Blog

Greetings!

A trademark can be anything that identifies one brand from its competition. Of course, words and images are the most common types of trademarks, but sounds, smells, textures and other unique marketing tools can be trademarks too. For example:

Sound:
The “sound of an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound” is registered for toy swords. Yes, that is the sound of a Lightsaber(R).
The sound of a human voice yodeling “YAHOO” is registered.
The sound of the spoken word “Expedia” followed by the words “dot com” sung by multiple voices, with each of the two words “dot” and “com” sung in harmony on the notes “G”, “B”, “D” and “G” is also registered.

Smell:
A “peppermint scent or fragrance” is registered for office supplies.
A “cherry scent” is registered for synthetic lubricants for high performance racing and recreational vehicles.

Texture:
A “velvet textured covering on the surface of a bottle of wine” is registered, as is a leather textured covering.

Packaging: Many packaging shapes are registered.
One of the the most well known trademarks around the world is the shape of a Coca-Cola bottle.
For more examples of product packaging shapes that are registered, see my old blog post.

Other:
Even “goats on a roof of grass” for promotion of restaurant services are protectable and registered with the USPTO! Last week, the Wall Street Journal featured a front page article about the success of the goats on the roof.
Peabody Hotels owns a registered trademark for “the live visual and motion elements of the The Peabody Duck March… The motion elements include the red carpet being rolled out, the appearance of the ducks and uniformed Duckmaster at the elevator door, and the march of the ducks down the red carpet, up the steps, and into the fountain where they begin swimming.”

What makes your branding unique? Words, logos, slogans, packages, and more can function as valuable trademarks. They are key for differentiating a business from its competition and significant assets to businesses.

Trademark Tip

Four basic steps will help your business obtain strong trademark and copyright protection.

+ Identify – What do I have that is intellectual property?
+ Notify – Provide proper trademark and copyright notices often and prominently.
+ Register – Register the most important and valuable intellectual property assets.
+ Contracts – Ensure that intellectual property rights are covered in contracts with employees, independent contractors, partners, manufacturers, distributors, etc.

While there are other elements to strong trademarks (monitoring and enforcement, for example), these four steps can be done by anyone to create a solid foundation for your intellectual property without too much investment. Identify, Notify, Register, and protect in Contracts. For a more detailed discussion of these issues, see my videos at www.erikpelton.tv

Trademarks in the News

Facebook Inc. has made a lot of news lately, even trademark news! Facebook recently filed more than 10 applications with the USPTO to register its “Like” button and the word LIKE.

Facebook "Like" button

 

The applications have all been denied initially due to conflicts or potential conflicts. Following a “letter of protest” filed by TiVo, the button has been refused registration. (TiVo owns registrations for use of the ‘thumbs up‘ and ‘thumbs down‘ symbols.)

TiVo button

 

In addition, applications filed earlier for ILIKE which cover, among other things “Internet based introduction and social networking services” and an application and registration for LIKE, owned by Like.com, block many of the Facebook applications.

Has Facebook overreached in this attempt? I certainly support protecting a wide variety and extensive amount of intellectual property to add value and stop others from infringing it. But even if Facebook were somehow able to obtain a trademark registration for LIKE or the Like button, it would – in my opinion – be virtually impossible to enforce. LIKE is common word, likely used by many websites (and many people) to note something with approval. And ‘thumbs up’ is also very common way to express one’s approval of something. The Facebook “LIKE” effort smells a little like Subway’s efforts to register the word footlong.

If LIKE is not generic, does it function as a trademark to identify the source of the services? My instinct is that it actually does function – that the combination of the button, the image, the color and the text create enough of a mark that when users see it on a website, if they are familiar with Facebook, know what clicking the button will do, namely lead to a connection with Facebook software to tell others that they recommend the page or post. If the LIKE button is not generic, perhaps it has acquired distinctiveness as a mark? If it is approved by the USPTO, perhaps competitors will oppose it in order to ensure that they will be permitted to use the word “like” when allowing users to make referrals.

Adding further interest to Facebook’s efforts to protect LIKE is the fact that Google last week acquired Like.com. For additional coverage and irogny, see the news story here, which has a Facebook “Like” button on it and another story features PCWorld.com’s thumbs up and down buttons.

Bottom line: In the end I think Facebook likely could register the LIKE button design upon showing acquired distinctiveness – only if it first overcomes the confusion issues, perhaps with consent agreements. But I think the word LIKE itself is generic and/or fails to function as a trademark. Ultimately, any registration received for the word LIKE or the button will be very difficult to enforce and may be opposed by competitors trying to ensure that Facebook will not try to muffle their use of the word “LIKE” or the ‘thumbs up’ symbol.

Irony: You can “like” our Facebook page here!

Firm News

I had the pleasure last week to participate in a lively panel discussion at Harrisburg University of Science and Technology’s Social Medial Summit in front of a sold out audience at the school’s beautiful facilities.

The panel, called Twittervention: Social Media & Legal Issues for Employers, Educators & Parents covered many legal issues for users, businesses, employees and employers.
Click here for the video (panel discussion begins at the 18 minute mark)

Did You Know?

Nissan’s LEAF electric car will be available in the next few months. Expect a lot of publicity and media coverage. I previously blogged here about the Chevy VOLT, which will also be coming to market soon. I like the VOLT name; it is suggestive of the electric function, and sounds fast and strong, which are excellent qualities for a car.

Automobile names are a huge part of any car’s marketing and certainly much time and money is spent developing these brand names. Names such as Mustang, Explorer, Xterra, Continental, Odyssey, Thunderbird, Outback, Viper and Corvette help form the image the marketers seek to create surrounding the car. Ideally, the brand names communicate ideas about the product that resonate with consumers.

So, what about LEAF? LEAF is certainly suggestive of nature and the environment, and for that reason the name is great. LEAF is also clean and quick sounding. I can foresee ad imagery featuring leaves falling and floating, or leaves changing colors or buds growing. The one shortfall for LEAF is that it does not convey anything about how the car performs or drives, and that may be the trickiest part of the marketing campaign – What will an electric car feel like? How fast will it accelerate?

Cars are no longer just about muscle or speed or luxury, and LEAF captures what the car is all about. In short, I love the name.

Nissan’s LEAF U.S. trademark application is here. Nissan has also applied to register the logo for “Zero Emission” which is part of the LEAF marketing campaign.

Lesson: Suggestive names are very powerful. They are strong and protectable trademarks that communicate a message to the consumer about the product or service.

Extra: There are some great lines in the recent Wall Street Journal review of the LEAF by Dan Neil. Choice excerpts:

“To spend time in the Leaf is to appreciate how vivid and sensual a conventional automobile is, with its furious cylinder detonations, spinning cams, fisted gear-packs and lashing steel driveline. Compared with the Leaf, driving a Ferrari is like ingesting mescaline.”
The headlamps “emerge like huge watery blisters from the front fenders. These headlamp casements are designed to channel streaming air away from the side mirrors, to reduce aero drag and wind noise. But still, yikes. Dogs won’t chase this thing.”

Suggestions

If there are any topics or issues you would like to see covered here, let us know!

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2011 Erik M. Pelton & Associates, PLLC.
ALL RIGHTS RESERVED.

Comments are closed.