The iconic Chuck Taylor sneaker was involved in a recent case that has the attention of trademark watchers. The bone of contention was the familiar look of the Chuck Taylor sneaker worn by generations of American kids (and adults), and whether shoes imported by Skechers and others were infringing. The case originated before the International Trade Commission, where a trademark owner can potentially shut down imports of infringing goods before they hit the U.S. market. The recent decision was by the U.S. Court of Appeals for the Federal Circuit and can be found here.
The drawing below shows what Converse claims as the trademark (the mark is shown in solid lines; the dotted lines are parts of the sneaker that are not claimed as part of the mark):
The mark is not a word or a symbol; instead, Converse claimed a trademark consisting of a product configuration. In other words, the claim is that there are aspects of the look of the product that allow consumers to identify it as Converse’s Chuck Taylor sneakers, so that when they see those things on a shoe, they recognize it as a Converse shoe even without seeing the star logo or the word “Converse.” Specifically, Converse claimed that the two stripes on the shoe’s midsole, plus the toe cap, plus the “toe bumper” with a diamond-and-line pattern, all arranged in a certain way, were the trademark. Converse got that mark registered in 2013, and claimed rights based on the registration along with “common law” rights (meaning rights that existed without the registration).
It’s hard to show that a product configuration is a trademark. A word mark or a logo may often be considered “distinctive,” and therefore entitled to protection as a trademark, from the time it starts being used. A product configuration is never distinctive from the beginning; it can only become distinctive by being recognized by the public as a trademark. In trademark language, that is called “secondary meaning” – something that would not ordinarily be a trademark has acquired trademark significance because the public has learned that it indicates a particular product or producer.
It’s particularly hard to show that a product configuration has secondary meaning because we’re not used to seeing the design of a product as a trademark. It usually takes a lot of time, along with exclusive use of the particular design and strong sales of the product, for the public to identify a product looking a certain way as coming from a particular source. Adding to the challenge is the fact that competitors are likely to produce knock-offs of a successful product – which they are normally entitled to do. Knock-offs make it harder for the public to identify the design as indicating a specific source because they muddle the association between the look and the source.
Converse thought that several manufacturers were importing infringing shoes into the U.S., so it filed a complaint with the ITC asserting its registration and its claimed common law rights, and asked for an order that those products be excluded from the U.S. market. Some of the importers argued that Converse’s claimed mark was not valid because consumers did not recognize shoes with the claimed features as being Chuck Taylors; that is, that those features did not have secondary meaning. And they had a survey to back them up. The ITC agreed that the mark lacked secondary meaning and therefore was invalid, but also found that if it was valid, the imports infringed.
Converse appealed, and while the appellate decision is of interest to trademark practitioners, it’s mostly pretty technical stuff for purposes of this blog.
The big lesson of the case – more of a reminder – is that when a dispute comes up, it’s useful to have registered your mark because your registration creates a presumption that the mark is valid. That makes it easier to prove your case against an infringer, including proving secondary meaning if your mark is a product configuration. Which is not easy. Part of the decision in the Converse case dealt with when the configuration had to have secondary meaning, and while it’s hard to prove that the look of your product has secondary meaning today, it’s even harder to prove that it had secondary meaning ten years ago. If the infringement began before the registration issued, the court held that Converse had to show that its product design had secondary meaning before the infringement began. On the other hand, if the infringement began after the registration issued, the accused infringer had to prove that the product design did not have secondary meaning when the registration issued. Burden of proof makes a difference, and could easily be the difference between winning and losing.
Another lesson (or reminder) is that if you can prove your case before the ITC, you can get an order to prevent importation of products that infringe your trademark. In the right situation, that can be a very helpful strategy.
Probably the most entertaining part of the opinion, though, was the appendix, which featured a gallery of historic basketball sneaker designs (relevant to exclusive use and secondary meaning). Here are some samples:
Compare those to the author’s Chuck Taylor sneaker:
Recently the Trademark Trial and Appeal Board (the “TTAB”) decided TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, Can. No. 92068042 (TTAB Dec. 7, 2018) using the expedited cancellation procedure that is the subject of a current pilot program at the TTAB. The rationale for exploring the expedited procedure is to protect the integrity of the US PTO register. In that sense, the expedited cancellation procedure is akin to the “streamlined cancellation proceeding” the TTAB explored a year or two ago (and which we discussed here). Consideration of the streamlined cancellation proceeding is on hold pending exploration of the pilot program for the expedited cancellation procedure.
Unlike the streamlined cancellation proceeding, the TTAB initiates the process for expedited cancellation procedure. To do this, the TTAB identifies cancellation cases that have not concluded in default and in which the only claims are abandonment and/or non-use. Once candidate cases are identified, TTAB board members participate in the parties’ discovery conference and encourage the parties to agree to use one of the TTAB’s accelerated case resolution (“ACR”) procedures.
The TTAB makes ACR procedures available to parties with cases pending before the TTAB who seek a final determination in their matter without the time and expense of a full trial. Parties are urged to discuss the option of ACR procedures during their settlement conference, though they may decide whether to use ACR procedures later, for example after some disclosures and discovery (though the further the parties proceed into discovery, the less time and resources they save through ACR). Key to an ACR proceeding is the parties’ stipulation that the TTAB may resolve any genuine issues of material fact in lieu of trial.
In TV Azteca, the parties agreed to exchange initial disclosures and forego formal discovery. In this case, Azteca sought to register MYST for use with entertainment services related to theater productions and variety television shows. Registration was refused because of Mr. Martin’s registration for the mark for use with live performances by a musical group. To remove the obstacle to registration of its mark, Azteca sought to cancel Mr. Martin’s registration alleging non-use of the mark for at least three years prior to the petition to cancel without intent to resume use.
In an effort to prove abandonment, Azteca focused on a flyer Mr. Martin included in his disclosures promoting a March 25 performance at Pennant East. Azteca produced numerous news articles discussing Pennant East’s closure and the fact Pennant East’s liquor licenses were not renewed to suggest the March 25 performance must have occurred more than three years prior to the petition filing date because the articles indicated Pennant East had closed by then and the liquor licenses had not been renewed. But the TTAB declined to admit the news articles into evidence because they are hearsay and did not fall within the residual hearsay exception. The TTAB declined to infer that Pennant East closed just because its liquor license had not been renewed. This left Azteca with no proof that Mr. Martin had discontinued use of his mark during the three year period preceding the filing date of the petition.
Although the TTAB expressed sympathy for Azteca’s predicament of having to prove a negative (non-use) and recognized that proper inferences may be necessary to enable a plaintiff to succeed in such a claim, it maintained the requirement that inferences be based on proven foundational facts. Here, even with all reasonable inferences available, Azteca could not prove non-use. On top of that, the TTAB noted in a footnote that even if the parties had stipulated to all the evidence in the record, the outcome would have been no different because of an article published close enough to the filing date of the petition to support an inference that Mr. Martin planned to resume use.
TV Azteca highlights the risks of the expedited cancellation procedure, or at least the risks of forfeiting discovery while bearing the burden of proof. Considering how much expediting a procedure depends on removing or reducing discovery (since discovery can take so much time¹), this case may illustrate why relatively few cases have been resolved using expedited cancellation procedures or ACR generally. According to statistics about TTAB filings and performance measures posted by the PTO here, only 19 ACR cases were decided during fiscal year 2018 (up from 17 during the previous fiscal year). It is not clear how many of these were expedited cancellation proceedings. On the other hand, if the circumstances are appropriate (for example, if the parties are able to stipulate to most facts and/or there are not many witnesses), the parties may want to give ACR serious consideration because it could result in meaningful savings. The TTAB statistics indicate that total pendency for ACR trial cases during fiscal year 2018 was 106.3 weeks whereas total pendency for trial cases during the same period was 140.3 weeks. Whether an expedited cancellation procedure (or ACR more generally) is appropriate will depend a lot on the circumstances of each case and should be considered carefully by the parties.
¹Indeed, as the TTAB points out, the further the parties go into discovery, the less likely ACR is to save them time and resources.
Over a year ago, we wrote about the intersection between trademarks and bankruptcy. Specifically, we described a scenario in which a licensor files bankruptcy and chooses to ‘reject’ the license agreement. Under the Bankruptcy Code, the licensee may continue to exercise its rights (and carry out its corresponding duties) with respect to all intellectual property licensed to it under the agreement. But the Bankruptcy Code does not include trademarks within its definition of intellectual property. Courts have been left to address what happens if the license includes trademarks.
The debtor-licensor’s rejection of the executory contract is a breach of the contract. In at least one circuit, this means nothing more than that the licensor has breached the agreement. The licensee still retains its rights (including its right to use the licensor’s trademarks), just like it would outside of bankruptcy. Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012).
By contrast, the US Court of Appeals for the First Circuit recently treated rejection of the executory trademark license agreement as a termination of the contract, depriving the licensee of the right to use the licensed trademarks. Mission Prod. Holdings, Inc. v. Tempnology, LLC (In re Tempnology, LLC), 879 F.3d 389 (1st Cir. 2018). This latter approach follows the reasoning of Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985), which predated the amendments to the Bankruptcy Code allowing intellectual property licensees to retain the rights (and obligations) associated with licensed intellectual property rights once the debtor-licensor has rejected the executory contract. Lubrizol involved a technology (not trademark) license.
The court in Tempnology case reasoned that allowing the licensee to retain its rights under the trademark license would not allow the debtor-licensor to be free of performance obligations because the debtor-licensor would still have to monitor use of the mark. In asking the Supreme Court to hear the case, the licensee in Tempnology, Mission Products, argued (in part) that the right to monitor did not necessarily create the duty to monitor.
At least two organizations filed amicus briefs encouraging the Supreme Court to accept the case. The International Trademarks Association (INTA) encouraged the Supreme Court to adopt the Sunbeam reasoning because treating rejection as a breach, but not termination, best promotes the strength and stability of the trademark system. A group of law professors similarly urged the Supreme Court to accept the case, noting that the First Circuit’s interpretation of the omission of trademarks from the definition within the Bankruptcy Code goes too far. Rather than giving courts the opportunity to decide the implications of the debtor-licensor’s breach in each case pursuant to non-bankruptcy law, it effectively created a uniform rule that requires the same result (termination) in each case, thus undermining the policy reason for allowing courts to decide the issue on a case by case basis.
On October 26, 2018, the Supreme Court granted certiorari and agreed to hear the case. Argument has yet to be scheduled. But this case presents the opportunity for the Supreme Court to resolve a split between circuits and eliminate uncertainty in the marketplace at the intersection of trademarks and bankruptcy.
Only three months ago we wrote about rebranding. Just two months ago we wrote about beloved brand nicknames. Then, last month, two companies announced plans to rebrand to abbreviations of their current marks. Coincidence? Probably, but we are going to take the opportunity to revisit those topics anyway.
On September 25, 2018, Dunkin’ Donuts announced that it would be rebranding as DUNKIN’ beginning January 2019:
“Dunkin’” sounds like “Duncan” and is the first word in the existing two-word brand. This change sounds like a friendly invitation to consumers to call the brand by its first name. But apparently many of the company’s loyal customers had been abbreviating the mark to the first term (or variations of it) already. As pointed out in the press release announcing the rebrand, the company has “been on a first name basis with its fans” for a long time. This is further reinforced by the tag line, “Our friends call us Dunkin’.” In this rebranding, the company may be taking a cue from the nickname bestowed on it by its consumers. The rebranding capitalizes on affection shown by the brand’s fans in abbreviating the official mark and hopefully makes them feel even more connected while attracting a broader audience.
Clues that the company may have been planning the rebrand for a while may lie in the trademark applications filed with the US PTO. The company filed four applications for DUNKIN’ alone between January of this year and the present. The company also explains that the rebranding is “one more step in the company’s journey to transform into beverage-led, on-the-go brand.” The company has long been known for its coffee, but perhaps one of its recent trademark applications hinted at a broader meaning for ‘beverage-led.’ On May 23, 2018, the company filed an intent to use application to register DUNKIN’ for use in connection with beer. Just last week Dunkin’ Donuts announced a beer produced as a collaboration with Harpoon Brewery.
After visiting DUNKIN’ too many times, perhaps one needs assistance from the other company to announce rebranding recently. The day before the DUNKIN’ rebranding announcement, Weight Watchers announced that it will become WW:
Weight Watchers has owned registrations for WW (stylized) for at least a few years. So this transition will also be to a familiar mark and not a radical departure, even if the new brand is not a nickname previously used by loyal fans. The rebranding tracks the company’s desire to shift the focus from weight loss to wellness. This is to be reinforced with introduction of the tag line “Wellness that Works.”
The company announced that a new campaign will launch in late December 2018 and that workshop locations will be refreshed in 2019. The company has launched videos to help announce the rebrand. You can see the short version here. There is no voice over for the videos; only music accompanying printed words and images. This highlights the visual impact of the new brand, which is more compact and concise than “Weight Watchers.” The absence of any voice over means one does not have to assess the aural impact of the new brand, which is a bit less punchy as it takes longer to pronounce than the old one.
How fortunate to have these two recent examples to illustrate concepts we recently covered. Sometimes art imitates life. Sometimes life imitates blogs. And sometimes there’s just coincidence…
We recently looked at the idea of state universities claiming a (limited) monopoly on the right to use the name of their state on clothing and other items. At first blush it seems surprising that anyone can have the exclusive right to a state name, but trademark law allows it in the right circumstances, and with limitations.
This time we’ll look at another university case, but perhaps an even stranger attempt to claim exclusive use – and one that may or may not wind up being successful.
In this case, The Ohio State University is claiming exclusive rights to the letter “O,” or at least a particular look of the letter “O,” and on that basis is challenging an application by University of Oklahoma to register a mark that includes an arguably similar O.
First, a little background. Part of the trademark registration process involves notifying the public that an application has been preliminarily approved for registration and giving others a chance to oppose registration. An application may be opposed for various reasons, but probably the most common is that the opposer thinks the mark shown in the application would create a likelihood of confusion with the opposer’s mark. The opposition plays out before an arm of the USPTO called the Trademark Trial and Appeal Board. The Board considers a number of issues in determining whether the mark shown in the application would likely be confused with the opposer’s mark, but the most important are almost always the similarity of the marks and the similarity of the goods or services the marks are to be used with. If the Board determines that the opposer has prior rights in its claimed mark, and that the applicant’s mark would create a likelihood of confusion, it will not allow the applicant’s mark to be registered.
Ohio State has registered two different versions of the letter “O.” The version shown here
is registered twice – once in a 2003 registration covering “clothing, namely, jackets, sweaters, hats and T-shirts,” and later in a 2013 registration covering services including “providing college level sporting sport exhibition events and recreation programs.”
A slightly different version, like this
was registered in 1997 for use with “clothing, namely, hats, caps, tee shirts, sweat shirts, sweat pants, shorts and sweaters.”
In 2017, the University of Oklahoma applied to register this mark:
That application covers “entertainment, namely, live performances by musical bands,” and it’s obviously a stylized image of the drum major for the Pride of Oklahoma marching band. It does show an O on the drum major’s chest.
Ohio State called foul (or asked for an official review, or threw a flag; it seemed like a lame sports metaphor is called for here). Wait a minute, OSU says, we have used the “block O” mark since 1898, and it’s on lots of our products and used with our services, and it’s right in the middle of our football field (more on that below), and consumers recognize it as referring to Ohio State, and it points “uniquely” to Ohio State, and we have registrations for the “block O” trademark. So Ohio State argues that Oklahoma should not be able to register its stylized drum major mark, because right on that drum major’s chest is an O looking kind of like the OSU “block O.”
Ohio State also claims that the “O” on that drum major’s chest is the “dominant portion” of the mark Oklahoma is applying to register, which seems like it might be a bit of a stretch, and it also says that the “O” is the only indication of source in the drum major mark, which could be ignoring the fact that Oklahoma claims the entire drum major design as an indication of source. Perhaps a drum major in a distinctive stance could also be an indicator of source, unless that’s just how drum majors walk. (Also, don’t look now, OSU, but Oklahoma has another registered mark that somehow slipped through that has two O’s in it.)
The matter will likely boil down to whether the two marks – an O and a stylized drum major in a rather unusual posture with an O on the shirt – are confusingly similar. One of the rules when considering confusion is that you are not to “dissect” the marks. That has nothing to do with high school biology class; it means that you are to consider the marks as a whole rather than to focus on one little aspect. A big question will be whether Ohio State’s ownership of rights in the O are enough to prevent registration of a mark that has a lot going on apart from the O.
One thing that might come into play is how distinctive that Ohio State O really is, and how recognizable it is on the drum major logo. Oklahoma might point out that the University of Oregon also has a registration for a letter “O” that looks like this:
That registration also covers services including collegiate athletic events and various kinds of musical performances and bands, and is quite a lot older than the Ohio State registration covering athletic events.
As of this writing, the University of Oklahoma has not responded to Ohio State’s opposition. Unless the parties settle the matter, Oklahoma will file a document admitting or denying each of the allegations in Ohio State’s notice, and setting forth any defenses it might have. OU fans can attest that defense has not been a strength lately.
As for that O in the middle of The Ohio State University’s field, it may be that the OSU is a little more protective of their favorite letter after a 2017 incident in which Oklahoma quarterback Baker Mayfield celebrated a football victory on the O, a short clip of which you can see here.
One of the facts of modern life is that you will be the target of scams. Sometimes it’s the son of the former defense minister of Nigeria. Sometimes it’s someone trying to trick you into paying them money to do something with your trademark.
U.S. trademark registrations have to be renewed every 10 years or they expire. Most trademark owners are somewhat aware of that fact, but many are somewhat vague on the subject and don’t know just what to expect when the time for renewal rolls around.
If your trademark is registered and approaching renewal time, you may well receive a very official-looking notice that seems like it might be from the government and has something to do with paying for renewal of your registration. It may have details about your registration, including the number, the registered mark, and the renewal date.
If you receive such a notice, you should read it carefully – at least the first time; you may get more than one and after a while you will recognize the form. Be aware that the U.S. Patent and Trademark Office will not be sending you an invoice at renewal time. If you used an attorney to register your mark and get something that looks like an invoice that’s not from your attorney, be very suspicious.
There are some common components to these bogus notices. Many of the notices come from senders whose names are tantalizingly close to “U.S. Patent and Trademark Office.” The real U.S. Patent and Trademark Office has a list on its website of “misleading notices” of which it is aware. The list is long, and includes names such as “Patent & Trademark Agency,” “Patent & Trademark Bureau,” and even “Patent & Trademark Office.” You can see the list, along with sample notices, by clicking here.
The notices usually look quite official, as if they might have come from an honest-to-gosh government agency. They typically will have actual information taken from your registration, such as the mark, the registration number, and the opening of the renewal period, all of which is available online. Often they will have a box with a large letter in it, for no apparent reason other than to give a patina of bureaucracy.
They will typically have an offer, in small print, to do something that seems close to renewing the registration. Some recite that by signing and returning the form, you authorize the sender to renew the registration, although they do not appear to have been sent by a law firm, and it’s not clear what actually happens if you return the form and pay the fee. They notably do not ask you to provide the sort of information that would be required to legitimately renew a registration. Some promise to list your trademark in some sort of registry, although since that registry is not maintained by any country or known organization such as the World Intellectual Property Organization, the value of that listing is probably close to nil. Very close. The fees, meanwhile, are typically substantial.
Here are a couple of samples of such notices that clients have received in 2018:
So watch out. And it’s not a bad idea to alert accounts payable, because sometimes these look enough like an important invoice that they wind up there.
A familiar adage teaches that one catches more flies with honey than with vinegar. Without in any way implying that infringers are flies, we can apply this lesson to the trademark context. It seems that trademark attorneys enforcing their clients’ rights have really taken this wisdom to heart in recent years. With increasing frequency, trademark cease and desist letters filled with humor and whimsy fill the news.
Most recently, In-N-Out Burger sent a cease and desist letter to Seven Stills Brewery, which had just announced a forthcoming new beer in a can bearing markings very similar to In-N-Out Burger’s logo and the name “In-and-Stout.” Seven Stills also tagged In-N-Out in the announcement.
In-N-Out’s letter was filled with beer puns. Seven Stills posted a copy of it on its Instagram accounts:
Though friendly (and playful) in tone, the letter clearly alerted Seven Stills to In-N-Out Burger’s trademark concerns and invited Seven Stills to work out an amicable resolution. It appears that happened because Seven Stills’ next post about the matter involved a video announcement that its new stout would not appear in a “knock off can you think you saw once” and that the first 100 customers buying the can at the brewery would receive a free In-N-Out burger.
In-N-Out Burger’s letter was witty (note the beer puns), friendly (clearly seeking an amicable resolution), and direct. The letter not only got Seven Stills’ attention, it received the attention of the consuming public. And it offered a pathway to resolution that allowed both parties to maintain their goodwill with the public.
This style of letter seems best suited to enforcing trademark rights against someone who appears to be a misguided but well-meaning fan (or friend) of the offended brand. The first letter I remember hearing about in this genre was from Jack Daniels Properties to Patrick Wensink, the author of a book entitled “Broken Piano for President” whose cover bore a striking resemblance to the Jack Daniels label:
Though it did not contain puns or witticisms, the letter from Jack Daniels Properties was gentle and friendly, acknowledging openly that the recipient was a fan of the brand and finding common ground in his interest in protecting his own intellectual property rights.
At the time this was news (about six years ago), I recall the letter being described as the “most polite” cease and desist letter ever written. In my experience, most trademark lawyers are polite. What makes this letter stand out is how it draws on empathy, both in understanding that the author’s actions stemmed from a love of the brand, and in asking the author to understand Jack Daniels Properties’ need to enforce its trademark rights to preserve the strength of the beloved brand.
Perhaps the fame of the Jack Daniels Properties letter gave some attorneys the idea that getting published could mean more than a journal article (or a blog post). Young lawyers are often cautioned to write cease and desist letters that they wouldn’t mind seeing attached to a pleading filed in court. But did the Jack Daniels Properties letter inspire lawyers to write cease and desist letters they would like to see posted on social media?
After the Jack Daniels Properties letter, we saw cease and desist letters that upped the ante from friendly to witty. Last year, a lawyer from NetFlix sent a cease and desist letter to Emporium Arcade, which had launched a six week pop up bar with a “Stranger Things” theme. As you might anticipate, the letter made many allusions to the ‘80s (and to the show itself):
Again, the letter treats the recipients as the fans they are, trying to coax compliance in a friendly way by keeping them on the brand’s side.
Often when there’s a trademark issue, the marketing department calls the lawyers. Not to shortchange the lawyers on creativity, but in the case of some of these cease and desist letters, I wonder if the lawyer called the marketing department in anticipation that the letter could be a public relations event.
These letters are good illustrations of the old adage quoted above. By remaining friendly in tone, reminding the recipient of their admiration for the brand and enlisting them as an ally in protecting the brand, by injecting levity through puns or humor, these letters may get more cooperation (and more friendly publicity) than the traditional cease and desist and may avoid alienating a brand fan in the process.
Trademarks are everywhere! From the Delta® faucet you use every day, to your favorite Starbucks® treat, and even your favorite G2® ink pen at work (I mean – is there any other acceptable pen?!). Everyone encounters hundreds, if not thousands, of trademarks each and every day! In a boiled down sense, trademarks are just another way of referring to brands. We all have brands that we know and love, but have you ever stopped to think about how those brands came to be?
One of my favorite new podcasts (which is not new, just new to me) is How I Built This®, hosted by Guy Raz and produced by National Public Radio (NPR). The weekly podcast is all about innovators, entrepreneurs, idealists, and the stories behind the movements they built. Since 2016, Guy Raz has had the pleasure of interviewing some big names, such as Mark Cuban, Kendra Scott, Michael Dell, Steven Madden, and L.A. Reid, and has told the stories of how some of Americas’ favorite brands came to be, including Spanx®, Instagram®, Southwest Airlines®, and Starbucks®.
During my binge-listening of the podcast, a consistent theme has emerged: trademarks can really make or break a business and the “trademarkability” of certain words or phrases are how strong brands are built.
For example, I recently listened to the How I Built This® episode featuring Lara Merriken, the creator of LÄRABAR, which Merriken herself describes as a portable and convenient energy bar made of fruit, nuts, and spices, just pure simple real foods that somehow taste indulgent like you shouldn’t be eating them. Nowadays, you can find these healthy and yummy LÄRABARs at almost any grocery or convenience store. However, it’s crazy to think that LÄRABARs almost weren’t LÄRABARs.
As it turns out, Merriken originally planned to name her bars MANABAR because “mana” refers to your vital energy or your chi. However, right before the product launch in 2002, Merriken’s trademark attorney found a problem. There was already a MANNA BREAD trademark registration and, due to both products being in the food industry, Merriken’s attorney thought there may be a likelihood of confusion and recommended that Merriken change the name.
As Merriken was coming to terms with the fact that she had to completely scratch her original idea, a friend said “you know, why you don’t call them Larabars? You make them, they are your bars, and it sounds good and has a ring.” Merriken originally thought no way. However, after thinking about it for a couple of weeks, Merriken finally thought “LARABAR . . . I guess that could work”. And boy did it work. By year two, LÄRABAR had made between $5-7 Million and big companies were taking notice. Merriken was approached numerous times by companies who wanted to acquire LÄRABAR. Then, in 2007, when Merriken was 39, LÄRABAR was finally sold to General Mills (for an estimated $56+ Million).
Merriken’s story is just one of many that shows how naming is one of the hardest and most important things when starting a business and/or launching a product. Working with a trademark attorney to vet a name on the front end can save a lot of money and heartbreak on the back end. If an entrepreneur selects a name that is already in use, common, or descriptive, they run the risk of having their trademark application(s) denied, litigation, having to rebrand, and/or perhaps being limited to a very small geographic scope (which most certainly would affect growth potential). Therefore, to all the existing companies and budding entrepreneurs out there, give us a call and let us help ensure the brands you built are built on a strong foundation.
Oh and if you were wondering where the umlaut (Ä) in LÄRABAR comes from or what it means, well, it doesn’t mean anything at all. Merriken just thought it looked pretty cool!
Collegiate licensing is a big deal these days. Lots of alumni and fans of college teams want to wear clothing bearing the marks of their alma mater or their favorite team. Colleges commonly register their critical trademarks and license others to produce goods bearing their marks. Sometimes they have to pursue infringers who sell those goods without permission. Clothing makers pay good money for the right to put college marks on their goods.
The whole system is based on the presumption that the college owns the marks. Without ownership, the college can’t shut down infringers, because there is nothing to infringe. And without the threat of an infringement claim, sellers are not so inclined to pay royalties.
Ownership of the most basic mark, the name of the college, is a simple enough matter if your college has a unique name. But what if your college is the state university? Can you own the exclusive right to put the name of your state on t-shirts, sweatshirts, caps, and other merchandise?
Yes, you can, to a point. First, although people often question how anyone can “trademark” a common word, it happens all the time. APPLE is a common word that also used as a trademark, for example. Apple Inc. can’t prevent others from using the word to identify fruit, but it can prevent others from using it to identify computers and smartphones. So the fact that people get to call the state by its name does not prevent a university from having exclusive rights to use the name of the state of which it is the flagship university in specific ways, as a trademark.
But there are hoops to be jumped through. To be valid, a trademark must be “distinctive,” meaning that consumers recognize it as identifying a particular source of goods or services. One way for a mark to be distinctive is to have nothing to do with the products it is used with. That may be a made-up name, like KODAK, or a common word that is in no way descriptive of the products – back to APPLE computers.
Another way for a mark to be distinctive is for it to have been used for a long time, without substantial competing use, so that the public grows to associate the term with a particular source. Such a term can become a trademark even though it might have been descriptive to begin with. Many of that type of marks are surnames, such as KORBEL sparkling wine (U.S. Reg. No. 1125421), or names that try to convey some desirable quality of the goods, such as KWIK-KOPY for printing and copying services (U.S. Reg. No. 1115789). They can also be geographically descriptive terms, which is how state universities typically get characterized.
To register a term that appears on its face to be descriptive, you have to show that the term has acquired distinctiveness. That’s hard to show, so the Patent and Trademark Office will usually accept proof of “substantially exclusive and continuous use” of the mark for at least five years before you’re making your claim as a sufficient showing. Usually a brief declaration will do, but sometimes the PTO requires more. If you satisfy the PTO, you get your registration based on “acquired distinctiveness” – the idea being that the public has come to know that a product bearing that maybe-descriptive term is yours.
And that is how state universities typically register their state’s name as a trademark. That’s how Kansas did it (U.S. Reg. No. 2073857). That’s how Oklahoma did it (U.S. Reg. No. 4294514).
From sea to shining sea; Washington (U.S. Reg. No. 1601006) to Georgia (U.S. Reg. No. 3031191), universities are claiming exclusive rights to use the name of their state on clothing based on acquired distinctiveness.
And a lot of those flagship universities are putting up with other universities using that same state name on their sweatshirts – Washington State (U.S. Reg. No. 1307992) to Georgia Tech (U.S. Reg. No. 1291896). Why that works is a different story.
One sign of a prominent, strong, and/or beloved brand is a nickname. Consumers sometimes show their affection for their favorite brands by abbreviating them, elongating them, or creating variations of them. On the flip side, sometimes brand owners create their own brand nicknames, perhaps in an effort to manufacture the desired consumer affection. And then there are occasions where it is hard to tell whether a nickname originated with the consumers or the brand owner itself.
Perhaps the most recognizable brand nickname, “Coke,” was one the Coca-Cola Company eschewed for a long time, as explained here. The company tried to adhere strictly to use of “Coca-Cola” for a number of years. When it finally embraced the term “Coke” in 1941, the Coca-Cola Company launched a marketing campaign to let consumers know that “Coke means Coca-Cola.”
When nicknames for brands develop, they can work their way into popular culture. General Motors’ advertising agency estimated that there are hundreds of songs that refer to or are about Chevys. General Motors owns several registrations for variations on the word “Chevy.” None covers cars or trucks, but one covers toy cars:
Brand owners can run into severe criticism for denying consumers the use of beloved nickname marks. Eight years ago, the marketing team at General Motors tried to pressure the business to use only “Chevrolet” and not “Chevy” when referring to cars. They went so far as to establish a curse-jar to collect quarters for every inadvertent use of “Chevy” (with funds to be used for a team building event). Ironically, the memo explaining the policy cited “Coke” as an example of brand consistency that General Motors sought to emulate. Ultimately, General Motors recognized the error of its ways and resumed use of “Chevy” to refer to its products.
As others have noted, you cannot control what consumers call your brand. So if you can’t beat ‘em, you may as well join ‘em (or at least claim the nickname as a mark for yourself). The National Council of Young Men’s Christian Associations of the United States of America observed that many of its members were referring to it simply as the “Y” (rather than “YMCA” or, as I have never heard it called, the full trade name). They embraced this nickname wholeheartedly and registered the mark. As it happens, use of the abbreviated abbreviation helped diminish the emphasis on gender (since both men and women attend the Y these days) and religion (since the YMCA is open to all faiths).
First new card in 18 years of membership.
But nicknames are not always abbreviations. One popular brand nickname is “Mickey D’s” (registered in both possessive and plural forms). I am not sure whether this is an appropriation of a consumer-generated nickname or whether it is one developed by the corporation, but McDonald’s Corporation fully embraced it and sought registration for it in the early ‘80s. McDonald’s has also embraced its nickname in Australia, where it is known as “Macca’s.” According to one article, McDonald’s even celebrated its 40th anniversary in Australia by temporarily changing signage on several of its restaurants to the nickname. Consumers in other countries have their own nicknames for McDonald’s. The fact that different groups of consumers have their own ways of expressing affection for the brand is a good reason not to abandon the full name even while embracing the nickname, and for leading with the full name when entering new markets.
Sometimes beloved products beget whole slogans and not just nicknames. Children of the 1980s will remember Nintendo’s Donkey Kong video game featuring an ape throwing barrels. Out of that sprang the phrase IT’S ON LIKE DONKEY KONG. According to various sources, the phrase was popularized (if not originated) by Ice Cube in a rap album from the early ‘90s. (Ice Cube credits his cousin with coining the phrase here.) After almost two decades of popular use, Nintendo decided to claim the phrase for itself as a mark, seeking registration for it in 2010 and first using it in US commerce in 2013 as displayed below.
After drinking a Coke with dinner at Mickey D’s, I had to drive a Chevy to the Y to work off some calories. But even in this fictional closing line, I can’t imagine myself saying “It’s on like Donkey Kong.”