Category Archives: Branding

Using Crowdsourcing to Create New Trademark Might Be Bad Idea

The Dub the Dew campaign must have seemed like such a good idea at the time. After all, letting the Internet choose the name for a green-apple infused soft drink is great marketing and helps build brand loyalty, right? What could possibly go wrong?

Jack Daniels Doesn’t Want to Stop You But It Sort Of Has To….

I enjoyed this extremely polite cease and desist letter that Jack Daniels sent out recently to an author who “paid homage” to the iconic brand on the cover art for his book. Despite the fact that Jack Daniel’s in-house attorney is based in California, even my refined southern mother would have approved of the gentle and cordial tone of this cease and desist letter. Jack Daniels is doing a fine job of not being a trademark bully. I have great sympathy for the brand owner who has to protect its brand or lose its rights. To the general public, policing brands against something that doesn’t seem like that big of a deal makes the brand owner look like a real jerk who is using lawyers to coerce and intimidate. However,  doing nothing can drain all of the value out of the trademark owner’s most important asset–its brand.  There has got to be a happy medium and maybe Jack Daniels has struck the right note here.

Using the same form cease and desist letter for every situation, from the blatant infringer to the little league team who thought it would make a great nick name, is not a good idea. Sometimes, killing them with kindness is the right way to go.  At any rate, no matter how big of a hammer you have, you will always catch more flies with honey–or maybe a Jack and Coke. But  for goodness sake, put it in a real crystal glass, not a red Solo cup. Manners still matter.

Fear the Brow — Embracing Your Flaws as a Branding Strategy

Anthony Davis, who will likely be the No. 1 draft pick in this Thursday’s NBA Draft by the New Orleans Hornets, is serious about protecting his uni-brow. Davis, known for his rather dramatic and adjoining eyebrows, trademarked the phrases “Brow Down,” Fear The Brow” and “Raise The Brow” earlier this month for numerous products. Rather than bemoan what many would see as a slight beauty problem, Davis has wisely embraced the brow and set about to monetize it. There will be no waxing, plucking, threading  or shaving—instead Davis has long protected the look, including sending out cease and desist letters to anyone who catches his eye (brows) by attempting to capitalize on his unique features. Good for him. We should all be so self-accepting and self-confident. If only I could come up with a way to monetize my gray roots, rapidly declining eye sight and crows feet–I would have it made.

Who Wins the Race to Use A Trademark First?

In a shoot-off between two users of the same trademark, everything hinges on who used the mark first. It seems like this would be a simple determination: whoever can show that he or she used the mark first in commerce wins. Case closed. Like most things in the law, it is not quite that cut and dried. In order to establish that you are the senior user of a mark, you not only have to show that you used the mark first in commerce, you have to show that your use was “systematic and continuous.” People commonly assume that “continuous” means that you used the mark and you have never abandoned use of the mark. Because “abandonment” means non-use of a mark for some period of time (usually three years but can be shorter under some state statutes) with an intent not to resume use, most people think the “continuous” element is a lost cause when trying to attack another’s user’s seniority. However, an absence of abandonment is not the standard when determining whether the first one to use the mark made systematic and continuous use of it. Instead, in this context, “continuous” means “use without significant interruption.” 5 J. Thomas McCarthy on Trademarks, § 26:55 (2008) citing Casual Corner Associates, Inc. v. Casual Stores of Nevada, Inc., 493 F. 2d 709 (9th Cir. 1974) (non-use for one year was not “continuing” use).

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Garth Brooks wins Suit Against Hospital Who Failed to Name Hospital After his Mother

An Oklahoma hospital that failed to build a women’s health center in honor of Garth Brooks’ late mother must pay the superstar singer $1 million, so sayeth a jury of Oklahoma country music fans.

Last night, the Oklahoma jury found in favor of Garth and decided that that the hospital must return Brooks’ $500,000 donation as well as pay him an additional $500,000 in punitive damages. The decision came in Brooks’ breach-of-contract lawsuit against Integris Canadian Valley Regional Hospital in Yukon, Oklahoma, which is, incidentally, located on Garth Brooks Blvd. It was Garth’s position that he’d reached a deal with the Hospital’s president for the “naming rights” of the new health center in exchange for his 2005 donation. After taking the donation, the Hospital wanted to use the money for other construction projects. Garth sued and, in a move that can only be described as “ill-advised,” the Hospital let this case go to a jury.

I freely admit I don’t know anything about the legal specifics of this case and I would be curious to know if punitive damages are in fact available for breach of contract claims in Oklahoma. However, regardless of the strength of its legal claims, the Hospital should have resolved this mess before throwing it in the lap of the Honkey-Tonk Bar Association.  Everybody knows that Garth has Friends in Low Places and that an Oklahoma jury is going to find in favor of one of its favorite sons, especially when he’s donated big money to honor his late momma and especially when his country music star wife (the fabulous Trisha Yearwood) is sitting by him in the courtroom. And, while $1,000,000 (plus its own attorney fees) is certainly a lot of money, I bet the bigger cost is the damage to the Hospital’s brand. The Hospital comes off as an untrustworthy welcher in a case that has (unsurprisingly) recieved national attention. How many folks are going to be willing to make substantial donations to them at this point? While I guess it’s possible that Garth refused to settle this case and, as plaintiff, that would be his right, the Hospital should have sat down with Garth over a few Long-neck Bottles and worked this out. I bet Garth is presently on a beach somewhere with Trisha, yodeling out an “I told you so,” with Two Pina Coladas, one for each hand. After all, this isn’t his first Rodeo.

New York Times and Huffington Post Reach Motherlode of a Settlement of Blog Dispute – Who Owns Your Blog?

The New York Times and the Huffington Post don’t seem to like each other very much. This particular dispute arose when well-known parenting blogger Lisa Belkin left the New York Time’s Motherlode blog and started writing a new blog for the Huffington Post called “Parentlode.” The Times sued for trademark infringement in New York district court back in November, stating:

“In drawing attention to the purported relationship between the blogs and offering the Parentlode blog as a continuation of NYTCo’s Motherlode blog, Ms. Belkin clearly intended to create an association in the minds of readers between the two competing blogs and, further, her reference to the ‘new name’ was a deliberate attempt to mislead readers into mistakenly believing it was the same blog, albeit with a slightly different name and location.”

The Huffington Post didn’t help matters when the tagged Ms. Belkin’s posts “Motherlode.” I think this case raises some interesting points. Does announcing a “new name” for the blog indicate that this is the same blog that used to be over at the Times but now it simply has a new home base? Are readers confused into believing that the two blogs are the same thing, just in a new location? Do people read blogs because of the newspaper or website that hosts them or because they enjoy the personal writing style and insights of the poster? We’ll never know how the New York district court would have come out on this or even what the parties ultimately decided among themselves because the parties have reached a confidential settlement. We do know that in a recent blog post, Ms Belkin got in some digs:

“Things can get petty and prickly in the sandbox. Sometimes there’s that kid who throws the sand around, and won’t share toys, and picks fights instead of playing nicely.

What is a parent to do?

Well, you can fight back, but the end result will probably just be more thrown sand. Or you can take your child by the hand, smile benignly at the bully, then go off to the ice cream shop and have a delightful afternoon.

Make mine chocolate chip.”

She went on to announce that the Huffington Post was launching a contest to rename the blog and the winner will receive a trip to New York, lunch with Arianna Huffington, and, “to show there were no hard feelings,”  a year’s digital subscription to the New York Times.

We will likely see more of these sorts of cases in the unstable journalism world, where new reporters are encouraged to “brand themselves” because they don’t know how long the paper they currently work for will survive. The BBC addressed a similar issue when a popular reporter left and took 60,000 Twitter followers to a new employer. Much like the Phonedog Twitter ownership case that everyone is talking about now, this case points out the necessity of making sure everyone involved in a creative endeavor knows who owns what. If a blog, Twitter account, Facebook page, or fill-in-the-blank is work-related, the employer needs clear policies and employment contracts that state in plain language that the account is the intellectual property of the employer so there is no controversy later. Conversely, if an individual employee blogs to “brand” herself, she should bargain on the front-end for ownership of the blog so that it is clearly portable if she later changes jobs. This simple step can mean the difference between spending countless days at your lawyer’s office rather than going “off to the ice cream shop and having a delightful afternoon.” Make mine jamocoa almond fudge.

Greece and Macedonia Squabbling Over What Name Greece Calls Macedonia

You would think that Greece has bigger things to worry about but there is a lawsuit at the UN’s International Court of Justice (“ICJ”) stemming from the fact that Greece refuses to call Macedonia by the “correct” name. Macedonia claims that Greece broke an agreement between the two nations by blocking Macedonia’s entrance under its UN name into NATO and other international organizations. Macedonia’s UN or official name is “the former Yugoslav Republic of Macedonia.” Because Greece has its own province called “Macedonia,” it doesn’t want to recognize this name and instead calls Macedonia “TFYRM, ” an acronym for the official name. In a decision that came out of the ICJ this week, the UN agreed with Macedonia in the case but declined to order Greece to use the name and honor the earlier agreement. This dispute reminds me of many the argument I have mediated among my children….”He keeps calling me X!”

Was Abercrombie Trading on the Situation’s Brand?

Mike “The Situation” Sorrentino sued Abercrombie and Fitch (“A&F”) yesterday (MPS Entertainment LLC et al v. Abercrombie & Fitch Stores Inc., case number 1:11-cv-24110, (S.D. Fla.), claiming that A&F’s  recent marketing campaign traded on his “enormous popularity.” The Situation is one of the stars of the MTV reality show “Jersey Shore,” who according to Snookie, has already blown the money he’s made from the show).  A few months ago, A&F claimed that they made The Situation an offer of a substantial amount of money to stop wearing A&F clothes on the show because it harmed its “aspirational” brand. A&F then sold shirts emblazened with slogans like, “The Fitchuation” and “GTL, You Know the Deal.” According to Sorrentino, A&F never made any such offer to him and the whole thing was a publicity stunt to get thousands of articles written about the chain and create interest in A&F’s “situation” clothing. Does he have a point? I think he does. While A&F will undoubtedly claim that it was not making trademark use of the Situation’s name or catch phrases, that their shirts were “merely ornamental” i.e., the material on the front of the shirt was not supposed to be a source identifier but instead was just “for looks,” I think when you look at the facts as a whole, A&Fwas very cleverly trading on his name. Is that actionable or compensable? We’ll have to wait and see if the self-proclaimed “guido” gets his due.

Photographers: It Pays to Brand Yourself as an Artist

This photograph by Andreas Gursky sold at Christie’s last week for 4.3 million dollars. Evidently I have no taste whatsoever because this looks like envelope after envelope of the snapshots I used to take at church camp with my Kodak Instamatic, all of which are currently in an unlabeled box in my attic. It’s nice and everything, but 4.3 million dollars?? According to an unnamed source at Christies (who evidently didn’t think it was all that either), smart photographers are only creating a very limited number of copies of a particular photo and digitally altering them so that they are more like “art.” This ups the cache, ups the price, and ups their brand as an “artist.” I say power to them but you could buy your own farm with a river running through it for way less than 4.3 million dollars in my neck of the woods. I’d rather have that.