THE BRAND LAWYER

The Business and Law of Brands and Branding from Steven Weinberg of Holmes Weinberg. PC

TRADEMARK LIKE IT’S 2015

The incomparable brand phenom Taylor Swift recently filed dozens of trademark applications in the US Patent and Trademark Office to register a number of her song titles and her initials for a fairly wide variety of goods and services. By way of example, she’s seeking to register “Party Like It’s 1989” for educational and entertainment services, all kinds of online content and content delivery systems, contests and sweepstakes, retail store services, toys, Christmas tree decorations and more. These filings generated a lot of press, some positive, some negative. Gotta love the media, most of whom in their coverage of Ms. Swift’s filings evidenced a lack of understanding of brands and how to protect them. Her strategy is right on; in fact, she is not the first performing artist to expand their legal brand presence in this manner. Jimmy Buffet is by far the Heavyweight Champion in this arena, with over 300 registrations and pending applications.

One of the niceties of our trademark registration system, which was updated to meet world standards in 1989 (one of the reasons for partying that year), was to allow for the filing of trademarks for goods and services we intend to use them on. So if a brand is planning a fairly extensive licensing or sponsorship program, for example, it’s not unusual for that brand to file applications for as many goods and services as such a program might allow. Our clients like FremantleMedia, owners of the brands “American Idol” and “America’s Got Talent” (and many others) routinely do such filings. Plus, all you need to do to file these applications is to have a “bona fide” intent to use the mark for the goods or services applied for, but actual use is a prerequisite for obtaining a registration in the US (but not in most other countries).

So if it fits what you do, go for it.

AND THE WINNER IS…..

As we move forward in this new year, with the list of Oscar® winners now becoming a fleeting memory, we can turn our attention to other lists of interest to branding professionals.

Hot off the presses is a list of the top 50 Millennial brands. The results of 2015 poll conducted by Moosylvania, a digital ad agency, of one thousand Millennials ( a US population of about 73 million with $170 billion in purchasing power) revealed their top 10 brands to be (in descending order): Nike (and its Swoosh Logo), Apple (and its Apple logo), Samsung, SONY, Walmart, Target (and Target logo), Microsoft, Coca-Cola, the Air Jordan logo, and Pepsi. The most important characteristics shared by these brands, in descending order of importance to the survey respondents, are : (1) they are high-quality products or services (2) they are products or services that the respondents would recommend to others (3) the brand fits their personality (4) the brand shares their sense of social responsibility (5) the brand shares similar interests, and (6) the brand says important things. http://moosylvania.com/millennials/Moosylvania_Millennial_Study_2015.pdf.  Matching some of these brands to some of these characteristics is, at least to me, surprising.  However, given that each of these are iconic lifestyle brands that likely were introduced to these Millennials very early on in their lives and stayed with them, the results make sense.

Interestingly, only a few of these, according to Forbes in 2014, are among the “world’s most valuable brands”: Apple, Microsoft, Coca-Cola and Samsung. The other six in the Forbes top ten are Google, IBM, McDonald’s, General Electric, Toyota and Louis Vuitton. http://www.forbes.com/powerful-brands/list/.

Wall Street also has a list – of the brands most likely to disappear in 2015 because of mergers and consolidation or, to be kind, it’s their time. This list includes well-known brands like Lululemon, Warner Cable, Zynga, and Blackberry. http://finance.yahoo.com/news/10-brands-disappear-2015-172428388.html

I didn’t find any recent studies of the favorite brands of the largest population with the largest purchasing power in the US: the “Baby Boomers” (people over 50). However, a 2012 Nielsen study identifies this group as “marketing’s most valuable generation,” yet under-served when it comes to brand marketing. The study does identify what this generation likes from its brands, with many of these traits in synchronicity with those of Millennials; however, the study also shows that Boomers are not easily enrolled or maintained as brand loyalists– brands have to work hard to convince them that there’s value to be had and, more importantly, kept.  And unlike prior “aging” generations, Boomers are tech savvy,  are healthy (for the most part) and are voracious consumers. In essence, they don’t see themselves as aging and place heavy emphasis on being, and remaining, youthful. http://boomagers.com/sites/boomagers/files/Boomers_-_Marketing’s_Most_Valuable_Generation.pdf

Guilty as charged.

(PIZZA) PIE IN THE FACE

Remember last year’s Super Bowl Oreo tweet during the blackout?  This year’s entry for Twitter brand brilliance was during another major contest — the Grammy Awards.  Australian superstar rapper Iggy Azalea earlier that day sent out a tweet to her 4.2 million fans decrying that a Papa John’s delivery person made her cell phone number public, resulting in a flood of calls to her.  Not amused, she tweeted “@PapaJohns was my favorite pizza but the drivers they use give out your personal phone number to their family members.”  Papa John’s response, rather than being hat in hand was tongue in cheek: it replied “@iggyazalea# We should have known better. Customer and employee privacy is important to us. Please don’t #bounce us!”, the Bounce reference being to Ms. Azalea’s hit tune by that name.  The crisis management team at Papa John’s apparently was out on a break.  Ms. Azalea didn’t think that humor was the right response and sent out more tweets criticizing the pizza company’s lack of seriousness, and additional tweets from the company only made matters worse.  Enter competitor DiGiorno Pizza, now with the potential of reaching 4.2million new fans while its competitor crumbled, and tweeted “@IggyAzalea delivery.smh” — “smh” being text slang for “shaking my head.”  A very pleased Ms. Azalea, delighted with her new BFF, tweeted back “”@DiGiornoPizza I know right!”

As the musical group the Byrds once sang, “there is a time for everything….” but there definitely are times when brands should not try being funny.  With privacy being one of the front and center issues of our time, when a celebrity publicly complains about a privacy invasion by a brand, that’s serious, and  not an opening for a one liner.  And getting pie in the face can’t be the brand image Papa John’s was hoping for.

WHO OWNS YOUR HEART?

Ah, Valentine’s Day. Romance is in the air. And hearts are everywhere. On cards and gift boxes, in tweets and other social media, in emails, on restaurant tables, in print ads, banner ads and as candy and jewelry. But before you rush out to add a heart design to an e-card, an email, a Facebook or Tumblr or Instagram post, or anywhere else, you need to consider this – is the design yours for the taking? Or will you be committing an illegal act?

To fully understand the looming legal implications, it helps to know how hearts became part of St. Valentine’s Day. But to do so I need to lay a proper foundation (I am a lawyer, after all). We start with St. Valentine, previously known as Valentinus. Sorry to say, his story is not at all romantic. According to reliable sources, he was a Roman priest and physician who was arrested, condemned to death for his faith, beaten with clubs, and finally beheaded on Feb. 14, AD 270. Not romantic by any definition. But as it turns out, February 14th was the eve of the Roman festival of Lupercalia, celebrating the god of fertility, which was quite erotic in nature. Part of the celebratory tradition was the drawing by young men of lots with the names of women who would be their “romantic” partner for the evening, or longer. The church, unable to stop this highly enjoyable (apparently by both sexes) custom, decided to find a saint to patronize the day, choosing Valentinus, who became the patron saint of lovers. It thereafter became a tradition to exchange with one’s actual or fantasized beloved handwritten messages of amour on February 14th, the day of St. Valentine.

The origin of the use of the heart shape for this lovely day, however, is less certain. Theories range from its being in the shape of a plant (silphium) used as an herbal contraceptive in ancient times, to various shapes associated with certain parts of the female anatomy. The shape of Cupid’s arrows, as depicted in many Renaissance paintings, also is a possible source. And some believe it to have originated with the shape of swans – long associated with St. Valentine’s Day – kissing, which is heart-shaped.

Whatever the origin, the use of the heart shape for St. Valentine’s Day is now part of our culture and ubiquitous. But as popular as heart designs may be, not all are in the public domain. Original heart designs are protected by copyright law; “original” meaning not substantially copied from some other source. Thus, while the basic heart shape is available for all to use, original variations on it are not, unless they (1) no longer are protected by copyright either because of age or failure to protect, or (2) have been donated by their owner to the public for use, such as publicly available clip-art. There is in fact no way to know for sure if a particular heart design is protected by copyright since one does not have to use the official copyright notice (the one with the ©) or obtain a federal copyright registration. Copyright since 1978 in the US (and longer throughout much of the world) attaches to a protectable design from creation; a registration merely endows it with some important additional rights.

And it’s not just Valentine’s Day heart designs that are protected. My LA-based client Nina B. Roze created and successfully markets legging products that frame the buttocks area with a heart shape, that not only is protected by copyright law, but by trademark law as well.

Other heart designs also function as trademarks, such as the heart tummy design on the Care Bears “Tenderheart Bear,” the rights in which I spent many of my days as a young lawyer protecting.
And my little cuddly friend is not alone; there are many intellectual property disputes involving heart-shapes and there currently are over 10,000 designs comprised in part of heart shapes sitting on the trademark register of the US Patent and Trademark Office.

So who owns your heart? You do, except perhaps on this romantic day, when someone else may have stolen it. But when it comes to heart designs, do a little bit of checking first to ensure that the heart you may be stealing does not come with a cease and desist.

SUPER BOWL BRANDMANIA

As we head into Super Bowl LXIX weekend, I thought the following might be of interest.

Digiday posted a fun article entitled 5 Super Bowl Myths Debunked (http://digiday.com/brands/5-super-bowl-myths-debunked). Here’s what’s interesting from a brander’s perspective: (1) Super Bowl ads have higher recall than ads in general BUT (2) get them shown by 9PM eastern – most viewers have stopped watching by then!, and (3) sexy ads and celebrity ads don’t do as well as non-sexy, non-celebrity ads. But is it really worth the money to have a commercial on the show? Check out this story, also from Digiday, which shows how that same money might be spent in social media and other online venues (http://digiday.com/platforms/cost-super-bowl-ad-can-buy-online/).

Getting back to the 5 myths, from a social perspective, I found these interesting: (1) most people watch the event alone or with one other person and not with tons of friends or in sport bars, and (2) and this is a big one – vegetables, not wings, are the most consumed food of the day! Whether or not beer and alcohol consumption makes up for the veggies from a caloric POV was not studied, however.

Turning to a specific ad, GoDaddy’s attempt to spoof Budweiser’s highly successful Super Bowl puppy commercials was pulled because puppy lovers everywhere were horrified by what looked like puppy cruelty. The GoDaddy ad’s YouTube video had more than 800 comments, most trashing it; #godaddypuppy on Twitter skyrocketed with tweets, a petition calling on the company to kill the ad garnered more than 42,000 signatures. PETA, which admitted it “liked” that the ad because it showed that anyone who sells dogs online is “a callous jerk,” nonetheless echoed the other critics. The reality is that the GoDaddy dog, Buddy, was treated very nicely during the filing, and is now the official GoDaddy “Chief Companion Officer.” Sweet. And kudos to GoDaddy for pulling the ad.

The GoDaddy ad raises the legal issue of parody. Legally, parody, satire and criticism are not the same, having different legal standards. Legally, parody does not mean “funny.” It has very specific meanings under copyright law, trademark law and privacy/publicity laws, as does the broader legal doctrine of “fair use.” I’ll be addressing these in posts to come; for today, I’m just planting the seed that in making videos and other content, just because you’re poking fun doesn’t mean it’s legally OK.

And on that note, have a great weekend.

BRANDS AND BRAINS

When you think of your favorite brands, what is the first word you associate with them? According to psychology Professor Paul Bloom of Yale, the word we all associate with our favorite brands, even if subconsciously, is “pleasure.” We all seek pleasure in our lives. How we define pleasure is of course subject to individual variance. But pleasure, however defined, is what we seek, as well as all of the satisfying feelings and emotions that go with it. The knowledgeable brands know this, and capitalize on it. Using imagery, music, words, sights, smells, and taste, they create around the brand, and infuse it with those stimuli that trigger any number of perceived pleasure points in our psyches, moving us closer to embracing the brands into our lives. Making them part of who we are, who we imagine ourselves to be and how we want others to see us. And as an extension of our pleasured selves, we endow on them immense legitimacy. Professor Bloom in a recent NPR TED Radio Hour, http://www.npr.org/programs/ted-radio-hour/308752278/brand-over-brain, gave an example that all of us with kids know only too well – if you can’t get kids to eat something, just tell them it’s from McDonald’s®! Why? Because in a kids’ world, just the thought of that brand, and all of the memories of happiness that go with it, strongly bolstered by lots of impactful advertising and promotion, not to mention the smell of those fries, brings immediate pleasure and legitimacy.

Adults who purchase by brand behave pretty much the same. We purchase certain brands because having that branded product brings pleasure. It can be in the form of feeling safe – for example, many people will buy a branded product and not the absolutely identical store brand, at much higher price, because they assume the branded product is a safer, more legitimate choice. Other brands induce feelings of social acceptance, or of living a fantasy, or, analysis aside, just feeling really, really good. Even if we know all of the brand imagery is mere fantasy, and what is promised will never really occur – honestly, will we really become immensely rich and fly into the wilds of Africa in our private plane dressed to the hilt with expensive safari clothes and luggage with the person of one’s dreams hanging onto us with seductive smiles and loving eyes merely by buying Ralph Lauren® luggage? — we allow ourselves to drift into the pleasure of that fantasy, believing at some level that if by some toss of the cosmic dice this all could come true, buying the brand is the ticket. And just by buying the brand, tagged by these thoughts, we experience pleasure.

Where the carriage transforms back to pumpkin is when the brand makes lots of pleasurable promises up front, but then fails to deliver. How quickly pleasure is lost when dealing with terrible customer service. Or with warranties that aren’t honored. Or the texture, taste, or smell of the product is not what is promised. Or product defects. There’s little worse than having one’s pleasure, one’s fantasy, one’s high expectations, destroyed with harsh reality.

And that’s where the truly great brands make their strides. Brands like Zappos® and Amazon® Prime, which have redefined customer service. Or (most of the time) Starbucks, which by inviting us into the fantasy it created, changed how we drink coffee and publicly commune (and learned that free WiFi brings even more pleasure). Brands that understand the pleasure principle know that they need to follow through, and keep the happiness factor high if we are going to come back to them. And in these days of real-time, viral, uncensored criticism, brands that don’t deliver on their promises will not survive.

Those of us who protect brands for a living know this well. We fight to keep the brand’s reputation intact, or, unfortunately in too many cases, fight to overcome the damage that’s been done either by themselves, their co-venturers, their competitors, their critics, or unhappy consumers. We have a much better chance at prevailing if the brand’s behavior has been consistent with its enchantment; it’s tough to win over a judge or jury when their experience has been the same as the disenchanted consumers. And so there is every reason for a brand to deliver on its promises. And that, my friends, is not fantasy.