Taco John’s Claims Rights in Taco Tuesday

The “Taco Tuesday” battle exploded on Twitter, blogs, NewsOK, Fox 25 News, and even Facebook.  Taco John’s owns U.S. Trademark Registration No. 1,572,589 for the mark TACO TUESDAY (seen below).  It appears that Taco John’s attorneys sent the Oklahoma City based Iguana Mexican Grill a letter notifying Iguana of Taco John’s alleged rights and registration.  Taco John’s also ordered Iguana to cease and desist usage of the hashtag #tacotuesday.

What started as an attempt by Taco John’s to assert its trademark rights, resulted in some fantastic PR for Iguana Grill.  For those of you that are not from Oklahoma, you should know that as Oklahomans, we stick together.  Iguana Grill has generously invested time and money into the community through volunteerism and food donations.  The Oklahoma City community is extremely loyal to Iguana and when everyone caught wind of Taco John’s requests, a frenzy of tweets ensued.  The community rallied around Iguana by voicing their support for the usage of “Taco Tuesday” on Twitter and Facebook.  Fans also showed their support by gathering at Iguana.  Iguana sold a record number of tacos on Tuesday – approximately 2,000 tacos.

Tuesday’s tweets included things like:

• “petition @tacojohns to stop copyright enforcement of #tacotuesday hashtag”
• “#tacotuesday is used all over CA! But qdoba uses #tacomonday. Who want #tacowednesday…Patent pending”
• “Potential new @iguanaokc promotion: @TacoJohns Sucks Tuesday #tacotuesday (They don’t have a patent on that one.)”
• “So does anyone know if ThirstyThursday has a copyright? If so, Who will hold a big party to celebrate the end? #tacotuesday”
• “Their trademark can’t keep the customers from calling it #TacoTuesday”

@TacoJohns even tweeted:

“Taco John’s holds the copyright to Taco Tuesday giving us the exclusive right to use and protect it.”

(Emphasis Added.)

So which one is it?  What exactly is Taco John’s trying to assert?  A patent?  A copyright?  A trademark?  It seems that even @TacoJohns needs some guidance as to the differences between copyrights and trademarks.  Taco John’s claim is centered around its alleged trademark, not copyright, for the phrase “Taco Tuesday.”

Generally speaking, patents protect inventions, copyrights protect creative works of authorship like music, photos, videos, and literary works, and trademarks protect brands.  Taco John’s is alleging that Taco Tuesday is their brand name, that they have trademark rights in it, and that Iguana cannot use it without their permission.  Are there legal arguments that could be made in response to Taco John’s?    Sure.  Does it matter that several other companies use the phrase “Taco Tuesday?”  Possibly.  But that is another post for another day.

For more information on the difference between patents, trademarks, and copyrights check out this PHOSITA blog post posted earlier last year.

Posted by Emily E. Campbell, August 4, 2010 at 6:43 am
Permalink: Taco John’s Claims Rights in Taco Tuesday
5 Comments

Facebook Shuts Down “Facebook Ultimate” iPad App

Such a sad story.  An independent developer and mom of two was unhappy with the features of the free Facebook client and tried to make a positive difference by creating the “Facebook Ultimate” app.  Unfortunately, the developer incorporated the term Facebook into the name of her app and even created a similar icon for the app.  (Seen at right.)  The app was recently shut down for supposed trademark infringement. 

Unfortunately, this is an all too common problem for startups and small businesses that do not have a legal team glued to their hip warning them about improperly using the trademarks, patents, and copyrights of others.  But, as my mom always said, there is a lesson in everything.  We can learn from this legal blunder.  Generally, it is a good idea to consult a legal professional who practices in the areas of patents, trademarks, and copyrights before releasing a new product into the marketplace.  In fact, it’s even better to consult a legal professional long before you are even thinking about releasing the product to the marketplace.  This way, you can avoid spending money to correct marketing materials, product packaging, etc.

Check out what some of the bigwigs, like Sony and Apple are doing to avoid trademark infringement in this article by Laurel Sutton of Catchword. 

In the end, a sad story for Facebook Ultimate, but a lesson we can all benefit from.  Please use caution when naming and branding your next big idea! 

Posted by Emily E. Campbell, April 6, 2010 at 1:45 pm
Permalink: Facebook Shuts Down “Facebook Ultimate” iPad App
6 Comments

Google’s April Fools’ Day Switcheroo to Topeka Brand Name

Google takes the prize for one of the best April Fools’ Day pranks of 2010.  If you haven’t heard, be sure to visit www.google.com before the days end.  Also, check out The Official Google Blog for more information about their “new” company name, Topeka.  The best part of the Google blog post is at the bottom.  Google notes that branded products can achieve such popularity that they can sometimes become generic (much like aspirin, cellophane and trampoline).  To be sure that Google’s new name is not subject to genericism, Google provides tips on how to use their new name. 

Kudos to Google for a great April Fools’ Day prank! 

Also thank you to Owen Smigelski (a fellow member of the International Trademark Association (INTA)) e-mail list, who pointed me to the Google blog post.

Posted by Emily E. Campbell, April 1, 2010 at 10:37 am
Permalink: Google’s April Fools’ Day Switcheroo to Topeka Brand Name
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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
3 Comments

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
3 Comments

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
4 Comments

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?
22 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
3 Comments

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
1 Comment

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
1 Comment