Brands that are weird – Avoiding the Waldo Paradox

The Ignite phenomenon is bubbling up throughout the world and it is happening within the state of Oklahoma as well (yes, even Oklahoma!)

Last week was the first Ignite Tulsa event and our own Emily Campbell dove into the fray with a talk entitled “How Not to be Waldo: Brands that Stand Out in a Crowd.”  I may be a bit biased – but she rocked it!

Emily’s mantra of “Be Weird, Be Different and Think Outside the Box” is a great way of thinking about your branding efforts and the need to stand out in a crowd.

It is a bit unusual for an attorney to be thinking about branding – Emily may have some additional thoughts on that topic – but, when you think about it – it makes perfect sense.  Trademark attorneys see the process at all stages – conceptualization (doing the clearance searches), design and development (filing intent to use applications), and product launch (filing statements of use), to name but a few.

As we say around here, the job of a good trademark attorney is to take you all the way from the minefield of cluttered competing corporate interests to the end point of bringing everything to a succesful conclusion – a customer buying the product and associating the product with the reputation and messaging you wish to develop.  Dare I say it – taking it from a Mess to Yes™

As you saw on PHOSITA last week, the IgniteOKC folks are working on launching their first event and are looking for volunteers and thought leaders.  The first planning meeting was last night – but there is still room for more help.  Drop Emily Campbell an email if you are interested.

Posted by Douglas Sorocco, September 24, 2009 at 10:27 am
Permalink: Brands that are weird – Avoiding the Waldo Paradox
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Confessions of a Trademark Junkie

It’s been awhile since I’ve provided commentary on the blog but after attending a local marketing presentation, I just had to share my two cents about the event. 

“Hey Emily!  What are you up to next Tuesday?  Let me tell you – I just signed you up to attend a marketing presentation.  It will be a good experience for you and you may pick up a few tips on branding.” 

Little did I know but the President of our firm signed me up to attend a marketing presentation conducted by a local news station at a nearby hotel.  Sounds interesting.  I’m game for learning new things.

I arrived only to be greeted by an account executive, a woman who shall remain nameless, that claimed she “researched” our “company” before the event “but couldn’t seem to remember what our website said.”  Since she obviously did not read our website, she will likely not read this article nor be ashamed that I am now revealing this information about her.  “What is a codding?” she asked.  I just chuckled.  Not a great way to start a sales pitch — Ay yay yay.

This account executive was whisked away to attend to another guest.  Although everyone else in the room was paired with another account executive, I was now left alone.  I was then approached by another account executive – AE #2, but who’s keeping track?  He started to lay the sales tactics on thick, explaining the marketing program to me and the wonderful opportunities television advertising could offer to our firm.

Luckily, after a few minutes, we were directed to a second room where a presentation was about to begin.  (At this point I had an eerie flashback to sorority rush – is there a skit about to take place?)  A third, yes third, account executive introduces himself to me.  We sit down to watch a video presentation about television marketing. 

After the video presentation, a PowerPoint presentation begins.  The speaker talks about how television marketing can raise consumer awareness of your brand.  I perked up when he flashed a bunch of trademarks up on the screen.  Sadly though, he lost me when he started to explain brands as generic source identifiers. 

“What is this?” he said as he pointed to a picture of some cell phones and MP3 players.  “iPhones and iPods” someone said.  “When your little one gets a ‘boo-boo,’ what do they ask for?” he asked.  “A Band-Aid.”  “Exactly,” he says, “they don’t ask for a self-adhesive strip, they ask for a Band-Aid.” 

I spent the next five minutes explaining to my third account executive that local television advertising is probably not the appropriate avenue to advertise our law firm’s services.  Once he got the hint that I was not prepared to sign on the dotted line, we spent the next ten minutes or so discussing the dichotomy between brand awareness and single-source brand awareness. 

There is an unfortunate disconnect between marketing and legal (particularly trademark) departments.  This was evident in the presentation I had just witnessed.  During the presentation, the speaker genericised each trademark he discussed, referring to all MP3 players as “iPods” and all self-adhesive strips as “Band-Aids.” 

I think Johnson & Johnson’s trademark attorneys would have groaned when the presenter referred to their products as Band-Aids, rather than Band-Aid® brand adhesive bandages.  Has all their hard work been ignored?  What about their catchy theme song?  “I am stuck on Band-Aid® Brand cause Band-Aid®’s stuck on me.” 

I asked the third account executive if he understood that trademark rights could be completely lost if a brand becomes generic.  Brands like Aspirin, Escalator, and Trampoline are a few examples of things that were once brands but are now simply generic terms for acetylsalicylic acid, moving staircases, and rebound tumblers. 

From a trademark perspective, while we would like for people to be aware of brands, what’s equally as important is that people know that the brand represents a single source and not a generic line of products.  We want people to think of only one source or one company when they think of Band-Aid® brand adhesive bandages.  We want people to know that the brand of self-adhesive bandages that they can trust is Band-Aid® brand adhesive bandages because the brand stands for quality and consistency.  When you buy Band-Aid® brand adhesive bandages, you know that it will protect your little-one’s boo-boos.

“So how can we do this,” the third account executive asked. “How can we raise consumer awareness while at the same time, point to only one source of those products?”

Start with making sure that the company itself is properly using the brand.  There are few rules for proper trademark usage that should be shared with the advertising and marketing department so that everyone is on the same page. 

Rule number one — never use a trademark as a noun and stay vigilant in keeping others from using your mark as a noun.  For example, The Lego Company warns users against using the term LEGO® as a noun – if you enter the term “legos” into a search engine, the following statement would appear:

Using a trademark as a noun is a sure-fire way to transform your brand into a generic term for a particular type of product.  Consider the following – “My kids love to play with LEGOS.”  In the first example, the speaker could be referring to store bought bricks, The Original Toy CompanyTM bricks, Playskool® bricks, or LEGO® bricks since the speaker is using the term LEGOS to mean bricks.  To use the brand properly, the brand should be used as an adjective.  For example, the following would be appropriate – “My kids love to play with LEGO bricks.”

Another strategy companies can use to protect their brand names is to monitor and manage external usage of the mark.  You should educate the media about proper usage of your company’s brands and also send reminder letters and, in some cases, cease and desist letters to third parties who are incorrectly using your marks. 

If you find that someone is potentially infringing upon your company’s brands, you should perform some level of due diligence to protect what is, in many cases, a company’s most valuable asset – it’s reputation.

So, what did a trademark attorney attending a “sales dog and pony show” learn – well, raising awareness of your brand is one thing, but making sure that consumers associate that brand with only one source of products is another.  After all, what we don’t want, is for people to see our brand and think of a generic line of products.  We want our advertising to encourage people to buy our product, not just any product. 

Oh, and if you are still wondering what a Codding is, please check out our firm website at www.dunlapcodding.com.   

Posted by Emily E. Campbell, September 1, 2009 at 5:44 pm
Permalink: Confessions of a Trademark Junkie
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What Makes a Successful Brand – Pepsi vs Coca-Cola

Consumerist posted this chart and, like them, I find it fascinating regarding the notion of branding and trademarks.

The evolution of the Pepsi logo over time doesn’t strike me as coming from a place of strength – whereas the Coca-Cola logo appears to be timeless.

The red scripted colors cause an obvious problem with the Coca-Cola logo and the bottle cap visual dates the logo to a particular technology that has been long discarded.

Beyond the simple curiosity factor – this is a great example of spending time choosing a name, logo, colors etc. that don’t tie your brand to a particular technology, place in time, etc.  

Getting from the “mess to yes” is a complicated task – but when it is executed correctly – the outcome should be timeless.

I must admit that the 1973 Pepsi logo made me recall spending summer evenings at the lake with my family…

So the question is — Does a “good” brand evolve over time or is it something that has “it” at the moment of conception. Just a little something fun for the dog days of summer.

Posted by Douglas Sorocco, August 3, 2009 at 4:08 pm
Permalink: What Makes a Successful Brand – Pepsi vs Coca-Cola
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what is the difference between a patent, a trademark and a copyright?

Considering how complex intellectual property law can be, it is understandable that many people – including authors, journalists, biz and tech bloggers, tweeple, etc. – confuse the terms and oftentimes speak/write of “patenting a book” or “copywriting a new gadget”.  I also receive a large number of requests asking for advice on how to “copyright an idea” – so, I thought it would be helpful to lay out a short and concise explanation of each area of intellectual property law.

First, what do I mean by the term “intellectual property”?  According to Tech Terms Online:

“Intellectual property refers to the ownership of intangible and non-physical goods.  …  Since intellectual property is intangible, it is more difficult to protect than other types of property.”

While this is a fairly reasonable definition, I prefer to use a more shorthand version: “Intellectual property is something that is created by the mind.”  Typically, we think of ideas as being created by the mind – but intellectual property does not protect bare ideas: rather, it is the expression or symbolic power/recognizability of the ideas that are protected. 

Thus, it is the design of the rocket that is patented, not the idea of a rocket.  It is the painting of the lake that is copyrighted, not the idea of a lake.  And it is the consumer recognizable logo that is trademarked, not the idea of a logo.  Intellectual property protects how we express and identify ideas in concrete ways – not the idea itself.

In particular:

• Patents: protect functional expressions of an idea – not the idea itself.  A machines, method/process, manufacture, compositions of matter, and improvements of any of these items can be patented.  Thus, I can patent a design for the nozzle on a rocket, or the method of making the rocket, or the method of making the rocket fuel, or the metal in which the rocket fuel is stored, or a new way of transporting the rocket fuel to the rocket.  But I cannot patent the broad “idea” of a rocket.
   
• Copyrights: protect the specific creative expression of an idea through any medium of artistic/creative expression – i.e., paintings, photographs, sculpture, writings, software, etc.   A copyright protects your painting of a haystack, but it would not prohibit another painter from expressing their artistry or viewpoint by also painting a haystack. Likewise, while Ian Fleming was able to receive a copyright on his particular expression of the idea of a secret agent (i.e., a debonair English secret agent), he could not prevent Rich Wilkes from receiving a copyright on his expression of the idea of a secret agent (i.e., a tattooed bald extreme athlete turned reluctant secret agent).  
   
• Trademarks: protect any symbol that indicates the source or origin of the goods or services to which it is affixed.  While a trademark can be extremely valuable to its owner, the ultimate purpose of a trademark is to protect consumers – that is, the function of a trademark is to inform the consumer where the goods or services originate.  The consumer, knowing the origin of the goods, can make purchasing decisions based on prior knowledge, reputation or marketing. 

While each category is distinct, a product (or components/aspects of a product) may fall into one or more of the categories.  For example, software can be protected by both patents and copyrights.  The copyright would protect the artistic expression of the idea – i.e., the code itself – while the patent would protect the functional expression of the idea – e.g., using a single click to purchase a book online.  Likewise, it is likely that the software company will use a trademark to indicate who made the software. 

An additional example would be a logo for a company.  The logo may serve as a trademark indicating that all products affixed with the logo are from the same source.  The creative and artistic aspects of the logo may also be protected by a copyright. 

The complexity of intellectual property protection increases exponentially during the life cycle of innovation, research, product development, etc.  A single product may contain, for example, more than one patentable feature, one or more creative or artistic expressions that may be protected by copyright, and one or more trademarks indicating the source of the product.  All of these points of intellectual property provide an opportunity for protection and/or an opportunity for infringement of a third party’s intellectual property.

So – while it is simple and straightforward (well, mostly) to differentiate between the different aspects of intellectual property, it is a more difficult process to implement a strategic path forward and determine which type(s) of intellectual property protection are appropriate/desirable.

I am sure that PHOSITA readers will quibble, argue and debate me to death on the above-referenced “short hand” guides to intellectual property.  Drop your thoughts/short hand (keep it clean) into the comments.

(Photograph by Halima Ahkdar, used under Creative Commons license.)

Posted by Douglas Sorocco, January 11, 2009 at 10:03 pm
Permalink: what is the difference between a patent, a trademark and a copyright?
20 Comments

Test your trademark knowledge

For a fun way to kill a few minutes, check out this Company Logo Quiz on AOL.com.  How strong is your trademark awareness? 

Posted by Douglas Sorocco, February 20, 2008 at 5:35 pm
Permalink: Test your trademark knowledge
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Scrabble v. Scrabulous

Check out this statement from an article that I read today:   

Now, as if you needed more proof that we live in a time in which stuffy lawyers don’t dig the digital age, take a look at this: It looks like toy-makers Hasbro and Mattel have sent their legal goons to Facebook and demanded that it remove the immensely popular ‘Scrabulous’ from its site.

Woah, woah, woah.  Come on, that wasn’t very nice.  Let me explain.  Hasbro and Mattel have probably asked their Intellectual Property attorneys to look into this matter.  Intellectual property attorneys dig the digital age.  In fact, we are advocates for the digital age.  That is why we have chosen to devote our working lives trying to protect the very technology and innovation that you create. 

If intellectual property attorneys did not step in and advocate for our clients intellectual rights, like the copyright and trademark rights of Scrabble®, everything would be free game and copying and stealing would suddenly become the norm.  In fact it’s legal goons like us that advocate and protect the copyright held in the very article written above.

Trust me, I may be a legal goon, but I dig the digital age. 

Posted by Douglas Sorocco, January 17, 2008 at 2:01 pm
Permalink: Scrabble v. Scrabulous
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Ode to the Trademark

I probably should have left the IP poem writing to Laura and Michael but I decided to take a stab at it.  Here goes…

A trademark can be a color,
Like John Deere® green, it can’t be confused with any other.

A trademark can be a logo,
Like the Nike® swoosh, you’ll recognize it anywhere, even if you’re on the gogo.

A trademark can be product packaging,
Like the Coke® bottle, you recognize the shape, you’ll never wonder… what is that thing?

A trademark can be a slogan,
Like Bud Light®’s catchy phrase, “I Love You … Man!”

And in closing,
I- P, you P, we all P for I – P! 

Posted by Douglas Sorocco, October 5, 2007 at 5:04 pm
Permalink: Ode to the Trademark
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An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes

Over the Memorial Day weekend my husband and I went to Austin, Texas to visit his family and low and behold while we were there visions of intellectual property danced in my head. 

Other than being the home of the University of Texas Longhorns (a huge rival of my alma matter, the University of Oklahoma), Austin is a great town rich with arts and entertainment and outdoor recreation.  While in town we wanted to try and get tickets to see Mr. Sinus Theater.  Mr. Sinus Theater was a live comedic spin off of Mystery Science Theater 3000 mocking films such as Top Gun, The Terminator, and yes, even Britney Spear’s breakthrough film, Crossroads.  As you might have guessed, a quick search on the internet to find tickets revealed that Mr. Sinus Theater was sued in 2004 by the creators of Mystery Science Theater 3000 over trademark issues.  Apparently earlier in 2003, Mr. Sinus Theater contacted Best Brains Inc., owners and producers of Mystery Science Theater 3000, to license the mark but to no avail.  After deciding that Mr. Sinus’ adult-type humor went against the spirit of Mystery Science Theater 3000, Best Brains Inc. filed suit.

But don’t worry this was not the end of Mr. Sinus Theater.  Mr. Sinus Theater later changed its name to The Sinus Show.  Although the comedy group decided later to part ways, in January 2007 one of the original members formed Master Pancake Theater under the same movie-mockery premise.  You can see Master Pancake Theater at the Alamo Drafthouse in Austin, TX.  Currently they are showing The Breakfast Club, for show times click here. 

Also during my weekend, I woke up after a nap to a television blasting in the background, “Katie Holmes Threatening Legal Action Against Porn Star”.  What?!  Sure enough, a fashion student who is hoping to launch a career as a porn star recently changed her name to Katee Holmes.  Apparently, “Katee is using the name as a tribute to Katie, who has always portrayed in innocence in everything she’s done, beginning with ‘Dawson’s Creek.’ “. 

This could get interesting.

Posted by Douglas Sorocco, May 30, 2007 at 4:07 pm
Permalink: An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes
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hershey’s joins the war on drugs; uses trademarks to fight munchies

Fox News reported Sunday that Hershey’s Candy has filed suit against Kenneth Affolter, a 40–year-old man recently sentenced to 5 years in prison for selling marijuana-laced candies and sodas.  Hershey’s is seeking $100,000 in damages for trademark infringment, trademark dilution, and unfair competition.

Affolter sold a number of snacks with names such as Rasta Reese’s, Stoney Ranchers, and Keef Kats, in packaging similar to Reese’s, Jolly Ranchers, and Kit Kat, respectively.

Additionally, it appears that Affolter may have infringed the trademarks of Jones Soda, Pepsi, and Coca-Cola.  Oddly enough, he was apparently careful to avoid infringing the beverage mark “Marijuana” registered to Daniel Sinclair, Jr. of Louisiana.

Despite the importance of policing one’s mark, I can’t help but wonder if Hershey’s has considered the reduction in legitimate candy sales that such an attack on appetite-inducing imitations could entail.  Fortunately for Hershey’s, this litigation may be relatively inexpensive, as likelihood of confusion should be easier to prove among THC-intoxicated consumers.

Posted by Douglas Sorocco, May 22, 2007 at 9:08 am
Permalink: hershey’s joins the war on drugs; uses trademarks to fight munchies
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No "Big Love" for use of a Mormon Trademark

In a recent article by the Associated Press, the Church of Jesus Christ of Latter-day Saints sent a cease and desist letter to Just Add Coffee, a Utah coffee shop, for using the image of a robed angel holding a trumpet up at an angle as coffee is poured into it.  The Utah coffee shop used the image in ads and to sell t-shirts and greeting cards.  The church claims that the image of the angel Moroni is a registered trademark. 

What’s even more interesting is the lengths to which the church has gone to protect its intellectual property rights.  The Church of Jesus Christ of Latter-day Saints has set up a non-profit corporation, the Intellectual Reserve, Inc., which owns most of the church’s intellectual property.  Most notably, in 1999, the Intellectual Reserve filed suit against Utah Lighthouse Ministries, Inc. seeking a preliminary injunction for copyright infringement.  The Intellectual Reserve claimed that the defendants were infringing their copyrights held in a Church Handbook of Instructions by posting it on a website.  The court granted the preliminary injunction.        

Sidebar comment: While writing this article I couldn’t help but to think back to the great South Park episode “All About Mormons”.  If you haven’t seen it, you can check out a summary of the episode here.

Posted by Douglas Sorocco, March 30, 2007 at 4:47 pm
Permalink: No "Big Love" for use of a Mormon Trademark
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