TMBC now on WordPress

TMBC is now fully functional on my hosted WordPress blog.

Please visit tmbrandingcap.com for new updates.

All old posts have migrated.

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New WordPress Version

I've decided to make the switch to a hosted WordPress installation for this blog. Please visit tmbrandingcap.com for further posts. I am excited about exploring the many options and plug-ins available to WordPress.

I'm in the process of migrating over my old posts, but for some reason it is agonizingly slow. So don't be surprised if you see the old posts migrating over a period of days. The connection between my server and blogger seems to be timing out after a second or two. And at 114 posts, the migration will be very slow.

I've always liked the look of Scarcliff's blog at Cultural Branding: Naming Language Design Experience. As I was thinking about the switch to WordPress, I found out that they're using the Cutline WordPress Theme developed by Chris Pearson, and now owned and managed by Brian Gardner. Chris designed the look for the great blog Copyblogger and released the Copyblogger Theme for WordPress. Well, long story short, I'm using the Cutline theme for the new TMBC. Hope you like it as much as I do.

Band Agreement Checklist

Thinking of starting or forming a band? Danica Mathes has a nice article with a list of issues to consider in drafting a band agreement.

Technorati Tags: entertainment, agreements, checklist, band, music

Any takers?

My blog is worth $9,032.64.
How much is your blog worth?

Hat tip: Red Hot Copywriting

Fast Company on Brand Authenticity

Some branding articles from the May 2007 issue of Fast Company

Slide show: What Makes a Brand Authentic

Who Do You Love? (The appeal -- and risks -- of authenticity)

Will the Real Juan Valdez Please Stand Up? (To evoke authenticity, marketers use many tactics. Here's how five pairs of industry rivals tackle the challenge.)

An Authenticity Timeline (From Disney's opening of Main Street USA in 1955 to user-generated content, here's a look at how authenticity has evolved over time.)

Sixth Circuit vacates order in Ford Motor Company v. Mustangs Unlimited

The Sixth Circuit Court of Appeals vacated the district court's order setting aside the parties consent judgment. (Ford Motor Company v. Mustangs Unlimited, Inc.)

Ford claimed that Mustangs breached the terms of its consent judgment by continuing to sell automobile accessories and other merchandise bearing the Ford trademarks. The district court agreed and set aside the consent judgment.

The Sixth Circuit vacated the order because the record showed no basis upon which the Sixth Circuit could hold that the district court acted within its discretion in granting relief from judgment in the case.

Donald, I love you on Howard, but things don't seem to be going well

Mark Cuban calls out the Donald and has this to say about what Trump could do now that he "quit" The Apprentice:

You can travel the world over and give speeches on brand dilution. Explaining how a brand that was once synonymous with the finest real estate in the world is now synonymous with a canceled TV show, water, steaks, a doll, vodka, a perfume, a game and an online University that tries to sell questionable advice and products and is one of the biggest spammers on the Internet.

Ouch. Trump held a "free" seminar here in Columbus a few months back. I signed up to go to see what it's all about, but I had to clip my toenails that night, so I didn't go.

Technorati Tags: branding, brand dilution, brand extension, Mark Cuban, Donald Trump

STL on Litigation Websites

The Seattle Trademark Lawyer has a nice post on the impact of litigation websites on publicity and sales.

Technorati Tags: trademark, litigation, websites, PR, sales, wall street journal, OMS Investments v. TerraCycle, Autodesk Inc. v. Open Design Alliance, Moonstruck Chocolate Co. v. Moonray Espresso Corp.

Even potheads infringe trademarks from time to time

Hershey Co. recently sued convicted trafficer Kenneth Affolter for selling pot-laced treats and soft drinks with the names Stoney Rancher, Rasta Reese's and Keef Kat. Bummer dude.

UPDATE 5/23: Stoners unite to boycott Hershey.

Technorati Tags: trademark, stoner, hershey, pot, cannabis chocolates, boycott

Law Review Article on Trademark Surveys

Just found this September 2006 law review article written by Shashank Upadhye:

Trademark Surveys: Identifying the Relevant Universe of Confused Consumers

DerbyBox.com gallops over Kentucky Derby

TicketNews.com reports that ticket broker DerbyBox.com did not violate the terms of its Consent Decree with Churchill Downs.

Oscar Trademark Cases

The Holloywood Reporter, Esq. reports on two lawsuits brought by Oscar owner the Academy of Motion Picture Arts and Sciences.

The first involves AMPAS's suit against the website Oscarwatch.com for trademark infringement [complaint]. THR, ESQ. quote's AMPAS's attorney, which sounds like a good PR quote to me:

"The Academy isn't really pursuing monetary damages," said David Quinto of Quinn Emanuel Urquhart Oliver & Hedges. "The Academy's interest here is putting a stop to the offensive conduct and not in trying to make a buck."

The second suit is against broadcaster RAI International, who produces two Italian-language programs with the name "Wine Oscars" and "Fashion Oscars." The shows are distributed in the US by EchoStar.

While I haven't yet read the court's decision dening AMPAS's motion for summary judgment, this quote certainly peaked my interest:

Whether the practice violates U.S. law remains to be seen. A judge in March refused an Academy motion for summary judgment against RAI, suggesting cultural semantic distinctions might mean that Italians view the word Oscar more generically than Americans.

THR, ESQ's original story on "Oscar" being possibly generic in Italian here.

Technorati Tags: trademark, Hollywood, generic, domain names, infringement

INN = Generic

What's INN? INN stands for International Nonproprietary Names which are the generic names used to identify pharmaceutical substances or active pharmaceutical ingredients. It's a list of some 7000 names maintained by the World Health Organization. The purpose of INN is

to provide health professionals with a unique and universally available designated name to identify each pharmaceutical substance. The existence of an international nomenclature for pharmaceutical substances, in the form of INN, is important for the clear identification, safe prescription and dispensing of medicines to patients, and for communication and exchange of information among health professionals and scientists worldwide.

So what's the trademark significance of INN's? According to the WHO:

Over the years, the need to maintain the integrity of the INN system has become urgent. This is reflected in the following extract from the Fifth Report of the WHO Expert Committee on the Use of Essential Drugs which met in November 1991 :

"The procedure for selecting INNs allows manufacturers to contest names that are either identical or similar to their licensed trade-marks. In contrast, trade-mark applications are disallowed, in accordance with the present procedure, only when they are identical to an INN. A case for increased protection of INNs is now apparent as a result of competitive promotion of products no longer protected by patents. Rather than marketing these products under generic name, many companies apply for a trade-mark derived from an INN and, in particular, including the INN common stem. This practice endangers the principle that INNs are public property; it can frustrate the rational selection of further INNs for related substances, and it will ultimately compromise the safety of patients by promoting confusion in drug nomenclature."

These concerns were debated during the sixth International Conference of Drug Regulatory Authorities (ICDRA), in Ottawa, in October 1991. Based on recommendations made by the WHO Expert Committee on the use of Essential Drugs, the resolution WHA46.19 on Nonproprietary names for pharmaceutical substances was adopted by the Forty-sixth World Health Assembly in 1993, requesting Member States to:

- "…enact rules or regulations, as necessary, to ensure that international nonproprietary names (or the equivalent nationally approved generic names) used in the labelling and advertising of pharmaceutical products are always displayed prominently; - …encourage manufacturers to rely on their corporate name and the international nonproprietary names, rather than on trade-marks, to promote and market multisource products introduced after the expiry of a patent; - …develop policy guidelines on the use and protection of international nonproprietary names, and to discourage the use of names derived from them, and particularly names including established stems, as trade-marks."

In the note verbale, attention is drawn to this resolution concerning the use and protection of INN.

As a matter of principle, it may thus be recommended that trade-marks should not be derived from INN. In particular, the intentional incorporation of meaningful INN stems in trade-marks should be avoided.

So, pharaceutical companies, when naming their next blockbuster drug will, in addition to a trademark search, will conduct an INN search. For instance, the job description for Trademark Counsel with GlaxoSmithKline includes "INN search and clearance."

If you're looking for a place to search for INNs, IP Australia has a search engine for INNs.

Technorati Tags: trademark, search, clearance, pharmaceuticals, INN, International Nonproprietary Names

Backstory on the Fig Newton - Fig Newmans license

So I was reading my wife's Marie Claire yesterday and came across this interesting backstory on the licensing of the Fig Newton trademark. [Yes, I'm not ashamed to say that I read my wife's magazines. I'm a bit of a magazine junkie.]

Newman's Own Organics sell a fig cookie called Fig Newmans™. According to NOO's website:

The new cookie wouldn't have come to fruition without the cooperation of Kraft, as the name is being used under license from them. "We really salute Kraft for all their help with our Fig Newmans™," states Paul Newman.

Here's what Paul's daughter Nell told Marie Claire about the licensing:

Q: How did you ever convince Nabisco, the original owner of Fig Newtons, to let you use the name “Fig Newmans” for your fig bars?

A: My dad wrote a very sweet, short letter to the president of Nabisco that said, “My daughter’s got a great idea for a product. Could we sit down and talk about a small royalty deal? All the profits will go to charity.” And the guy just sent back a letter that said, “Dear Paul, I love what you’re doing, we’ll just say it’s a dollar a year, and I’d love to sit down and have a beer with you.” The legal department of Nabisco had a fit, but there was nothing they could do.

Way to go Nabisco/Kraft. From this, they've earned some good trademark karma and some good PR to boot.

Technorati Tags: trademark, celebrities, licensing, PR, karma

More on the Red Hat / Hibernate trademark hubbub

Follow up to this post. Just found Bill Dudney's post regarding the adverse reaction to Red Hat's trademark enforcement. Bill offers an excellent analysis on why the open source community reacted as it did. He also argues that "RedHat is not evil for enforcing their trademarks." Hear hear!

Again, they have every right to enforce the use of their trademarks. I’m not arguing against that at all. The issue is ownership. It is one company (and only one company) that owns the trademark. The thousands of developers that invested in groking Hibernate, JBoss etc have zero ownership in that trademark. They can’t do anything with the mark that is not allowed by the owner or law. So from my current understanding I could offer ‘Training for the Hibernate Implementation of JPA’. Some might ask, well is that so onerous to you? Is it that much trouble to put the extra verbiage into the marketing stuff? No its not, and you can bet if I ever publicly offer anything related to Hibernate or JBoss I will be putting that verbiage in.

Side note: be sure to check out the link to Simon Phipps' presentation on The Zen of Open.

Technorati Tags: trademark, open source, brands, branding, commodity, licensing

Now if we can just get Google to index state trademark databases

From cnet - Googling state government documents

Trademarks and Open Source

More news on the open source / trademark front. eWeek reports on Ubuntu's trademark policy.

Trademarks have recently become something of an issue in open-source circles. Debian, for example, recently took exception to Mozilla's Firefox trademark rules and called its version of the popular browser, IceWeasel. So, Ubuntu has decided to address possible trademark issues by creating its own trademark policy.

As many of you know, open source licenses generally grant the licensee the right to freely modify and distribute the subject software's source code. In essence, open source takes away the copyright restrictions that so many proprietary software companies use to protect their code.

However, open source licenses do not grant the licensee rights to use the licensor's trademarks. In fact, trademarks rights are enforced strictly by companies that distribute branded open source software.

As Mark Webbink, Red Hat's deputy general counsel and secretary, said in 2004, Red Hat has no problems with anyone using its source code. But Red Hat does have problems with anyone using its name or its trademark "shadowman." That, Webbink said, Red Hat guards zealously. "In the open-source economy, it's the Red Hat brand, as well as its service, that carry value."

Thus, as eWeek points out, while CentOS' operating system is derived from Red Hat's code, it can't use the Red Hat trademark to identify its code. And so CentOS says that "CentOS is an Enterprise-class Linux Distribution derived from sources freely provided to the public by a prominent North American Enterprise Linux vendor."

So open source companies such as Red Hat and Ubuntu sell commodities and build their value by building brands that customers prefer. If the value of these companies exist solely in the brand, then you'd expect them to vigourously protect their trademarks. See excerpt from Open Sources: Voices from the Open Source Revolution talking about Red Hat:

If we do not own intellectual property the way almost all of today's software companies do, and if those companies insist that their most valuable asset is the intellectual property represented by the source code to the software they own, then it is safe to say that Red Hat is not in the Software Business. Red Hat is not licensing intellectual property over which it has ownership. That's not the economic model that will support our customers, staff, and shareholders. So the question became: What business are we in?

The answer was to look around at other industries and try and find one that matched. We wanted an industry where the basic ingredients were free, or at least freely available. ...

We looked at the commodity industries and began to recognize some ideas. All leading companies selling commodity products, including bottled water (Perrier or Evian), the soap business (Tide), or the tomato paste business (Heinz), base their marketing strategies on building strong brands. These brands must stand for quality, consistency, and reliability. We saw something in the brand management of these commodity products that we thought we could emulate. ...

This was Red Hat's opportunity: to offer convenience, to offer quality, and most importantly to help define, in the minds of our customers, what an operating system can be. At Red Hat, if we do a good job of supplying and supporting a consistently high-quality product, we have a great opportunity to establish a brand that Linux OS customers simply prefer. ...

The power of brands translate very effectively into the technology business. We have evidence of this in the Venture Capital investors who have recently invested in several Open Source software companies. The one common denominator between all of the investments to date have been that the companies or their products have great name recognition, and are recognized as being quality products. In other words, they have successfully established a brand.

Technorati Tags: trademark, open source, brands, branding, commodity, licensing

Good Bank Brands Make Bad Bank Trademarks

Law review article by John M. Conley and Jayne C. Hunter - The Curse of History: Good Bank Brands Make Bad Bank Trademarks.

From the conclusion:

From a normative standpoint, it is clear that trademark law has never offered any special accommodations to the banking business, and shows no likelihood of doing so in the future. Nor should it. Unlike patent and some aspects of copyright law, which have developed highly technical and frequently unpredictable doctrines, trademark decisions have consistently been based on common-sense assessments of how consumer markets work. Although new technologies have sometimes posed novel questions (for example, whether use of someone else’s trademark as an Internet metatag is infringement), the framing of the analyses has been remarkably consistent and the answers given tolerably predictable over time and across industries. Neither banking’s economic and social significance nor its quirky history creates a mandate for special treatment.

This means that banking must come to terms with trademark law in its present state. As the case law we have reviewed indicates, banking has seemingly ignored trademark law for much of its history. There may have been understandable reasons for this in the past, but those reasons are now irrelevant. As bankers (and their lawyers) show increasing interest in making aggressive “offensive” use of trademarks, they must do the work of understanding how trademarks are established, strengthened, and protected. With that in mind, we offer the following practical thoughts:

Technorati Tags: trademark, law review, brand, branding, banking, registration

Brough Superior Trademarks for Sale

Auctioneer Bonhams & Butterfields has for sale the ‘Brough Superior’ Trademark and Logos. This Lot consists of the UK, European Community and Japan rights to the trademark and company name, ‘Brough Superior Engineering Limited’ and its associated logos. [HT: Motor Cyclist]

The Trademark, ‘Brough Superior Engineering Limited’ is registered in the UK under ‘1457563’ (renewable in September 2009) [TMBC Note, the number is a misprint, it should be 1467563] Trademark Journal ‘6232’. The European Community application number is ‘1093392’. The Japan trademark application is number ‘11-68981’, Certificate of Trademark Registration ‘4392842’ [run search for "BROUGH" here, then click on "Index" to see results].

However, US Reg. No. 2553038 for BROUGH SUPERIOR is not for sale. Perhaps it's because the US owner, Alan Scott Kvasnik of Minneapolis Minnesota, is not the same owner as listed in the UK and European Community mark, Alec Card of the UK. If I were the purchaser, I'd want to see what's up with this. After all, the US is a big market, and the estimated price for the trademark is $220,000 to $250,000.

Tech Tags: trademark valuation auction brough superior

Friday Rush - Train Speed Record

Not trademark or branding related, but what a rush. Watch as Alstom, the French Rail Network and SNCF break the world rail speed record by attaining the speed of 574.8 km/hr (that's 357.16 miles per hour for us Americans). Interesting that the record speed had to be officially ratified by two lawyers!

574,8 Km/h World rail speed record 2007
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Technorati Tags: train, world rail speed record, France