Okay, so I changed the words from the penultimate bluegrass song to make a pun on a situation down
in North Carolina involving, what else, music and beer. And a little dispute over the name WOODSTOCK.
Apparently, six years ago two people started a small music festival at a restaurant featuring local musicians performing on the back of a flatbed truck, a type of makeshift stage. At the time, the festival was deemed the Popcorn Sutton Jam, the namesake of a local moonshiner. Then this year, following a spate with the widow of Sutton, the event’s name was changed to “Hillbilly Woodstock”. That’s Woodstock as in the music and cultural festival from upstate New York during the rebellious years of the 1960s. This, as you might imagine, created quite a stir amongst Woodstock Ventures, LC, the owner of the WOODSTOCK mark. Actually, it’s more like a portfolio of marks that includes everything from loungewear to cultural entertainment services for kids. Living up to their name as zealous protectors of WOODSTOCK trademark supremacy, Woodstock Ventures made sure to get a C&D letter out quick.
Not believing that a little music festival serving a niche listening group could raise the ire of a cultural icon with name recognition from here to Vietnam, the bluegrass people “thought it was a joke”. But as we all know from war stories involving owners of storied trademarks, infringement is no laughing matter.
Perhaps the organizers of the North Carolina festival felt they were making a clever reference to the fabled music fest in a bid to inspire thoughts of nostalgia among concert-goers, but in the bluegrass style of music. Or perhaps the plan was to create a weekend of critique of the debauchery which was largely a byproduct of the counter-culture from the real Woodstock. My spiny senses (and a visit to the website) tell me the latter is probably not very likely, and that the point of the music festival is the very orthodox provision of good music and entertainment, no overt intent to comment on anything.
Having a fiancé that is in love with handbags (what woman isn’t?), I often find myself in-tow through the leather goods section of fancy department stores or stand-alone stores where Coach and Michael Kors bags are put on display like, well, Tiffany diamonds. Besides looking at the price tags and shuddering feeling the American Express card in my back pocket becoming a hot coal, I often think about the lengths that these companies go to in protecting their brand. Often times in the luxury goods market where there are many competing firms, all of which offer pretty much the same basic type of goods at the same price point, there isn’t much to compete on other than the name. Yes, product design is often a point of competition as well, but I’m trying to keep this post simple by only focusing on brand names. If you are a business that is competing primarily based on brand name, you are going to be more than a little concerned about how your brand name is used in the marketplace. One of the greatest examples of how companies obsess over their brand is the franchisor/franchisee relationship in the hospitality business (whether food or hotels). The main flagship brand is often the subject of dozens of pages of restrictions on trademark usage, including everything from product/logo display to partnerships with local community groups to promote the brand.
The rationale for protecting a brand is no secret. If a brand name is the foundation of your business, losing it could mean losing millions of dollars in valuation and being forced to start over. Okay, those might be some extreme results (Thermos lost its brand to genericide but is still recognized as the market leader in insulated food/beverage containers, without which the world would be a much colder place
), but the result is looming out there like a hawker of goods in a flea market and no brand owner wants to be positioned for failure in a hyper-competitive marketplace.
And that brings us to the problem that many luxury brands are finding themselves in: tracking down and combating online counterfeiters.
There aren’t too many trademark owners out there who can say they have built a monopoly in a specific name. Just as it is hard for a company to achieve dominance and operate as the sole-provider of a particular product so it is hard for a company to achieve brand name exclusivity. And that’s what this post is about: brand monopolies and the MONOPOLY trademark. It’s a relatively intriguing story about a brand that was built-up, lost, and regained.
Everyone is familiar with Monopoly. Many a family have bonded, torn each other to shreds, and reconciled over a game of Monopoly (sometimes even in a single sitting). It has been an icon of “game night” for years and has been the defining centerpiece of coffee tables and hallway closets for years. And as if that wasn’t enough to pique the interest of even the most bored-of-board game types, McDonald’s annual Monopoly promotion provides a delicious and addicting extension of the game. Elsewhere, you can find Monopoly branded slot machines, an all-purpose calculator, cuff links, and even bathroom fixtures and towels. That has to cover pretty much all bases.
Given all these marketplace identifiers, one would suspect that the brand MONOPOLY is a solid name and not subject to any kind of challenge, especially that the name is “generic” for any type of board game. The hallmark of a generic name is one that broadly identifies a category of products (in this case, board games that put players together in a quasi-free market to buy and sell properties), usually because consumers don’t know any other way to identify the product without using the name. Without ties to a single company as the source of a product, a generic name is available for general use by the marketplace.
Yet that is exactly what a slew of court opinions found in the 1970s
when an activist professor sought to name his board game Anti-Monopoly
as part of a campaign to inform consumers about the ill-effects a monopoly could have on a marketplace. How could a brand with a 40-year history of success in the U.S. and abroad, with an exclusive hold as the identifier for a special type of board game be in doubt?
Picture this. You are the owner of an up-and-coming marketing agency. You recently wrapped up a design and identity project for one of the city’s fastest growing tech start-ups, DigiBerry. The company makes digital pastries that people can share across social networks as part of messages or shared content (don’t ask me why it’s cool, it just is!). As part of the project, you created a series of icons, fanciful pastry designs, a website, print collateral, and a series of short animated videos that users of DigiBerry’s app can send to acquaintances within their social network. DigiBerry LOVED it. The local design scene LOVED it. In fact, they asked you if they could feature the design in next month’s Marketing Greatness magazine. Flattered, you accept the invitation and submit copies of the logos you created for DigiBerry and images from some of the designs. Feeling like you’re on cloud 9, you decide to feature DigiBerry on your website and in a “featured work” brochure that you are preparing for the annual national marketing conference in New York.
All is going great. Then on the eve of the big story release in Marketing Greatness and your appearance at the conference, you get that dreaded white legal-sized envelope that most business owners have nightmares about: the cease and desist letter from the law firm of Ware Biggar Zhan Yu. Client has hired the firm and is accusing you of trademark infringement, unfair competition, and copyright infringement. They demand that you remove all logos from your website and destroy any materials that include client’s logos, name, or the designs you prepared for them. Having already prepared the materials, what are you to do?
Snapchat, still reeling from a hacker attack in 2013
where the contact information for 4.6 millions users was published, recently lost a bid
to prevent somebody else from using a domain name that contained the word “Snapchat” (which happens to be a trademark of Snapchat, naturally). The domain name, www.snapchatcheck.com, allows Snapchat users to determine whether their information was compromised in the 2013 hack. What gives? How can a third-party simply rip-off the name of a major company and build a website off a stolen identity? Does the fact that the name is used in the context of a domain name matter?
These are all issues that this post will attempt to tackle (and tie together with a nice pretty bow). But first, let’s take a little stroll down Internet 101 lane.
The Internet has become an invaluable tool that many lean on to share information, engage with others, and improve their daily lives. Pulsating data streams flowing out of I.P. addresses build resource and support networks, helping people literally improve their lives. These aren’t platitudes, trust me. I think we can all speak from experience on this one and arrive at the same conclusion: in a World where people actively seek explanations and validation, the worldwide web is our lifeblood. And how do we navigate this lifeblood and determine, from the great cacophony of noise, what is legitimate and what isn’t? Links, searches, “likes”, content shares (which are forms of linking), and hash tags; all are filtered and validated a la our own B.S. indicators which have been so finely sharpened by our years of experience navigating the Internet.
In case you hadn’t heard: the Trademark Trial and Appeals Board (TTAB, an administrative body affiliated with the trademark office that hears all appeals directly from the United States Trademark Office regarding the decisions of trademark examiners) dropped a real whopper of an opinion yesterday when it concluded that a series of trademarks containing the word “REDSKINS” must be cancelled because the trademark was disparaging to Native Americans at the time it was registered. I have a few issues with how the press has been covering this story along with some additional comments on the general soundness of the opinion (although a decision this substantial will surely be appealed by the Redskins). So here is my take.
Which way is the right way? Src: http://blog.hwtm.com/2012/11/vintage-alice-in-wonderland-tea-party/
So Hobby Lobby. I'm sure you've heard of it. Its this big-box craft store that sells everything from fake hibiscus to jelly beans, all with the goal of giving those who enjoy crocheting and decorating something to do over the weekend. But have you heard of Hobby Lobby International? No, not the same store. Hobby Lobby International, as in the store that sells only remote control "crafts", the kind that boys big and small pine for as a form of alternative to the bigger, expensive versions. I had never heard of it either before today, although it sounds much more exciting than Hobby Lobby, the full arts and crafts store (because I just happen to be one of those guys that likes the RC stuff).
Apparently, Hobby Lobby International (the RC store, which I will simply refer to from here on out as "HLI") has been around longer than Hobby Lobby Stores ("HLS"). About 8 years to be exact. HLI opened its first shop in Tennessee in 1964 while HLI opened its first store in Oklahoma in 1972. Over the years, HLI grew from a single-retail store location to a thriving mail-order and online retailer business, with sales of at least $9 million. The same family owned HLI until 2003, when it was sold to a private equity firm. In 2009, a local business guy, Mark Cleveland, bought the company with goals to expand operations across multiple stores and sell more radio-controlled products (yeah, he's one of those small-scale, big-boy toys kind of guys, too.
How could two companies, in virtually the same industry group, through practically the same avenues in the marketplace, reaching potentially overlapping consumers exist side-by-side for all those years without any kind of problems or misdirected consumers? Well, apparently they didn't, or at least nobody cared until Mr. Cleveland took over in 2009. Thereafter, problems seemed to pop-up like miniature RC helicopters flying around the room: customer complaints and inquiries directed to HLS, mis-directed web traffic, confused female customers who showed up to HLI stores looking for yarn instead of electronics, and so on. Given its smaller size and scale of operations, HLI took the brunt of the misdirected consumers, getting stiffed on keyword advertising on the internet and angry, confused customers who just wanted to buy wicker baskets.
This is a classic case of what us trademark attorneys call "reverse confusion". Reverse confusion occurs when one business (the junior user) uses a trademark that was first used by another business (the senior user) and where the junior user becomes more well-known than the first user. In regular consumer confusion (no, it isn't called "forward confusion"), a junior user is confused with the senior user. In this case, in essence, the junior user is free riding on the reputation of the senior user. In reverse confusion, the senior user loses the opportunity to control its own reputation and goodwill because the junior users swamps the market with its advertising and sales, so much so that consumers come to believe the senior user of the trademark is actually the junior user. In essence, then, reverse confusion occurs when a more powerful company uses the mark of a smaller, less powerful senior user.
If you are a parent, you have probably heard of a game called Minecraft. It’s this game that allows players to carve underground and above-ground worlds out of textured (and extremely pixelated) cubes, explore, gather resources, and engage in combat. I haven’t really played it and don’t see the attraction (the pixilation just hurts my eyes, or maybe it’s because I am playing it on an iPhone and I can never really figure out what is going on?) The game is extremely popular and has won many awards that are badges of honor in the gaming community. And you know you’ve hit it big as a game developer when merchandise bearing your name hits the store.
Another thing that is apparently big in the gaming world are conventions. I am not even remotely joking here. Each year, Minecraft has a big gala event where fellow gamers congregate to hold discussions about gameplay and (of course) challenge each other in one massive community battle. Because this is a once a year event and because Mincraft is just the coolest of cool games, tickets sell out pretty quickly. That means many disappointed gamers are left without a chair once the music stops.
‘But not so fast’, says one enterprising fan. ‘If Minecraft can generate this kind of buzz, why can’t I hold my own convention? I’ll simply rent some space, order balloons, put up some projector screens and a bunch of computers, and invite everyone to come. I’ll charge $50 a day (why not, it’s Minecraft and people LOVE IT). Kids are happy. Parents are happy. Everyone wins.’
Those who watched cartoons (or who grew up in the 1990’s, like me - yes, I am really that young) will remember T.V. spots from Saturday morning cartoons for McDonald’s. The spots usually featured some extraordinarily absurd mismatch between kids and reality, such as having recess for every period during school and eating McDonald’s at every meal (I’m sure somebody named Michelle Obama would have something to say about that). The spots always ended with a catchy little jingle: “McWORLD!!! Hey, it could happen!”
So imagine the nostalgia I felt when I saw that Taco Bell, which has announced a totally unique breakfast menu consisting of items like a waffle taco
, was bringing in Ronald McDonald to promote its new breakfast menu. Not the
Ronald McDonald, the one in the bright yellow suit, goofy red shoes, and the one that gives those with clown-phobia’s the willies. But a person whose name is Ronald McDonald (of which there are, apparently, many
). The idea seems clever as a type of advertisement: “Come to Taco Bell for breakfast. Even Ronald McDonald likes Taco Bell for breakfast over McDonald’s”.
I will admit that I have never gotten on the whole Pinterest trip, despite being surrounded by family and friends who love the site. Not that I have anything against the platform; I just don’t understand how it works and have never put the time in to learning. I have so many other social media platforms to keep up with! The basics make enough sense to me that I can summarize them as follows: Pinterest is a type of software platform that allows users to share content in the form of visual bookmarks that others with like interests can browse in order to become more informed about (or be entertained by) a particular subject. Users of the site place items on their digital posting boards. The posting medium is given the name “pin”, a cute reference to the fact that items are digitally pinned to a particular page.
I may not use the site, but one thing about the site (or is it an application? platform?) that did capture my interest was Pinterest’s recent move to protect the “Pin” trademark. Apparently it’s something that the website wants to be known for. Pinterests’ platform is sleek and the concept is cool. It is the perfect play to a consuming audience that thrives on information and the ability to share it. So maybe it was only a matter of time until other market entrants attempted to get a piece of the pie.
Enter Pintrips in 2011 with a similar concept to that of Pinterest: through a website, users can collect, compare, and share information about a particular interest by using a “pin”. Yes, that’s right. Pretty much exactly what Pinterest allows. Pinterest even had their own “pin” button.