North Face v. South Butt

For the London Free Press – March 8, 2010

Read this on Canoe

U.S. courts may have to decide if a teen’s parody of a popular clothing line is an infringement

The North Face Apparel Co., more commonly known as The North Face, recently filed suit against Jimmy Winkelmann, a 19-year old high school student and his small Missouri clothing company called The South Butt.

North Face’s statement of claim alleges trademark infringement and dilution, among other claims.

North Face sells athletic apparel and gear for runners, rock climbers, snowboarders and others. South Butt sells jackets, T-shirts and other apparel “approved for relaxation purposes only.”

Winkelmann says his intent was not to rip off the North Face, but to offer consumers an alternative.

He came up with the South Butt idea to mock North Face fleece jackets worn by the popular crowd at his school.

In response to North Face’s tagline, “Never stop exploring”, South Butt adopted “Never stop relaxing.”

The North Face’s legal counsel sent Winkelmann a cease and desist letter in August 2009, requesting that he stop using the South Butt name and logo and halt all sales, production and promotion of South Butt products.

According to North Face, the two logos are so similar as to possibly cause “consumer confusion as to the source, sponsorship or affiliation of particular promotions and services that could dilute or tarnish the distinctive quality of the famous and distinctive marks.”

Winkelmann recently filed a trademark application for the South Butt, which the North Face legal counsel also asked him to withdraw.

In response, Winkelmann’s counsel — a friend of Winkelmann’s father, who apparently agreed to represent the teen in exchange for a good bottle of red wine — filed a somewhat irreverent defence.

Mr. Watson, Winkelmann’s legal counsel, stated “the sense of parody employed by Winkelmann within the context of his South Butt undertakings clearly demonstrate a respectful, if not faltering ‘anti-North Face’ posture designed in all respects to distinguish itself from any and all North Face products.”

The defence points out that, to emphasize its position that the marks are unlikely to confuse, the defendant added this to its website: “We are not in any fashion related to nor do we want to be confused with the North Face Apparel Corp. or its products sold under ‘the North Face’ brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

Unless it is settled, the case will ultimately be decided on the technicalities of U.S. trademark law.

Since one legal tests of trademark infringement is customer confusion, you be the judge: Are the marks confusing enough that customers might think products bearing them are from the same source?

Brand Promise – it’s not a bag of hair

That’s my Slaw post for today.  It reads as follows:

Conventional wisdom is that law firm web sites should contain a list of major deals the firm has worked on. I’ve always thought that was wrong – but didn’t really understand why until this morning.

I attended a TechAlliance breakfast club seminar where Nick Hall of Hall Associates ( @hallassociates ) spoke about Brand Promise.

One of the examples he used was a hairdresser. The brand experience a good hairdresser provides is confidence – not a haircut. Confidence that the hairdresser uses her/his expertise to make the customer look and thus feel good. That results in loyal customers who will come back and refer others.

If it was just about experience, a hairdresser would line their walls with bags of hair they had cut.

Law firm web sites listing all the deals they have done is like displaying bags of hair.

Brand names face the ire of the Internet

For the London Free Press – October 26, 2009

Read this on Canoe

CUSTOMER SATISFACTION: It’s a lot harder to manage online when reputations can be made or smeared by campaigns that may or may not be fair

An old customer service axiom says a dissatisfied consumer will tell eight other people about their experience.

Perhaps that axiom should now say 800, 8,000 or more, given that the Internet has made sharing dissatisfaction easier than ever.

The axiom emphasizes the importance of good customer service for business owners and the danger of even a few irritated customers.

The Internet and all its tools, such as websites, blogs, Facebook, Twitter, and YouTube is a double-edged sword for any entity promoting its brand.

It provides many tools to raise brand awareness and promote goods and services — but it also allows anyone to comment on a brand for all to see. Even brands selling quality goods and services will draw negative comments from someone, somewhere, even if undeserved.

Maytag learned this lesson first hand when a customer who was displeased with attempts to fix her washing machine voiced her displeasure on Twitter. She explained her complaints and asked her 1.3 million Twitter followers to join her in boycotting Maytag.

Though the company was aware of the posting and rectified the situation the next day, the damage was done — the dissatisfied customer had shared her aggravation with a very large audience.

Brands are becoming more about what people think of them, rather than what the brand owner tells people to think about them.

Where brands once could portray the image and message they wanted to represent, they now find themselves reacting to postings from bloggers and tweeters.

Recognizing this trend, tools are being introduced to let individuals comment on products more easily. Google, for instance, has introduced Sidewiki, which allows anyone to comment on anything on the Internet, whether the website owner condones their comments or not.

Sidewiki appears as an overlay on the side of the page that the Internet user is viewing. Users can make comments regarding the webpage they are viewing within the Sidewiki. For example, if the user is viewing the webpage of a restaurant they have eaten at recently, they could post a comment on their dining experience.

Such tools and the ability for anyone to comment strike fear into even the most reputable business.

Businesses are understandably concerned about a situation where even undeserved negative comments garner attention.

Reputation tools are, however, available to monitor comments posted on theInternet.

For example, Seth Godin has developed the Brands in Public website, which collects tweets, blog posts, news stories, images, videos and comments about a brand. With all the information in one place, companies can easily track what’s said about them.

Business owners should be aware of what people are saying about their products so they can respond accordingly.

Businesses generally can’t suppress negative comments — except to the extent they cross legal boundaries, such as defamation or intellectual property infringement — but they also can’t manage what they don’t know about.

Should Wordscraper have been named Melvin?

Techstuff Canada has a post that says the guys that created Scrabulous made a mistake when they renamed their game Wordscraper after the real Scrabble owner shut them down.

The posts states:

 “I’ll add just one observation: I think Wordscraper is a terrible name. As John Dvorak observed recently on TWiT, newspapers loved this story because “Scrabulous” is a fun word.” 

and goes on to say that: 

I think the brothers could have bought themselves a lot of goodwill — and more positive press — if they had gone with a new name that’s more fun (and sillier) than Wordscraper.   A name like Melvin, for example.

That’s a very good point.  Good trade-marks or brands need to be memorable, not descriptive.  

Unfortunately descriptive trade-marks are the first thing most people think of.  The thought process is: “how else is anyone going to know what my brand/product/service is?”    The right thought process is: “how can I make people remember my brand/product/service?”

Read the Techstuff post

BMW, Nissan in trade-mark collision

For the London Free Press – July 23, 2007

Read this on Canoe

UPDATE: A reader pointed out that since this article was written, the Federal court of Appeal overturned the section 7 finding, saying that BMW had not “used” the “M” mark. Thus BMW was not successful in stopping Nissan from using any of the “M” marks. Read the decision.

Two auto giants recently sparred in court over several trade-marks. The dispute between BMW and Nissan arose over the letter M and its design.

BMW uses the M combined with a number or a word as a trade-mark for its M-class line of luxury vehicles, parts and accessories. Nissan uses the M for a line of cars under its Infiniti luxury line.

BMW was successful in part after the Federal Court found that BMWs proprietary rights in its M, M3, M5, M6 and “M and design” were violated contrary to section 7 (b) of the Trademarks Act. Nissan was liable under this section of the Act with respect to BMW’s unregistered marks M and M6.

Section 7 essentially makes it illegal to pass off your wares as another’s, or to cause confusion between your wares and another’s.

BMW objected to the use by Nissan of the letter M standing alone in its advertisements and the use of M6 for a sports package developed for the Infiniti G35 or any other use of the letter M. The court found Nissan’s use of the letter M in 2005 and the descriptor M6 created a likelihood of confusion between the sources of the wares of both BMW and Nissan.

However, BMW was unsuccessful in claiming Nissan was liable for infringement and depreciation of goodwill under sections 20 and 22 of the Act. The judge felt that Nissan did not infringe BMW’s registered trade-marks M3, M5 and M and design after numerous witnesses were able to distinguish the marks. The witnesses’ initial inference did not create any lingering confusion with respect to the source of the wares in any sense that would have confused their vehicle purchasing process.

BMW’s goodwill was not significantly affected.

A large factor in the decision was the perspective the judge took in assessing the likelihood of a “mistaken inference.” He did not take the perspective of a casual consumer somewhat in a hurry.

Rather, he considered the process as the buyer of a luxury, high-performance vehicle. The latter considers many more details and is more systematic in the buying process than the hurried buyer with an imperfect recollection of details.

In other words, trade-marks can be more alike for luxury cars than for breakfast cereal.

The case is under appeal. No doubt the appeal will see both parties suggesting the different results under the two different sections are difficult to rationalize — but, of course, each picking a different one to support.

The partial judgment and order in favour of BMW has been stayed pending the appeal.

AT&T – Cingular – Sprint put Nascar in no win situation

According to Fierce Wireless, AT&T has sued Nascar as Nascar refuses to allow AT&T to put its branding on a car that is sponsored by Cingular. Since AT&T bouught Cingular, and is slowly changing its brand to AT&T – seems logical that they should be able to re-brand the car they sponsor.

The wrinkle is that Sprint Nextel is apparently a lead Nascar sponsor, with an agreement for exclusivity among telcos. Cingular was allowed to sponsor because it was grandfathered under that agreement – but only under the Cingular name.

Goes to show how tricky/dangerous exclusivity clauses can be for the party granting the exclusivity.

Read the FierceWireless post

Proposed Olympic trade-mark bill controversy

The Canadian government is considering draft legislation that will increase trade-mark protection for the Vancouver 2010 winter Olympics. This is not the first time countries have done this.

Detractors say there is no reason why the Olympics deserve special status. Others believe that the Olympics pose a unique situation that requires such protection.

For more details about the controversy, take a look at Howard Knopf’s Excess Copyright blog, including the comment to his post and the link to a CTV article.

Use, protect trade-mark

David Canton – for the London Free Press – February 13, 2007

Read this on Canoe

Businesses invest huge amounts of money and effort into branding, and usually protect that investment and goodwill by registering trade-marks for its brands. But a business can lose all its rights to its trade-mark registration if it doesn’t “use” the trade-mark as defined by law.

Trade-marks might be a logo, such as the Ford blue oval; a product name such as Dell; or a phrase such as Microsoft’s “Where do you want to go today.” Trade-mark legislation and court interpretations have defined “use” over the years to mean the use of the trade-mark precisely as it has been registered to provide the wares and services described in the trade-mark registration.

The law defines “use” for trade-mark purposes much more narrowly than one might think. For example, putting your logo on your building, while certainly a good thing to do, is not considered use for trade-mark purposes.

It is important to use the trade-mark on the product or its packaging if they are goods, and for services when the services are provided or advertised.

One common mistake — especially for design marks or logos — is to make changes to the mark without considering whether a new trade-mark application is required to protect the mark. It does not take much of a change to be considered a different mark and therefore not protected by the original registration.

A common mistake for word marks is to use the mark in a way that does not set the registered mark apart from other words around it. For example, if your trade-mark is the word “widget,” the word “widget” should appear in a different font, a different size, in bold type or some other way to make it clear it stands apart from the words around it.

It is common to see corporate names with Inc., Corp. or Ltd. in smaller letters or in a logo underneath the main portion of the name in some other font or design. That’s done in part to emphasize the part of the corporate name the business wants to be prominent, and also serves to protect trade-mark rights if that part of the corporate name is used as a brand.

Another risky proposition is to combine a registered mark with other marks – whether registered or unregistered. Courts have said a registered mark that is not used on its own, but is always used with other material, has not been used and therefore is not protected. It’s unfortunate when trade-mark rights are lost, or time and money have to be spent to try to defend one’s trade-marks because they were not used properly.

Businesses should consult with trade-mark counsel from time to time to ensure their mark uses and rights are preserved. More details about proper trade-mark use are available on my blog at www.canton.elegal.ca.

Cingular vs AT&T brand

I admit to wondering why AT&T decided to drop the Cingular brand after their merger. As a Canadian who is not within that market, all we see is spillover advertising. Just from that, it struck me that Cingular perhaps had a better brand image and more compelling ads.

But then I’m sure AT&T considered it carefully before they made that decision. Although it’s not unheard of for an aquiring entity just to assume their brand/business methods/etc. are better.

Techdirt has a post entitled When Choosing Between Two Brands, Why Keep The Less Popular One? that gets into this issue.

Its interesting not just for the Cingular / AT&T instance, but for branding in general. I often obtain trade-marks for the branding of small businesses that don’t have the budgets to spend on professional branding exercises. A common comment is that they did not realize how difficult it was to make branding decisions until they had to try to figure it out for themselves.

Read the Techdirt post

Zefrank on branding

Zefrank’s comment yesterday was a great explanation of what branding is all about. He refers to branding as a “shared emotional aftertaste”, and uses the concept to explain the recent over-reported “confession” in the Jonbenet case.

When we obtain trade-marks for clients, we are essentially offering legal protection for their brands. I’ve made the point before that good trade-marks are made, not born. In other words, one has to find a way to create that meaning, or shared emotional aftertaste.

His video is well worth watching. Just a cautionary note if you have never seen a Zefrank video. He’s a bit off the wall, and this contains some language that some may find not work friendly – but he has a unique way of putting things in perspective.

Watch Zefranks’ video