Meatballs and Worms

Logos are like pets. Their owners give them cute little names or, sometimes, when their owners don’t bother, other people give them not-so-cute names.

NASA_Worm_logo.svgNASA stopped using the “worm” . . .

Meatball

 

 

. . . and started using the “meatball.”

 

BMW Roundel

 

BMW® calls the symbol on its hood, the “roundel”, which is pretty boring, because it’s a . . . roundel.

 

 

pixar

 

 

This little guy from Pixar® is called “Luxo, Jr.” Luxo® is a registered trademark for lamps owned by Glamox AS.

 

 

standing-eagle

The United States Postal Service® went from using the “standing”eagle to the “sonic” eagle in 1993.sonic-eagle

 

 

 

The “Diving Girl” has been used on Jantzen® swimwear since 1920.diving-girl

Chevy Bowtie

 

Chevrolet® refers to its logo as the “bowtie.”

Amtrak pointless arrow

 

Then there’s the hilariously named Amtrak® “pointless arrow.”

Beeline®_fullcolor

 

And what roundup would be complete without a visit from the Beeline® “happy bee”?

 

 

 

 

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The Right to Poke Fun

My Other Bag prints sketched images of iconic handbags onto canvas totes. The bags are brilliant, funny, and flattering.

Louis Vuitton sued My Other Bag for trademark infringement.[1] The courts ruled for My Other Bag.[2]

It’s incredibly hard to properly parody a trademark. For the joke to work, the image of the trademark being parodied has to be recognizable. But, if it’s too convincing, you’re infringing. As the Court of Appeals said, My Other Bag managed to convey “two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.”[3]

A few years ago, Louis Vuitton sued Warner Brothers over a joke in a movie. The Hangover: Part II included a scene where a character was established as an uncool wannabe by showing him carrying a knockoff of a Louis Vuitton bag. Louis Vuitton lost that case, too.

If you own a famous trademark, it’s important to protect your rights, but it’s equally important to have a sense of humor so you can tell the difference between infringement and permissible parody.

In both the Warner Brothers and the My Other Bag cases, the viewer had to acknowledge that Louis Vuitton was a highly desirable, iconic, luxury brand and that the thing she was looking at wasn’t an actual Louis Vuitton. That’s the key to the distinction.

If Louis Vuitton had a sense of humor, it could avoid looking like a bully and get free favorable publicity. Sounds like a good outcome for everyone to me.

 

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[1] The suit also included a claim for copyright infringement. I’m not going to discuss that here, except to say that it was shot down by the court, too.

[2] The United States District Court for the Southern District of New York (Jesse M. Furman, Judge) granted My Other Bag a summary judgment on all claims on January 8, 2016. The United States Court of Appeals for the Second Circuit affirmed the judgment as to all claims on December 22, 2016.

[3] Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989)).

Photo copyright My Other Bag. Used with permission.

Mr. Tam Goes to Washington

Yesterday I was privileged and awed to attend oral argument in Simon Tam’s quest to register the trademark for his band, The Slants. Listening to great minds debate the First Amendment is powerful and inspiring in the way that few things are.

I arrived at 6:00 a.m. and was #2 in the line for attorneys admitted to the U.S. Supreme Court bar. Within minutes we were joined by three more attorneys who, unsurprisingly, were the attorneys for the Redskins.

Oral argument was spirited, probing, and intense. Justice Kagan asked Assistant Solicitor General Malcolm L. Stewart to explain why the statute prohibiting The Slants from getting a registration is not just flat out impermissible viewpoint discrimination. Justice Breyer pressed Mr. Stewart relentlessly to explain how the purpose of the trademark law is advanced by prohibiting registration of disparaging trademarks. Justice Ginsburg was troubled that the Trademark Office appeared to be so arbitrary, letting some disparaging trademarks to be registered, while denying others.

When Mr. Tam’s attorney took his turn, the Justices probed the upper limits of what should be granted a registration.

We can’t know how the Court will rule based the questions that were asked and how the argument went, but we can take heart that our rights and freedoms are a matter of utmost importance to the Court. If I were on the bench, I would strike down the “disparaging” clause as unconstitutional.

How would you rule?

First Amendment v. Trademark

Simon Tam named his band The Slants “to make a statement about racial and cultural issues”[1]. Now he’s the front man for the First Amendment before the United States Supreme Court with his first gig on January 18.

How’d that happen?

Mr. Tam’s application to register his trademark was rejected because it “consists [of] matter which may disparage” people.[2] That particular section of the Lanham Act doesn’t come up very often. Its most famous use to date was to de-register the Redskins trademarks.

Now Mr. Tam is fighting the Trademark Office and this law.

The First Amendment prohibits the government from regulating speech because of its content or the message conveyed. This isn’t like the government saying you can’t have a march because there’s already another group having a march in the same place that day. This is the government saying you can’t have a march because some people don’t like what you’re marching about.

That’s the very essence of the First Amendment. The government can’t stop us from speaking because it doesn’t like what we’re saying.

The courts recognize that invalidating the disparagement clause “may lead to wider registration of marks that offend vulnerable communities.” If the Supreme Court rules for Mr. Tam, the Redskins will also be allowed to register.

But, there’s no need to protect popular or harmless speech. It’s speech on the edge that needs protection “to ensure that we do not stifle public debate.”[3]

That’s why the “First Amendment [should protect] Mr. Tam’s speech . . ..”[4]

 

 

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Photo of Supreme Court building used under Creative Commons license: CC-BY-SA-3.0/Matt H. Wade.

[1] In re Simon Shiao Tam, at page 4

[2] 15 USC 1052, subsection (a), also know as Section 2(a) of the Lanham Act.

[3] Snyder v. Phelps, 562 U.S. 443, 461 (2011)

[4] In re Simon Shiao Tam, at page 50

(N0) Hidden Meaning

Getting your message across in a logo can be like talking on a cell phone with bad reception. It may end up a little garbled or your audience may not hear you at all.

The Procter & Gamble® logo featured above was used for 60 years before being scrapped in 1995. For most of the time it was used, it was the subject of a ridiculous urban legend about P&G’s supposed ties to the devil. Probably not the message P&G was going for.

Here’s one that tends to get through. What do you think of when you see the vertical lines in the Cisco® logo?

Cisco

It’s a stylized Golden Gate bridge, a call out to the city that gave the company its name.

Here’s one that often isn’t noticed at all. Can you spot it?

FedEx

Did you see the arrow in the negative space between the “E” and “X”? It’s cool when it gets across.

How about the message in the Amazon® logo?

Amazon smile

The curved line is both: a smile with a dimple; and a callout to the A to Z guarantee when you buy on Amazon.

Some logos are meant to playfully mislead. For example, this mark, where Hooters® is pretending that no one is thinking about breasts:

Hooters

It’s great to include a hidden or overt message in your logo as long as you can avoid an unintended negative interpretation. What hidden messages have you seen in logos lately?

 

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Trademark is NOT a Verb

“We trademarked that phrase.”

“I really want to trademark this word.”

I’ve almost stopped worrying about this jarringly wrong usage.

Almost.

But I can’t let it go, because it’s more than grammar.

You can say: “I want to patent this invention” because the U.S. government will actually create rights where none existed and then grant those rights to you. “Patent” as a verb means to obtain a patent for an invention.

But you can not say: “I want to trademark this word” because the U.S. government can only acknowledge rights you already have. You can say: “I want to register this trademark.”

How much does it matter? Remember Doug Lehocky, the dude who spent about $50,000 to file more than 150 applications to register things like APPLE.COM and MICHAEL JACKSON?It’s clear that Mr. Lehocky thinks the Trademark Office is like the Patent Office: You ask them to give you exclusive rights to a trademark and they conjure those rights out of air and award them to you.

But that’s not how it works. An understanding of this distinction would have saved Mr. Lehocky $50k.

To register a trademark, you first create your own rights by using the trademark to sell stuff. Then you ask the Trademark Office to check out what you’ve done. If the Trademark Office agrees you’ve created those rights, then it will register the rights so it’s easier for you to enforce them.

So don’t use “trademark” as a verb. OK?

I’ll shut up now.

 

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Working Title

Can the title of a movie be a trademark? What about a book or play title?

“The title of a single creative work is not registrable”,* says the Trademark Office.

Copyright is what protects the content of things like books, movies and plays. If you don’t want someone printing off copies of your book or selling bootleg copies of your movie, you’ll be using copyright, not trademark rights, as the basis of your claim.

So does that mean you can start selling Harry Potter® T-shirts?

See that little ®? You know that means you can’t do it. Because like everything in the law, it’s more complicated than it seems.

First, you can have trademark rights for the name of a series of books (or a series of movies or a TV series).  HERE’S LUCY® was registered in 1969. SESAME STREET® was registered in 1973. STAR WARS® was registered in 1979.

Second, you can certainly have trademark rights for all the promotional items that are sold in connection with your book, movie, play, or TV show. There are US trademark registrations for marks containing HARRY POTTER® in fourteen different classes for everything from balloons to dried fruit. So, don’t even think about selling that Breaking Bad chemistry set.

If you’re an author or a film maker, you’ll mostly rely on copyright to protect your work, but you should also consider registering a trademark if you plan to have a series or do merchandising.

 

*Trademark Manual of Examining Procedure, Section 1202.08.

 

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What’s in a Font

Should a trademark registration be in a particular font? Usually, you should register a trademark in no particular font because it provides broader rights and will live on even if you change the font later, but some fonts are so tightly tied to a trademark that a registration in a particular font makes sense.

The question you should ask yourself is this: If a competitor chooses a different word in your same font, could your customers be confused?

What do I mean by that?

CocaCola® regularly goes after and shuts down people who try to sell these shirts because just the font is enough to make people think about CocaCola.

Cocaine

Here’s another example: What if I were to open a housewares store with this as my trademark?

Crate&Barrel

Helvetica is so closely tied to Crate&Barrel, that it looks like this brand was created just to confuse people.

Axio®, the company who came up with my word mark and logo, actually created their own font.* Here’s their lovely trademark:

Axio

They would rightly be upset if someone else started using this for a different design firm:

AKIC

So, if the font you use is that strong and that important to your branding you might want to consider registering the trademark in a particular font.

 

*Axio created an entire alphabet for the font used in their trademark. The font itself can be protected by registering the copyright. That won’t protect the brand, but it will protect them from having other people use the font without a license.

 

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Buildings, Bottles and Pockets

Trade dress can be a trademark and can be registered.

How nice. What the hell is trade dress?

Trade dress is the visual appearance of a product or its packaging that’s not functional.

Great. Clear as my aunt’s cataracts.

Let’s try some examples.

A non-functional aspect of a building can be trade dress. You can’t register the fact that your building has a roof, because buildings need to have roofs, but the blue roof of an IHOP® or the orange roof of Howard Johnson’s® can be (and are) trademarks because roofs don’t have to be a color.

Apple Store

 

My favorite “building marks” are the glass cube Apple® Store and Al Johnson’s Swedish Restaurant and Butik® that registered “goats on a roof of grass.”

 

 

Did you say “goats on a roof of grass”?

Yes. Yes, I did.

Goats on roof

Urban Outfitter door

 

There’s also the door of seemingly broken glass used by Urban Outfitters® in some locations.

What else can be trade dress besides buildings?

Hendricks

The shape of a bottle has been and continues to be important for both beverages and perfumes. Excellent examples are the shape of a Coke® bottle, the shape of a Hendricks® gin bottle, and the iconic shape of the bottle for Chanel No. 5®.

Levi pocket

 

Pockets on pants are functional, so you can’t have trademark rights in pockets, but you can register the shape of pockets, the stitching, and the placement of the label with the pocket. Here’s Levi’s® registered trademark.

Trade dress. Cool stuff, huh?

 

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Sticky Color

Color. It’s amazing how much a trademark can rely on color. Sometimes, all you have to do is see a color and, without any words, or a logo, you already know what company it came from.
National Geographic

It’s just a rectangle in a certain saturated shade of yellow. And, yet, for most people, it screams National Geographic.

IMG_1531

 

Does anyone have any question about where this box came from? When someone’s carrying a small shopping bag in this color, do you have any doubt about what’s in the bag?

UPS

 

You know whose truck this is just by the color, without seeing the writing on the side. You’d even know one of their drivers by the color of her uniform.

 

VS

 

You know what store this is, even though I covered over the words on the awning.

 

UNIQLO

 

This sign is sometimes in katakana, but that doesn’t stop you from knowing which store it is just by the red square and the white lettering.

 

 

Straw

 

You know where I bought my iced tea without seeing the label on the cup, just because of the color of the straw.

 

Louboutin

 

Red soles on a pair of shoes. You know these were made by Louboutin.

 

There are lots more out there. That certain red of CocaCola. FedEx purple. The very particular shade of blue used on Southwest Airlines planes.

The next time you’re walking down the street, real or virtual, pay attention to how much brilliant brand identity is conveyed just with color and nothing more.

 

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