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Anatomy of backing down from a trademark infringement allegation

Posted by ipelton on: February 2nd, 2015

A few weeks ago, there was much hub-bub in the craft brewing world as Lagunitas filed a lawsuit against Sierra Neva alleging that the particular use of “IPA” on the label of Sierra’s Hop Hunter IPA constituted trademark infringement. See below for the comparison.

In essence, the lawsuit alleged that that Lagunitas had rights in the font and design used with the letters IPA, and that Sierra Nevada’s use of IPA was too similar.

The online backlash was rapid and large. How much protect could such a graphic, featuring the generic letters “IPA” really have? And Sierra Nevada’s lettering was not identical. And how many other beer labels use IPA in big bold lettering?

In a rare move, the complaining party quickly backed down and dropped the lawsuit. Not only was that fact and the speed with which it was done rather astonishing — you can imagine the discussions with the very same lawyers who advised them to file the lawsuit — but their public apology was tremendous It sounded sincere and not written exclusively by attorneys. Lagunitas posted the following message on their website on January 14, just one day after the lawsuit came to light and just two days after the lawsuit was filed:

Yesterday in the Lagunitas nexus of the Twitterverse was the worst day ever in 23 years of growing our brewery. Worst. Growing a business over time sometimes involves defending that business. Defending a business requires answers to Hard Questions. Questions like: Are our Foundations Strong? Are our Flavors right? Are our Labels, our very identity, something that we can defend? There are many courts in the world in which to find those answers. For us, over the last month, one court was a series of rebuffed phone calls to another brewer. Another was a court of law. Today was in the hands of the ultimate court; The Court of Public Opinion and in it we got an answer to our Question; Our flagship IPA’s registered federal trademark has limits. We don’t know the answer to every question beforehand so we feel around for the edges and we try to learn. Today we were seriously schooled and we heard you well…! The Customer is always right and here in the 21st Century that maxim is truer than ever. Today we will Drop the Infringement Suit & get back to work answering other questions instead. We needed to raise the question because it matters, and through the miracle of Twitter the answer came back much sooner than we thought and in a different Court than we expected. The best thing is to have friends. Can we say thank you?

Other’s accused of trademark mismanagement or trademark bullying should take notice — mistakes happen. Poor judgment exists. By owning the mistake and acknowledging it, some good can potentially balance the harm done to the brand that erred in its trademark judgement.

Note: While Chik-fil-A appears to have backed down from their complaints about EAT MORE KALE they have never issued any kind of a statement, explanation or apology. Their brand image may have suffered considerably less embarrassment and ridicule if they had done something similar to Lagunitas.

 

A US trademark application can be generally based on use in commerce or a “bona fide intent to use” the mark in commerce with the goods and services featured in the application. (Note that a US application can also be based on a foreign application or registration, but these are much more rare than “use” and “intent to use” applications.)

When an application is filed based upon an “intent to use” the mark with the goods and/or services, if it meets all the other procedural and substantive requirements for registration, proper evidence of use must be submitted before the registration process can be completed.

There are many benefits to filing an “intent to use” application – it allows the trademark owner to file as early as possible and begin preserving rights in the trademark and putting the public on notice regarding a new name, logo, or other trademark that it plans to use.  If a business is planning to use a name, but does not file to protect it with the USPTO until sales begin, someone else could come along and begin using a similar name, or file with the USPTO, during the pre-sales period and potentially usurp any rights to the name. The launch could then need to be re-done (likely with a  considerable expense and delay) or use of the name could be quite risky as it may not be unique and may even expose the user to a potential claim for infringement.

A necessary part of completing the “intent to use” application is the filing of the evidence which may be called a Statement of Use or an Amendment to Allege Use (“AAU”). The allegation of use has the following main elements:

  • specimen showing use of the trademark in connection with the relevant goods or services
  • the dates the mark was first used in commerce and first used anywhere
  • a proper signature on the declaration

An allegation of use could be submitted on paper or electronically. Below is an example, from the USPTO public records, of an electronically filed Allegation of Use.

SAMPLE Trademark Allegation of Use (AAU) by Erik Pelton


While you can file a trademark application – and begin getting some protection – before using it, provided you have a “bona fide intent” to the trademark in commerce with the goods or services in the application, the application process cannot be completed unless all the requirements for registration are met including the submission of acceptable evidence of use.

Anatomy of great branding: the Heinz keystone

Posted by ipelton on: December 27th, 2013

At a recent hockey game, I stumbled upon some brilliant marketing and holistic branding. As detailed in the photos below, the concession stand ketchup and mustard are Heinz brand — as you can tell from the logo on the front. Did you notice that the shape of the entire condiment case was the Heinz keystone?

The keystone shape is registered by Heinz. It appears on most or all of their labels. And it has great meaning. Pennsylvania, the home of Heinz, is the “keystone” state.  It is simple. It is unique. It has meaning and a story behind it. It symbolizes strength and significance. I love it.

And Heinz uses it everywhere – which they should. To show off their brand.  The purpose of trademark law is to communicate the source of the goods to consumers.  The Heinz keystone does just that.

photo 1

photo 2

 What is the keystone of your business? Does your brand – brand name, logo, slogan – capture it in some way?

Related Posts:

 

ESPN is one of the most profitable television products today. And their brand is quite strong.  The brand is also very well protected with a plethora of trademark registrations covering sounds, logos, slogans, and more.

ESPN has created names for much of its programming and many of its special features. Protecting such names makes the features that much more special, protected, and unique. For example, the following list of ESPN registrations at the USPTO covers a wide spectrum of marks [click marks for USPTO records]:

Channels:

Slogans:

Program segments or online features:

Created program “hype”:

Events:

Show names:

Logos:

  • Trademark image
  • Mark Image
  • Trademark image
  • Trademark image

 

Non-traditional Marks

Anatomy of great branding: LEGO

Posted by ipelton on: September 13th, 2013

My children love Legos.  And I did as a kid too.  I have come to appreciate that LEGO® is an incredible brand. Like Levi’s, they have a unique name and a unique shape associated with their brand. And their marketing often plays off the unique shape – a non-traditional trademark – and reinforcing its value.

What do I mean?  These photo are from the Lego store at Tyson’s corner (via http://stores.lego.com/en-us/stores/us/tysons-corner/). Notice the Lego peg piece shape forming the bins. And in the light fixtures?

PAB Wall

Full Store

And the Lego brand has protected itself with trademarks, for example these are registered (click for USPTO records) for different goods and services:

Trademark image

Trademark image

Trademark image

Trademark image

Trademark image

Trademark image