Thursday, October 16, 2014

Building Brands and Making Marks Part I: The Brand Selection Process

Whenever a client contacts me at the office or after a seminar and they are in the early critical stages of the brand selection process, it is as clear as any other time in the brand development process that the nuances and misconceptions many have with respect to the tenets of U.S. Trademark Law can pollute and prolong this process unnecessarily. 

If unassisted or ill-informed, a brand owner with a less than competent handle on trademark law can make decisions that later with have serious implications with respect to the registerability or enforceability of a trademark that while registered is still an extremely weak mark.

The first misconception I find that is helpful to clear up before proceeding with the "brandstorming" process is to highlight the differences as well as similarities seen between a strong brand and a strong trademark.

While each brand will present new and interesting consideration, in general, a strong brand does not necessarily result in a strong trademark and in fact, it is the very characteristics that make a brand strong that can actually work to invalidate or substantially weaken a trademark.  It is this apparent dichotomy that should always be on the forefront of a brand owners mind throughout each step of the brand selection process. 

To illustrate this point by way of extreme example, it is necessary to demonstrate the potential issues that can arise when a brand owner only focuses on one component when selecting a brand name, and in doing so, they fail to make a decision based on the recommended balancing of factors.

On one hand, a brand owner must take into consideration the factors relevant to selecting a strong brand.  On the other hand, and with varying degrees of overlap, they must also take into consideration those factors relevant to selecting an available trademark capable of registration and enforcement.

While every new brand will present new challenges, it is always important for brand owners to take notice of the respective interests at play and to highlight the ways in which the potential brand is complimentary to the development of a strong and enforceable trademark registrations and those ways that the brand being considered might be problematic when attempting to complete the trademark registration process.

So, how does a brand owner reconcile these sometimes conflicting motives and goals.  Should they sacrifice the enforceability and the registerability of a trademark in favor of a brand that is well known and strongly associated with those goods and services for which the brand is intended to be known?

Should a brand owner take into consideration the importance of future brand protection and valuation efforts during the selection process and perhaps add distinctive or distinguishing elements to an already known brand in hopes of artificially prescribing much needed distinctive elements to a trademark otherwise at risk of becoming diluted by virtue of some generic and/or descriptive characteristic in the brand name.

Sometimes, the very wording that makes a brand click in the minds of consumers is the same wording that leaves a trademark vulnerable to a finding that it is either weak or altogether incapable of being registered as a trademark.

The frustrating answer is often times "IT DEPENDS", and every selection process will be filled with unique considerations associated with the industry in questions and the kinds of words being used to connote a brand name with the goods and/or services for which the brand is ideally to be affiliated with in the minds of consumers.

Effective brand and trademark selection efforts should be taken seriously and it is at this point in the brand development process that a brand owner should find themselves a competent and effective trademark attorney.

Because a comprehensive trademark conflict search is the final check and balance for any advisable brand selection effort and because such searches can only be interpreted and analyzed in the manner necessary to determine conflicts or other registerability issues, a brand owner is almost invariably going to find a qualified trademark attorney is necessary to complete this final step in the brand selection process.

For Part I of our Anatomy of a Brand and Trademark Series we look to highlight the nuanced complexities that can sometimes unknowingly be at play in the brand selection process to highlight the first crucial stage that a brand owner will find a true use for IP counsel.

While a brand owner might not retain counsel until they actually commission a trademark search, the aforementioned dynamics and considerations discussed above will help ensure that a brand owner is at the very least mindful that there are various competing interests at play throughout this process and if a brand is too good to be true, there is usually a reason.

Sometimes a brand is so well known with respect to its association with a specific goods and/or service that its strength actually becomes a liability as the brand has crossed into the treacherous terrain of generalized trademarks, the place where a brand can be so strong that it can actually become worthless to a brand owner as they can no longer control the use and popular association of the brand name by consumers to describe the good or service itself. 

When this often unforeseen development occurs, a brand that was thoughtfully selected can quickly become in effect a brand that no longer functions to indicate the origin of a good or service and instead only helps to identify goods and/or services typical to the commercial settings in question.

As we want our clients and all brand owners to take all relevant and necessary points into consideration, we will be releasing a series covering commonly misunderstood or overlooked areas in the brand selection and trademark application process.

Now that we have covered the competing and at times conflicting nature of a brand and trademark, we will proceed next week to move onto the topic of trademark registerability and some of the important nuances of the actual application process that should be noted by all brand owners.

We aim for this series to appeal not to attorneys, IP attorneys should already be familiar with all of these issues and points and if they are not, they should be assisting clients in another area of law, but rather to appeal to actual brand owners most likely just beginning the process of finding a competent TM attorney or in other cases they have decided to brave this often difficult process themselves.

In any event, we hope for this series to be a helpful guide and way for brand owners not trained in the complexities of intellectual property law to gain enough insight into the law and the procedure to be aware of common pitfalls and the thought processes of the very best attorneys working in this field. 

Tuesday, September 9, 2014

The TTAB Trademark Tally: BIG CAT & the Benefits of FAME

Caterpillar Inc. may not be as recognizable as the most famous Hollywood Celebrities, but who says fame can't have its benefits for heavy machinery companies as well.

News out of Alexandria, Virginia this past week with the TTAB issuing an anticipated final ruling in the Caterpillar Inc. "BIG CAT" Opposition, Finding for the Opposer and Refusing the Registration of the Applican'ts BIG CAT Application. The final ruling came as the final step in the Opposition Filed By Caterpillar, Inc. in 2012 in their attempt to block an energy company's attempt to register the term "BIG CAT" in connection with various oil and gas well technology.

While an initial review of the basic variables in this Likelihood of Confusion Opposition might leave some practitioners and trademark aficionados unconvinced that the two respective channels of trade and the specific goods and services with which the respective marks are used in connection with over lap significantly enough to establish a likelihood of confusion, the TTAB Board made another crucial finding prior to proceeding with the aforementioned analysis so as to impact the criteria and analysis of facts in the analysis.

After careful examination of the evidence relating to the determination that Caterpillar's "CAT" trademark is famous and thus entitled to a more broad and pervasive level of protection.  The ownership of a famous trademark also entitles the owner of such a mark the benefit of a more careful examination by USPTO Examining Attorney's of new U.S. Trademark Applications that are themselves sufficiently similar to the famous Mark/s when comparing the look sound and feel of the Marks.

 The Board stated: "Nonetheless, as discussed infra, we have concluded that Opposer’s CAT marks are famous, in no small measure because, as the record shows, CAT-branded equipment is pervasive on natural gas well sites throughout the entire life-cycle of the well. Hence, based upon all of the evidence in the record, including the respective registrations and applications, there exists a relationship between Applicant’s hydrogeological technology 
and Opposer’s listed heavy machinery, engines and generator sets."
The BIG CAT Case is illustrative of the more favorable and broad application of the Likelihood of Confusion analysis that is employed when a Board recognized famous trademark is that mark which is allegedly being infringed upon by the Applicant's Mark.

The fame of the BIG CAT Mark resulted in a more strong and conclusive determination that the channels of trade within which the respective marks in the Opposition were sufficiently similar.  In addition, the goods and/or services themselves were deemed similar and overlapping and thus represented another indication that the Applicant's Mark represented a likelihood of confusion with the Opposer's Famous Marks.

Due to the strong evidence that resulted in the strong agreement that the Opposer's Mark was famous, the Board was able to issue a confident ruling that the Applicant's Mark did establish a likelihood of confusion with the Opposer's Famous Trademark/s and thus the Board, exercising their limited judicial and jurisdictional authority, ruled that the Applicant's Mark should be refused and subsequently cancelled on marked DEAD on the USPTO Principal Register.

For the TTAB's Final Ruling, the PDF Can Be Found Here.

Thursday, September 4, 2014

Sports and Branding: The Anatomy of The JOHNNY FOOTBALL Branding and Trademark Strategy

Over the past several years, the proliferation of trademark filings by athletes and their personal management companies has reflected a growing trend in sports branding that has athletes increasingly taking control of the mechanisms that make money for athletes and sports teams.  

While many sports contracts have athletes assigning over many of the rights in their personal brand to teams and sports organizations, the filing of trademark applications by athletes themselves shows how bold new strategies are working to shift the balance in this traditionally pro-team economic system. 

Below, Johnny Manziel's branding strategy is shown to focus largely on the filing of various trademarks not covered by the team owned components of an athletes personal brand (formal team jersey name).  

Because teams have no proprietary interest or ownership of nicknames for athletes, a move to shift commercial activities for sports merchandising has athletes squarely in charge of these new profit generating promotion and sales activities.