Posts Tagged: "brand identity"

A successful advertising campaign promotes goodwill and brand identity, spurring sales, revenue, and profit.  But success begets imitation.  All too often, imitators attempt to hijack a brand and, with it, all the blood, sweat, tears, and money invested in it. While there are some similarities, the unfortunate reality is trademark enforcement is more nuanced than a game of whack-a-mole.  Not every “mole” is worth whacking, some that are whacked may not respond favorably, and sometimes the mallet just is not strong enough to play. So, what should a trademark owner consider when determining whether to take enforcement action?  The first step is to identify the scope and strength of the trademark.  Next, it is important to determine whether enforcement will obtain the desired results.  Lastly, the impact of inaction should be examined.

Managing international trademark portfolios in the age of globalization can be a fickle endeavor.  Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an increasingly crowded and adversarial global marketplace.  When a brand attempts to gain a foothold with an emerging clientele, fortune tends to favor the strategically bold.  For this reason, companies are often trying to establish their IP rights in countries where actual use or implementation may not be in the cards for years.  In the case of trademarks, the benefits are obvious: if/when a product is launched, a service begins, or a brand is introduced, a strong and enforceable portfolio is waiting to greet and protect it.  However, in jurisdictions around the world, such a strategy leaves open the possibility of an attack on these rights, most commonly in the form of a non-use cancellation action. 

Lebron James and Nick Saban are well-known for dominance in their respective sports of basketball and college football. Recently they found themselves opposing each other in an intellectual property controversy. James’ Uninterrupted media company sent the University of Alabama a letter claiming Bama’s new barbershop themed show, “Shop Talk,” is infringing James’ similarly themed show, “The Shop.” The choice to send the demand letter has led to unintended, but foreseeable consequences for Uninterrupted.

Your business name is how people will identify with your goods and services, so you want to have one identity that is all your own. Simple enough really, at least in concept, but making a mistake at the selection stage will prove costly… It would seem virtually impossible to operate in the modern world without a website for your business, and soon it will be equally incomprehensible not to be using social media platforms in one way or another. The power of social media is only growing, and smart businesses are trying to position themselves to take advantage of the phenomenon. If you are serious about your business endeavors you too need to get in the social media game, and if you don’t already have a website for goodness sake get moving!

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services.

From a legal standpoint, a trademark that has no relation to the product or services offered will be the strongest type of mark. For example, trademarks such as “Google” for a search engine, “eBay” for online auctions and “Bose” for audio equipment make excellent and strong trademarks. Descriptive marks provide less trademark protection because if a term is descriptive it can be used by anyone else selling the same goods or providing the same services… Many sales and marketing people will gravitate toward descriptive marks for products and services hoping that potential customers will immediately identify the product or service being offered. This approach leads to a weak or sometimes even unprotectable trademarks.

While it is possible to copyright the design of a band logo, the band name itself is not copyrightable (see here and here). Band names are protectable under trademark law, because like brand names they allow us to distinguish one band’s music and identity from another. They are what enable us to distinguish between a “Beatles” record on the one hand, and a “Chipmunks” record on the other… The more unique the name, the greater the degree of trademark protection, but also the more the name will stand out and set the band apart from others, which is generally the goal.

Over the years, more and more companies have begun using Mascots (Characters and Personalities), some of which are real people, in addition to logos and company names to identify their brands. And given that there are so many different kinds of companies using Mascots, Characters, and Personalities, I’ve decided it would be fun to do a series on Brand Mascots that have become very popular and well known over the years starting with some of the best and ending with some of the creepiest (in my opinion) restaurant Mascots… One of my favorite Brand Mascots, not to mention highly clever campaigns of all time, is that of the Chick-fil-A Eat Mor Chikin®” Holstein Cows.

On October 5, 2016, a jury in Tiffany and Co. v. Costco Wholesale Corp. – litigated before Judge Swain of the Southern District Court of New York – awarded Tiffany & Co. (Tiffany) $8.25 million in punitive damages for willful and bad faith infringement of their trademark by defendant Costco Wholesale Corp. (Costco). This award, in combination with an earlier award of $5.5 million in profits and statutory damages, brings the total damages owed by Costco to $13.75 million. The case is particularly notable for several reasons, but specifically because punitive damages were awarded.

We understand governments have a responsibility to protect the health of their citizens and therefore, should regulate harmful products. However, there is no compelling evidence that restricting the use of brands will improve public health… The standardized packaging of tobacco products also sets a dangerous precedent for other goods and services, including alcoholic beverages, soft drinks, snack foods, fast foods and even baby formula, a number of which are already being targeted with severe packaging restrictions, including tobacco style plain packaging.

The top two spots on the list of the 100 most valuable brands are occupied this year, as last year, by Apple Inc. (NASDAQ:AAPL) and Google Inc. (NASDAQ:GOOG), respectively. These two companies have held their respective spots since 2013, when both were able to ouster The Coca-Cola Co. (NYSE:KO) from the leading position in the Interbrand study, which it had held since Interbrand began releasing the report in 2000. Interbrand’s top 10 global brands include a collection of Companies We Follow often here on IPWatchdog, including 4th-placed Microsoft Corp. (NASDAQ:MSFT), 5th-placed IBM (NYSE:IBM), 7th-placed Samsung Electronics Co. (KRX:005930), 8th-placed General Electric Company (NYSE:GE) and 10th-placed Amazon.com, Inc. (NASDAQ:AMZN).

We’ve all been there. The Marketing team comes up with a shortlist of branding ideas for the latest product or service – and at the top of the list is a brand which is descriptive. As trade mark lawyers, we wouldn’t be doing our jobs properly if we didn’t explain that the descriptive brand will be more difficult to register as a trade mark than a made-up, distinctive name (in the UK anyway). Plus, it’ll be harder to enforce. However, the appeal of a descriptive brand (simple and clear) can’t be denied, especially with internet searching and online sales now so important. In this post, we’ll take a look at a few obstacles to enforcing a descriptive brand in the UK and Europe, and how to overcome them.

A North American fondue restaurant franchise found out just how essential terminology management can be when it expanded into Mexico in 2010. A translation service provider previously translated its kitchen training materials into Spanish, specifically for the restaurant’s Spanish-speaking employees in the United States who originally came from various Latin American countries. Company executives thought the Spanish they were currently using would be sufficient for the menu and other materials to be used in Mexico. When the Mexican franchise owners visited the company’s U.S. headquarters, it quickly became clear that one dialect of Spanish is not always the same as another. Different countries have their own dialect with words and phrases unique to each culture.