks without a license.

Shout out to Ginny J. for asking questions that led to this blog post.

Trademark Bullies Strike Again

Some trademark owners are bullies:

Other trademark owners are legitimately aggressive in protecting their rights:

Here are some of the logos Apple, Inc. has gone after in one 12-month period.

What do you think? Is Apple, Inc. a bully or legitimately protecting its rights?

To answer that question, we should start with a comparison of the marks themselves and then compare the goods and services sold under the marks we’re comparing.

Here’s Apple Inc.’s logo. Would someone looking at the logos pictured above think of Apple, Inc.?

Here are the goods and services sold under the logos pictured. Which of these are similar to the goods and services sold by Apple, Inc.?

  • Meal planning app
  • Sales of computers and phones
  • Weight loss consulting services
  • Case management services to people with disabilities
  • Test preparation services
  • Sex coaching services
  • Online grocery store services
  • Speech-language pathology services
  • Occupational therapy services
  • Health counseling
  • Psychological counseling
  • Primary and secondary school education

Trademark owners should protect their rights but always with an eye toward whether there’s a genuine likelihood of confusion. So waddaya think, bully or not?

Thank you to Murray L. for the suggestion that led to this post.

Ode to the Solo® Cup

The SOLO® cup. That ubiquitous beaker of beer. Round at the top, square at the bottom. Often dispensed and always indispensable.

1953. That’s the year Solo Cup Operating Corporation first used SOLO® for “disposable plastic and paper drink cups”. But that simple description of goods on a trademark registration can’t begin to plumb the depths where SOLO® resides in our collective consciousness. That place is deeper than the red of the SOLO® outside and more pure than the white of its inside.

Solo Cup’s residency in the zeitgeist of beverages doesn’t end there.

Solo Cup’s TRAVELER® lid is so iconic that it was added to the permanent collection for design at MoMA® in New York City.

Solo Cup bought SWEETHEART® brand paper cups in 2004. That trademark was first used in 1940 and, for me, recalls childhood trips to the dentist.

The WE ARE HAPPY TO SERVE YOU® coffee cup is yet another Sweetheart product acquired by Solo Cup. It dates to 1960 yet still manages to evoke thoughts of ancient Greece.

Have you noticed the outline of a SOLO cup contained in the second “O” of the SOLO logo? What diabolical genius hid that in plain sight so many years ago?

A trademark of beauty is a joy for ever.

Candy Candy Candy!

If you’re a candy fan, there’s probably lots of candy brands you can identify just by looking at the candy itself. In other words, a chocolate bar or a piece of candy can be a trademark.

Ritter Sport® has been using this shape for its chocolate bars since the 1930s. It’s been fighting to keep the exclusive rights to the shape in its home in Germany but, so far, its registration in the U.S. is holding steady.

Hershey’s® has been using this shape for its chocolate bars since 1968 but . . .

. . . the even more famous shape of a Hershey’s Kiss® dates back to 1907 and has been registered since 1924.

In 2006, Nestlé® tried to register a trademark for the shape and look of these candies. The U.S. Trademark Office refused Nestlé’s application because the proposed mark was confusing similar to Hershey’s registered trademark. Duh.

James’® and Fralingers® have been battling over the rights to claims about originality of salt water taffy and its shape for over a century. Fralingers started calling itself the “original” salt water taffy in 1894. James’ couldn’t call itself the “original” so it started using CUT TO FIT THE MOUTH to describe the shape of its taffy in 1910.

And, of course, Just Born® has been using this shape for its Peeps® since 1958.

Can you think of any other candy or food product with this kind of trademark?

Shout out to Rebecca W. for the suggestion that led to this blog post.

Cease and Desist

There’s nothing good about getting a letter demanding that you stop infringing on someone else’s trademark. Threats of litigation loom. Thoughts of lost time and money dominate.

Ugh.

It’s bad, but it may not be as bad as it seems.

Houston, we have a problem.

If you really are infringing on the rights of another trademark owner, you’re going to have to rebrand. That’s pretty awful news but you can usually negotiate for a period of time to make the transition from your current trademark to the new trademark. It’s going to cost you money and lost good will, but there are ways to mitigate that.

Just a skosh.

Sometimes you can make your trademark non-infringing without having to completely rebrand. The other owner may agree to allow you to continue using parts of your trademark or to change just your logo or font.

So’s your mom

Sometimes the cease and desist letter is flat out wrong. The letter writer doesn’t know all the facts or screws up the legal analysis. Lots of lawyers don’t know that much about trademark law but that doesn’t stop them from shooting off nastygrams. They’re counting on your being so scared that you agree to whatever they ask. If that happens, you need to convince them to leave you alone by setting out the true facts and making the correct legal analysis.

None of these are as good as never getting a cease and desist letter but all are way better than a lawsuit.

 

 

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Taglines

Taglines are the Swiss Army® knife of the trademark world: They do it all.

Using a suggestive trademark like NEST®, an arbitrary trademark like MOO®, or a fanciful trademark like PENTIUM® is great but how are people supposed to know what you’re selling? A tagline can jump in and tell people exactly what you do with a bit of flare:

  • The Uncola
  • The milk chocolate melts in your mouth – not in your hands.®
  • Save money. Live better.®

The one or two words of your principle trademark can’t always capture what sets your product or service apart from the competition. A tagline can drive home a critical differentiator:

  • When it absolutely positively needs to be there overnight.®
  • Nothing runs like a Deere.®
  • Where’s the beef? ®
  • We try harder. ®

A tagline can create a different emotional feel that goes beyond your principle trademark:

  • Reach out and touch someone®
  • Think Different®
  • Open happiness®
  • The happiest place on earth.®

A tagline can be catchy in a way that your primary trademark might not be:

  • The Quicker Picker Upper®
  • M’m! M’m! Good!®
  • Just Do It®

A tagline can change over time to suit new situations and new times while the brand stays the same:

  • Look for the golden arches.
  • TWOALLBEEFPATTIESSPECIALSAUCELETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN®
  • You deserve a break today.®
  • I’m lovin’ it!®

What are some of your favorite taglines?

Thanks to Julie W. for the suggestion that led to this post.

Social Media Handles

Chillax Acres was having a problem. Some of its residents had established a Facebook page and were using it to complain about everything from trash collection to HOA fees. Chillax Acres wanted to know if it could use trademark rights to force Facebook to give it control of the page.

The answers to these questions will determine whether Chillax Acres is likely to get help from a social media company.

  • Does Chillax Acres have common law trademark rights only or does it also have a trademark registration?
  • Does the handle or username sound like it’s “official”?
  • Is there a legitimate reason for the current owner to use the username or handle?

Registered Trademarks Only

Many social media companies require a registered trademark before they’ll consider any action.[1]

Twitter®Complaint form doesn’t ask for a trademark registration number.
Facebook® Instagram®Complaint form requires trademark registration number.
LinkedIn®Complaint form asks for registration number.
YouTube®Complaint form asks for registration number.

Chillax Acres Sucks

Social media companies won’t turn over a username or handle when it’s clear that it’s not “official.” For example, no one thinks the Twitter handle @cillaxacresssucks is the official Twitter account for Chillax Acres.[2]

Legitimate Reason

Social media companies won’t turn over a handle or username if the current owner has a legitimate reason to own it. For example, @united belongs to United Airlines® and there’s nothing that United Van Lines® or Manchester United® can do about it.

Bottom Line

If you didn’t snatch up the social media handles for your trademark AND you didn’t get a trademark registration, you’re probably out of luck.


Featured image ©2016 Redi-Rock International used under Attribution 2.0 Generic (CC BY 2.0). Image was modified for use.


[1] The information in the table is as of June 2020. In my experience social media companies require that the trademark registration date (or at least the application filing date) come before the date when the username or handle was assigned, so once you have a problem, it’s probably too late to register.

[2] The best-known “sucks” case was a World Intellectual Property Organization decision in Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, case number D2000-0477. WalMart® was trying to get control of the domain name Walmartsucks.com using the Uniform Domain Name Dispute Resolution Policy that was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). The panel that decided the case ruled in favor of WalMart because the person who had bought walmarksucks.com wasn’t using it for griping. He was using it as a way to get money out of WalMart.

“The Panel stresses that this decision does not address legitimate freedom of expression sites established by parties critical of trademark holders. The Panel is aware that there are numerous websites identified by “-sucks” formative domain names, including “walmartsucks.com”. The Panel anticipates that Respondent (and others) may choose to characterize this decision as seeking to stifle freedom of expression on the Internet by ordering the transfer of “-sucks” formative names. Certain trademark holders might choose to characterize this decision as supporting action against “-sucks” formative domain names in other contexts. The Panel intends this decision to serve neither of these aims. This decision is directed to a blatant case of abuse of the domain name registration process – no more, no less.”

Colors AS Trademarks

Most companies have a palette as part of their branding.

  • The shocking pink of the Barbie® aisle at the toy store.
  • The purple and orange of a FedEx® package.
  • The red and white of a can of Campbell’s® soup.
  • The blue of the Twitter® bird.

Some companies go farther and claim color AS their trademark rather than as a feature of their trademark. How is that different? Let’s looks at an example:

The description of the trademark for the registration for the Twitter® bird reads like this:

“The mark consists of a silhouette of a bird in flight in the color blue.”

The description of the trademark for the registration for Tiffany® blue reads like this:

“The mark consists of a shade of blue that is used on product packaging in the form of jewelry pouches with drawstrings.”

See the difference? The Twitter® trademark consists of the bird that happens to be blue. The Tiffany trademark consists of a shade of blue that happens to appear on product packaging.

It’s subtle, but for a trademark attorney, it’s a pretty big difference. Someone using the same blue as the Twitter bird is much less likely to be infringing than someone using Tiffany blue.

There are more color marks than you think. Here’s a sampling. See if you can identify the companies that own each of these color marks. Answers are below.

The mark consists of the color chocolate brown, which is the approximate equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms.

Hint: Delivery services

The mark consists of an orange-colored background covering the entirety of the packaging for the goods. The orange color is approximately equivalent to pantone 165C. The mark consists of color alone.

Hint: Candy

The mark consists of the color canary yellow used over the entire surface of the goods.

Hint: Stationary notes

The mark consists of the color pink as applied to the entirety of the goods.

Hint: Building insulation

The mark consists of the color combination green and yellow in which green is applied to an exterior surface of the machine and a yellow stripe is applied to a portion of the exterior surface.

Hint: Riding mowers

Thanks to Sarah C. for the suggestion that led to this blog post.


A Tale of Two Trademarks

In 2013, Randy Goldberg and David Heath started a company to sell socks. In 2019, they added other items of apparel to their lineup.

In 2017, Shopify launched an app that allows you to track all your package deliveries. In 2020, they added the ability to use the app to shop from your favorite stores.

Two stories of companies growing and changing, much the same, except for one detail:

  • Randy and David chose the brand BOMBAS for their socks allowing them to easily leverage the brand to cover their new products.[1]
  • Shopify used ARRIVAL for the app they launched in 2017. The descriptiveness of ARRIVAL meant that Shopify had to change the name of the app when they added new features.

Even worse, Shopify didn’t learn its lesson: They named the new app SHOP, which is the worst trademark I’ve heard so far this year because it both downplays the feature that 16 million users are already using while also limiting the new features they can add without having to re-rebrand.

 

Big shout out to Julie and Cassandra for the tips that led to this post.

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[1] I would still think the BOMBAS branding is still brilliant even if they didn’t have a bee as part of their logo.