PictureBranding: it does a celebrity body good.
The pro-activeness of certain pop-culture icons (or, as will be apparent a little later on in this post, “imminent” pop-culture icons) never ceases to amaze me. The trademark aspirations of many of these starlets takes the whole go-getter ethos to a whole new level. Just in the past few years, we’ve seen such tendencies on full display through Taylor Swift’s campaign to register “This Sick Beat” for, well, everything under the sun, to Beyoncé’ and Jay-Z’s attempt to register  their baby’s name (“Blue Ivy Carter”) for a line of baby accessories. The latest in a line of ambitious pop star trademark registrations appears to be Angela Renee Kardashian’s (a.k.a “Blac Chyna”) filing of a trademark application to register her full married name for various advertising and entertainment services. The motivation appears to be a reality TV show that she plans to produce with her fiancé, Rob Kardashian.

The sequence of events usually goes like this: A celebrity writes a song, does a media interview, or marries another celebrity (who may or may not be famous solely because of their name). The celebrity makes some unique, whatever (or not so unique, in the case of “This Sick Beat”) that the media quickly seizes upon, spreading it far and wide. Because the celebrity is well-known, their name is associated with the unique word/comment/symbol without much effort by the celebrity him/herself. The phrase may even be incorporated into a viral YouTube video, or acquire its own hash tag, like Charlie Sheen’s #winning rant (in reality, this wasn’t really a winning trademark strategy as Sheen hasn’t yet obtained his registration). Either way, the celebrity will have no problem acquiring the goodwill that other trademark owners may have to pay hundreds of thousands (or millions) of dollars to acquire.


 
 
PictureHarvesting crops in the city: easier than getting a trademark on a generic phrase.
Being a blog whose namesake is “antigeneric”, I reserve the right to rail against the generic. Generic trademarks are the bane of a trademark attorney’s existence. A generic mark leaves lawyers with nothing to do: nothing to register, nothing to enforce, nothing for clients to use to create good will and compound on it to create value in their brands. For the client, a generic trademark represents a huge missed opportunity to reach customers and create an aura around a product or service; it may even be a detriment to a client if a re-branding campaign is required. Moreover, rebranding can be expensive and provide pause even to the most gung-ho marketing team. After all, who wants the stress and financial headache of starting from square one?

These are the rules that apply to many for-profit, and even non-profit organizations. The name of the game is name recognition, with an underlying economic motivation of economic gain. Consumers recognize the symbol, attribute it to a single source, draw upon prior experiences with products/services bearing that symbol, purchase the product, and enjoy. Rinse and repeat a thousand times (or hopefully many more) and you get goodwill. The owner hopes that it will have exclusive ownership over the symbol so that consumers won’t choose a competitive product thinking it to be from the owner. Economics therefore plays a role at two levels. On the purchasing side, it embodies the intangible associations between the name and the source. On the sale side, it represents the desire to prevent others from creating the same association using a similar symbol. 


 
 
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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.


 
 
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Earlier this week, Google announced that the company would be operating under a different banner: Alphabet. Some linguists have speculated that the driving force behind the name change is to prevent GOOGLE from becoming generic for search engine services. Becoming generic is the death knell for a trademark because it means that the mark is no longer a source identifier and does not point to the original owner, a critical function of trademarks. Practically, this means that the owner cannot stop others from using the brand on their own products. So how could a brand that is estimated to be worth $66 billion be in jeopardy?


 
 
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Whenever there is some major media event or news story (“Deflategate” or “Ice Bucket Challenge”, just to name a few), it always seems like there are enterprising people that are waiting in the wings to turn a quick profit off of the phrase. And what better way to get a nice tidy profit than to get a trademark on a phrase and secure that highly coveted monopoly giving you the power to emblaze the phrase “I Like Turtles” on every street corner in America?

The latest phrase stems from Cecil, the lion that was killed by a hunter. Just within the past week, three different applicants have applied for registration of the phrase “Cecil the Lion”. 


If a trademark can be registered for any phrase, and the means for doing it are available (ahem, Legal Zoom), most people figure, “What the heck”. They are only out $500, and a monopoly on a phrase is certainly worth that much. Much like domain name opportunists in the late 1990s, where a person could snatch up names like “sofas.com” and “travel.com” for $10 or less and sell for millions, some people figure they can get the trademark and either leverage it themselves or license it to someone else.

Here’s the thing. The economics of such a strategy may not play out because there are real costs to getting and maintaining a trademark. Not only do you have to pay to file a trademark, you have to use the mark meaningfully in connection with a business in order to get the registration and maintain it. I venture to guess that many people who file a trademark application on the spur of the moment aren’t willing to put in the time to develop a bona fide business. Running a merchandising business (which is what most businesses surrounding an opportune phrase will be based on) requires a mastery of supply chain management, logistics, and marketing. This is definitely not a case of “if you build it [the trademark], they will come.”

It also costs real money to monitor the mark, which will be necessary to keep exclusive rights in the phrase. Many people often underestimate these costs or, alternatively, the energy and man hours required if you choose to forego the traditional option of having an attorney find the infringement, review it, and send out the proper letter (never mind the costs of elevating enforcement action to the lawsuit stage, which happens more often than you might think).

So you see trademark opportunism is only loosely related to domain name opportunism. At least with domain names the maintenance costs are low and you don’t need a business backing the domain name in order to keep it. Moreover, opportune phrases are often registered at the cresting of the wave of public awareness, which is a time when people are generally aware of the trademarked phrase. When the media frenzy involving the phrase dies down (which it usually always does), the trademark owner will be left with the responsibility of holding up the phrase and making sure it is still relevant or attractive to consumers.

As for the “Cecil the Lion” trademark applications (each of which may pose conflicts to the other applied-for marks based on a likelihood of confusion), one may emerge victorious and may even go on to be a viable mark if the owners can figure out a way to monetize it. If they don’t make goods under the mark themselves, one could see such a mark being licensed to a zoo or non-profit organization that raises awareness about poaching through the sale of novelty items made in Cecil’s likeness (fortunately, you don’t need the permission of animals to make products in their likeness, like you would for people).

So next time you get the itch to file an application with the trademark office, make sure to carefully consider all of the possible costs involved in both filing the trademark, and using it. This is not a definitely not a way to get-rich-quick. 
 
 
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There comes a time in every company’s life where it just has to take a step back and figure out how to remain relevant or how to create a new realm of relevance entirely. For La-Z-Boy, that time is apparently right now.

When most people think of La-Z-Boy, they probably think of the eponymously named reclining chairs that seem to swallow their inhabitants whole in an all-encompassing air of comfort. You might also think of your old man, sitting in front of the T.V., controller and potato chips in hand, spilling crumbs all over the seemingly implacable leather grain of the recliner.

And therein lies the current predicament of La-Z-Boy: distinguishing itself as a company that provides more than just recliners for older folks. It’s a problem that touches more than just product design and marketing plans, it touches the entire brand. As La-Z-Boy ramps up a marketing plan to make itself relevant to millennials, it is probably also sizing up the issue of how to associate its LA-Z-BOY trademark with more than just recliners. And, of course, I’m sure La-Z-Boy doesn’t want to go the way of Zamboni, Yo-Yo, or Thermos, all of which are now generic trademarks, a problem it could very well face if it doesn’t branch out and make its mark a little broader.

Or is that even the issue? Does a company have to adopt a group of different, unique marks to avoid association with a single product (and thus the problem of genericide)? Maybe not, if the company can successfully win the battle of public rhetoric and the tendency of many consumers to associate a company with one main product with a single name. But this has been hard to do for many companies where they are forced to combat the ever-powerful marketplace, which may be even harder to sway than public opinion during a political campaign.


 
 
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Whoops I did it again: I let this blog go a month without a post. Unwittingly, of course. June was an unusually busy month at the office and I just couldn’t find the time to even catch up on trademark happenings, let alone dedicate the shreds of thought necessary to writing witty pieces for this blog.

So what better way to return from a hiatus but to throw it back to a trademark that was created this day 83 years ago: the Washington Redskins.

Unless you’ve been living under a rock, you’ve heard about the struggles the Redskins have had in keeping the registration for this trademark. Most recently, these struggles culminated in a cancellation of the registration for the REDSKINS mark by the Trademark Trial and Appeals Board (TTAB), an arm of the United States Patent and Trademark Office (whose decision was upheld by a federal court). But the war isn’t over because the team will appeal the cancellation decision to the next highest court, the Federal Circuit Court of Appeals; And (given the caliber of the issues at stake in this case including free speech rights under the First Amendment), perhaps all the way to the U.S. Supreme Court.


 
 
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You’ve no doubt heard the age-old question of “what came first: the chicken, or the egg?” Well, after last week’s Trademark Trial and Appellate Board (TTAB) decision regarding the “House That Juice Built Trademark” (a satirical jab at the N.Y. Yankees’ Stadium nickname, “The House That Ruth Built”), I’m sure the guy on the losing end of that issue was asking the same question; only his question was framed in terms of: when exactly does a trademark become famous – when the trademark holder does something to make the mark noteworthy or when the trademark itself does something. It seems that the N.Y. Yankees, who won their TTAB battle with as much gusto as their 27 World Series championships, would say the fame of the mark comes first, we’ll worry about the other details later.

Quick Summary of the case: a maker of t-shirts and hats applied to register two trademarks: THE HOUSE THAT JUICE BUILT and the logo shown below. The New York Yankees, owner of the trademark THE HOUSE THAT RUTH BUILT and a logo that includes a baseball with a stars and stripes hat, asked the TTAB not to register the t-shirt maker’s trademarks because the marks were confusingly similar to the Yankees’ marks.


 
 
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Last week, the Federal Circuit ruled partly against Apple in its patent and trademark infringement case against Samsung, concluding that while Apple’s design patents were infringed by Samsung, the trade dress and trademark rights that Apple asserted were not infringed because the underlying subject matter was not trademarkable. Essentially, the elements of the iPhone design that Apple argued were trademarkable (the rounded edges of the phone, the home screen design with the grid-like pattern of icons, and the flat screen surrounded by a beveled frame) were found to be influenced by functional considerations, including a concern that the features made the phone simpler for a consumer to use. In other words, the design of the phone was driven by intuition, an idea that was apparently injected into the design process decades ago when Steve Jobs first founded the company. The question is whether a company’s legacy for simple, intuitive design can be implemented into the trade dress and product design in such a way that it becomes a source identifier. Furthermore, if those types of design characteristics are source-identifiers, is there any way that a company could develop the characteristics such that they are not functional?

To really answer this question, it helps to understand this maxim: the essence of a trademark is source identification. Always has been, and always will be. Even in the face of technology, which always seems to be pushing the envelope of how a company can truly engage a consumer, trademarks must maintain their source identifying capability. The beauty of the statutory definition of a trademark is that there are no restrictions on the form of the trademark, just so long as it serves the purpose of source-identification (and usually nothing more). For example, there is no statute or public policy that requires trademarks to cater exclusively to one of the five senses; any type of identifier that can be discerned by consumers is fair game for a trademark. This gives companies a lot of freedom in defining their brand. Given enough creativity and vision, a company could be quite unique in their branding endeavors. 


 
 
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There was once a time when you could stroll through an arcade and see a line of pinball machines, usually being played by very irate people gyrating the machine back and forth showing it “who’s boss”. Always a simple game with a simple user interface (what arcade game today has only two buttons and involves actual moving parts, not virtual humanoids or dynamically generated special effects?) today, most pinball machines have been replaced by games featuring the latter characteristics. It’s all for the good of the industry I hear, or at least that’s the idea I get when I watch videos like these where kids react to a GameBoy (summary: a lot of kids saw it as the equivalent of an old record player). After all, pinball machines still use… Coins! Oh the humanity. Besides presenting “old” types of gaming interfaces, pinball machines have fallen out of favor in the last few decades because they are expensive to repair and some of the parts are hard to find.

Despite the headwinds, there are still many pinball enthusiasts who are out there trying to save the game, much like Skee-Ball devotees are trying to save that game by instituting tournaments and generating buzz by deeming it a sport “almost recognized in the 2012 olympics”. These coin-toting strongmen, with a flare for slapping giant wooden boxes and shaking them harder than a 7.0 Richter Scale earthquake refuse to let go of their insatiable appetite for blinking lights, multiplier jackpots, and the ever-elusive quest to make the top score board.  

If your goal is to keep the game relevant (and thereby ensure that there are enough new games and suppliers/servicers to help keep pinball machines ticking), how do you convince a younger and increasingly-tech savvy generation that pinball can be fun? You do what any enterprising tycoon does: you turn to synergies; brand and copyright synergies, to be exact.