The value of a brand

Today’s Slaw post:

We all know that brand logos and names can be valuable assets and powerful promotional tools. Research has shown that children as young as 2 years old can recognize certain logos.

Some are created by company founders on their own, and some are the result of intensive work by advertising agencies. Pepsi spent a million dollars on its latest logo redesign. Nike paid a graphic design student $35 for its swoosh design.

These, and other interesting facts on designs are on this infographic published by FinancesOnline.com.

 

Review of Famous Business Logos: From Firefox To Apple
Prepared by financesonline.com | Author: Alex Hillsberg | See our Facebook

A really dumb idea

For the London Free Press – March 14, 2014

Read this at lfpress.com

In February a “Dumb Starbucks” store appeared in Los Angeles. At first glance the coffee shop may have seemed like any other Starbucks store, but it gave away “dumb” versions of items sold by the Seattle-based coffee company, such as “Dumb Iced Espresso” and “Dumb Vanilla Blond Roast”.

People lined up to get in when it first opened, many probably thinking it was a real Starbucks. At least, that is, until they noticed the word “Dumb” in from of all the signage and product names, saw the interior, or actually tasted the products.

Dumb Starbucks turned out to be a publicity stunt. To extend the ruse, the creators anticipated the “how is this legal?” question. They published FAQs stating that because of parody exceptions to copyright and trademark law adding the word ‘dumb” meant that they were technically “making fun” of Starbucks. The shop said that by doing this, it allowed them to use the Starbucks trademark under a law known as “fair use.” The FAQ defined fair use as a legal doctrine that permits use of copyrighted or trademarked material in a parody without permission from the rights holder.

Although the shop was a fully functioning coffee shop, the FAQ stated “that for legal reasons Dumb Starbucks needs to be categorized as a work of parody art. So, in the eyes of the law, our ‘coffee shop’ is actually an art gallery and the ‘coffee’ you’re buying is considered the art”.

This legal explanation caused a bit of a kerfuffle for a short time until it became apparent that the FAQ was as fake as the store.

That legal explanation was a nice try, but conveniently overlooked some things. Such as the fact that fair use exceptions like parody rely on a fairness test and are not absolute. And the fact that the basic purpose of adding “Dumb” to the Starbucks brands was to trade on the goodwill Starbucks has earned for their brands.

Parody and satire have existed as fair use exceptions to copyright and trademark law in the United States for some time. They were added to Canadian copyright law in 2012. The Canadian Copyright Act states that fair dealing (as it is called in Canada) for the purpose of research, private study, education, parody or satire does not infringe copyright.

To determine whether fair use or dealing is indeed fair, the courts look at criteria such as its purpose; its character; the amount; available alternatives; the nature of the work; and the effect of the use on the original work. In other words, was it a reasonable thing to do, how necessary was it, and might it hurt the copyright owner?

This turned out to be a short-lived publicity stunt, but if anyone actually thinks they can trade on the goodwill of another’s brand by simply adding “dumb” to the name to turn it into a parody or satire they are just, well, dumb.

http://harrisonpensa.com/lawyers/david-canton

Make your business trademark memorable

For the London Free Press – October 21, 2013 – Read this at LFPress.com

The name you choose for your business or your products is an important and lasting decision that can be critical to the overall identity and image of your business.

But coming up with a good business, brand, or product name is not always easy. Too often people have a name in mind that they are invested in either financially or emotionally, but the name is not wise from a legal perspective. It is best to get legal advice and do some searching.

A good brand or trademark is memorable, not descriptive. Think of “Apple” or “Ford”, for example. It is not uncommon for businesses to think of names that describe their products or services, which is a mistake. That does not help to set the product apart from the competition. Indeed, the trademarks act does not allow the registration of a trademark that is clearly descriptive of the product or its place of origin. For example, if you open an ice-cream store, you can’t protect the name “Cold Ice Cream”.

To obtain a corporate name, one only has to do a search of Canadian business names. But if a business wants to have an international or online presence, it is a good idea to search beyond the legal minimum. At the very least do a Google search, and a trademark registry search in countries where customers may be.

Also look at what domain names are available. Most businesses should have a web presence. While a domain name does not have to be the exact business or product name, it should be something intuitive for customers to try. And you don’t want your exact business name to be taken by a competitor, or be used in some way that might embarrass you.

It doesn’t hurt to see if the desired name is available as social media IDs. Similar to a domain name, a business’s Twitter or Facebook name does not have to be its exact name, but there should be a logical connection. You do not want your exact name to already be in use by a competitor.

Once you find a business or product name that works, it is worthwhile taking steps to protect it. Obtain domain names and social media ID’s immediately, even if you may not intend to use them right away. They are cheap and easy to get.

Also consider whether it is worthwhile registering the business or product name as a trademark in Canada, or other countries. If the name is an important marketing asset, it is worth the modest cost to register it as a trademark. While trademarks can be registered at any time, the risk in delaying is that someone else might register it first. While it may be possible to wrestle it back depending on the circumstances, it is far easier and cheaper to simply do it first.

http://harrisonpensa.com/lawyers/david-canton

Responsive marks – great concept – challenges trade-mark thinking

Todays Slaw post

The Whitney Museum of American Art in New York recently unveiled a simple, clever logo using a responsive “W”. A Wired article says “… the spindly zigzag design has been both praised for its modernity and criticized for its simplicity.”

Responsive design websites automatically adapt their configuration to the screen size you see it on. In the responsive W logo, the Museum changes the shape of the W to fit their use. To appreciate the cleverness and utility of this, look at the above video, the slideshow on the Wired article, and the designer’s explanation of the design.

As brilliant and useful as it is, it is an example of cutting edge thinking challenging current legal doctrine. Trade-marks lose protection when they stray very far off the version that is registered. That’s why, for example, if there is a vertical and a horizontal version of a trade-mark, both versions are usually registered. To protect a responsive mark like this, one would obviously register the main form. But it would also cause some reflection as to how far that protection extends to an infinite number of responsive versions, and how best to try to protect those.

What’s in a name?

Today’s Slaw post:

We are always naming things – businesses, brands, trade-marks, domain names, and children.  But what makes a good or valuable name?  Naming anything can be a personal or emotional thing – but it is part science.

Take a brand name or trade-mark, for example.  The first choice of many for their business or product name is one that describes their business or product.  But that does nothing to distinguish that business or product from the competition.  Much better to have one that is unique and memorable, rather than descriptive.

Over the past decade it has become more important to adopt names that are internet and social media friendly.  It is often important to make sure that the name is available as a domain name or twitter handle.  Or at the very least that the obvious domain name or social media name that people would associate with it is not a competitor, or a site that you would not want people to associate or confuse you with.

A memorable or obvious domain name can of course be quite valuable on its own.  For domain names the most valuable ones are generic – like beer.com.  This infographic shows some factors that can increase or decrease the value of a domain name.

Social media has influenced baby names.  Parents have actually saddled children with names like hashtag and tweet.

Are we doing children a favour if we give them names that are available as domain names or social media handles?  Or at least names that are not common so they don’t get buried in search results with all the other John Smiths of the world?  (Google searches can get interesting when, for example, your last name can mean a corner pilaster, a flag corner, one of many cities, a territorial subdivision or township, and is used as the name of companies making loudspeakers,  auto racing parts, and wine barrels.)  Or are things going to change so rapidly that by the time they can take advantage of that it won’t matter?

Perhaps the Shakespeare quote “What’s in a name? That which we call a rose by any other name would smell as  sweet.” only applies these days if you can first find the rose on the net or social media.

http://harrisonpensa.com/lawyers/david-canton

 

Trade-marks displayed on a computer screen is “use”

Today’s Slaw post:

No big surprise here, but the Federal Court decision of HomeAway.com, Inc. v. Hrdlicka  stated that:

[22]           I find, therefore, that a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-Marks Act purposes, use and advertising in Canada.

One of the issues was whether the appearance of the trade-mark on a website viewable in Canada that originated from the United States was “use” of that trade-mark in Canada.  The site was for people wanting to rent homes, cottages or apartments for vacations, including some listed in Canada.

This makes perfect sense in the context of the facts where the website had Canadian listings.  But consider whether that statement is too broad in general.  For example, one would hope that if the facts were that the website was not aimed at or used by Canadians, the mere fact that a mark is on a website that can be seen from Canada should not constitute use in Canada.

http://harrisonpensa.com/lawyers/david-canton/

What’s that sound? A trademark

For the London Free Press – May 14, 2012 – Read this on Canoe

A movie studio’s roaring success opened the door for sounds to be trademarked

When one thinks of trademarks, the usual things that come to mind are word marks (the name of a company or product such as “Harrison Pensa” or “President’s Choice”) or design marks (the logo for a company or product such as the Ford blue oval or the McDonald’s arches).

Trademarks can also be registered for colour applied to an object (such as the Nerds On Site red cars, or the UPS brown delivery vehicles). And now we can register sounds as trademarks.

The Canadian Intellectual Property Office (CIPO) recently announced that it will accept applications for sound marks.

Sounds have been registrable as trademarks in the United States and other countries for some time. CIPO’s new position on accepting sound marks results from a long battle by Metro Goldwyn Mayer to register its roaring lion sound.

CIPO’s resistance to registering sound marks apparently arose because the wording of the trademarks act requires marks other than word marks to be filed as a drawing. Sound marks simply didn’t fit into the act’s registration requirements.

Many large brands have distinct sounds that form an important part of their television, radio and Internet advertising campaigns. It is logical that they should be able to file for a trademark for those, as they are no less of a brand than its word mark, logo or colour.

Indeed, sounds that don’t rely on language can become a powerful universal international brand.

We all recognize, for example, the MGM roar at the beginning of a movie, the NBC chimes on television shows and the Intel sound on computer ads.

An applicant for a sound mark registration will have to follow strict rules on the form of the application. It will also have to comply with requirements that apply to trademark registrations generally, such as not being descriptive, and not confusing with existing marks.

Applicants will need to file a recording of the sound, along with a description of the sound and a drawing representing the sound.

Now that these types of applications will be accepted, it will be interesting to see which companies rush to register their sounds in Canada, and how CIPO will approach its decisions regarding which sounds they will accept and which they will not.

http://harrisonpensa.com/lawyers/david-canton 

 

Trade-marks Office now accepts applications for sounds as trade-marks

A CIPO (Canadian Intellectual Property Office) practice notice issued yesterday says in part:

Trade-mark consisting of a sound

Publication Date: 2012-03-28

In view of a recent Federal Court Order, effective immediately, the Office will accept applications for sound marks.

The application for the registration of a trade-mark consisting of a sound should:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.

Where it is not clear whether an application is intended to cover a sound mark, the Office will ask the applicant for written clarification.

Where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of paragraph 12(1)(b) of the Trade-marks Act. In such cases, the mark may be registered pursuant to the provisions of subsection 12(2) or section 14 of the Act.

Trade-mark use descriptions get tricky with tech

That’s the title of my Slaw post for today.  It reads as follows.

Drafting proper trade-mark use descriptions when registering a trade-mark is important to get the right protection. Drafting uses can sometimes be a challenge when the wares or services the mark is used for is new and changing technology. The use description must accurately describe the wares and services the mark is used for, must stand the test of time, and must satisfy CIPO’s (Canadian Intellectual Property Office) rules on use descriptions.

Software is a good example of how things can rapidly change. If a business is selling software in the traditional manner where the user installs it on his/her computer, then from a trade-mark perspective, the software is a ware. It might be described, for example, as “Computer software for [describe function]”.

But if that software is being provided as an online service, then from a trade-mark perspective it is not a ware, it is a service. It might be described, for example, as “Online service providing [describe function]”.

Then we get to the smartphone world. If it is an app installed on a phone, it would be software. If it is coded in html5 and used through the phone’s browser, then it is a service.

Since wares and services are considered to be different things, you can get into the position where, for example, software brand X might be considered confusing with software brand X1 – but not be considered confusing with service brand X1 that provides the same function to the user.

XXX protection racket?

That’s the title of my Slaw post for today.  It reads as follows.

The .XXX top level domain application period is underway. This has been a very controversial topic. The XXX domain is available for users in the “sponsored community”, being the “adult entertainment industry”.

One of the criticisms of this TLD is the fear that people will try to register domains using names or trade-marks of those outside of the sponsored community. disney.XXX, or apple.XXX for example.

So a procedure is in place called “Sunrise B” where for a short period of time (September 7 to October 28), trade-mark owners can apply to have their marks blocked from registration. The wrinkle is that it costs hundreds of dollars to do that. Sunrise B applications are now being accepted.

So if you want to block your brand so others can’t use it to get a XXX TLD – the time to act is now.

But doesn’t this seem like a protection racket?