Difficulties of Trademarking a Common Term

Trademarks have a specific purpose. They help people identify with a particular product, service, company, or organization. Five types of trademarks exist.

  1. Generic marks: Trademarks to which one attempts to assign secondary meaning, though such attempts will always fail because the marks describe an entire group of products (e.g., aspirin). 
  2. Descriptive marks: Trademarks that take on a secondary meaning (e.g., McDonald’s).
  3. Suggestive marks: Trademarks that suggest a quality or characteristic of the good or service that it represents (e.g., Florida’s Natural branded orange juice).  
  4. Arbitrary marks: Trademarks that tend to describe goods or services that otherwise have no relation (e.g., Apple). These trademarks are generally very strong.
  5. Fanciful marks: Trademarks that tend to describe goods or services and likely have no other precedent in the market (e.g., Allegra). These are typically the strongest trademarks.

As mentioned, typically the strongest trademarks are unique names or words. However, occasionally, a common word can sometimes be trademarked as long as people identify it with a secondary meaning other than its original meaning or the word is used to describe a service or good. For instance, consider Apple. While the original meaning represents the fruit, it has taken on a secondary meaning as representation of the technology company Apple. In fact, when researching the term via Google, the first result that appears is the website for the company Apple.

While Apple has successfully coined a common term with a secondary meaning, this is no easy task. For instance, last year, the Boy Scouts of America (BSA)announced its plans to change its program name from Boy Scouts to Scouts BSA. The change would reflect its modification from an all-boys program to the inclusion of girls into the program. However, the Girl Scouts of the United States of America (GSUSA) objected to the change and sued BSA for trademark infringement. 

Although the two organizations have coexisted for decades without trademark issues, the GSUSA argues that the suggested name change creates confusion. Currently, the terms “girl” and “scouts” used together take on a specific meaning that associates directly with the GSUSA organization. GSUSA contends that BSA cannot have exclusive rights to common terms such as “scouting” and “scouts” in relation to girls. 

When the Boy Scouts was an all-inclusive boys program, there was no question as to whom the organization targeted. However, since the program now includes all genders, it is likely the organization will have to occasionally use the term “girls” and “scouts” to recruit or describe particular aspects of its program. Therefore, it may inadvertently infringe on the GSUSA trademark. In fact, some people have already mistakenly signed up their daughters to the girls’ programs in Boy Scouts, and others believed the two organizations merged.

The BSA argues that it has the rights to use “scouts” when referring to programs associated with boys and girls, and not girls exclusively. It further argues that the GSUSA only has rights to “scouts” when referring to girls.

As you can see, trademarking a common term can be complicated and difficult to implement. It will be interesting to see how this battle is resolved.

2018 Highlights

Each year at our firm turns out to be better than the year before, and 2018 was no exception! We enjoyed a remarkable year filled with new projects, new adventures, new and repeat clients, and a host of other events that kept our team busy.  

Our projects last year covered a number of topics, such as the following: analytics software, protein ice cream, additive manufacturing technologies, LED lighting technologies, thermal warming devices, scuba diving equipment, chemical looping gasification technology, and antimicrobial additives for pet food, among others. We enjoy the variety of projects we receive every year. These projects teach us about emerging technologies within different industries, and each project brings unique challenges.

In addition to our projects, throughout the year we attended a variety of conferences and were invited by several organizations for speaking engagements, such as the LES Annual Conference, IAM Patent Licensing Event, LES board meetings, IP 100 board meeting, ABA-IPL Spring Summit, and the IP Awareness Summit.

Projects, speaking engagements, and conferences take us to many places each year. In 2018, we traveled throughout the country to the following places: Phoenix, AZ; Philadelphia, PA; San Francisco, CA; Washington, DC; New York City, NY; Palo Alto, CA; San Diego, CA; and Boston, MA.

Outside of our projects and speaking engagements, was the publication of Mike’s article “Mike Pellegrino Recommends Sometimes Ignoring Expert Advice” in the Indianapolis Business Journal. Another exciting development was a $112 million jury verdict a client won. The jury awarded the damages based on our damages opinion, virtually to the dollar. To learn more about the case, click here.

While we work hard, we also find the importance in taking time out to regroup, collaborate, and enjoy the companionship of our team. This past year, we enjoyed some friendly competition bowling at a local bowling alley. We also checked out a new concept of golf, which was Topgolf in Fishers, IN. If you haven’t tried it, look for one near you and give it a try. It’s a great time! Our team also enjoyed caving at Indiana Caverns. But our favorite event of the year was attending our coworker Tejas’ beautiful wedding in Playa del Carmen. We were honored to share this special event together as a team.

As you can see, we had a productive and busy year. We look forward to all the activity ahead this year with new projects, conferences, speaking engagements, company outings, and so much more. We appreciate all of our clients and look forward to working with new and repeat clients. We love what we do. 

Ways Celebrities Capitalize on Brands

Celebrities typically become well-known for their skills. For instance, many actors such as Julia Roberts, Al Pacino, Leonardo DiCaprio, and Meryl Streep are famous for their abilities to play diversified roles. Singers such as Beyoncé, Taylor Swift, and Justin Timberlake sell out concerts because they give great performances and many people like their songs. Tom Brady, LeBron James, Serena Williams, and Tiger Woods garner attention because they are among the best in their sports. As long as their skills remain strong and in demand, they continue to capitalize on their brands.

While honing a skill and performing at high levels protects celebrities and their brands, making them more valuable, publicity helps to maintain that value and keep celebrities in demand. The more celebrities are exposed, the more they are remembered and the more the public associates with them. While newer talent and age may play a factor in how long or how well celebrities can maintain their brand value, celebrities often use other methods than the skills that made them famous in the first place to keep their brand valuable.

For instance, many celebrities launch clothing lines that help to keep their brand thriving. Such lines include Fabletics by Kate Hudson, Ivy Park by Beyonce, SJP by Sarah Jessica Parker, Goop Label by Gwyneth Paltrow, Paper Crown by Lauren Conrad, and many others. Some celebrities launch their own perfumes. Justin Bieber, Jennifer Lopez, Britney Spears, Jennifer Aniston, Sean Combs, Derek Jeter, and David Beckham are just a few who market their own scents. The number of type of products celebrities launch is large. Other items may include purses, handbags, makeup lines, and so much more. In addition to their own lines, celebrities endorse a plethora of products including athletic gear, credit cards, medication, technology, and endless other products.

Although endorsing and launching products is another big avenue that can keep a brand alive, some celebrities also tap into new territory to keep their image public. For instance, many famous singers and athletes have dabbled with acting. They include Lady Gaga, Tim McGraw, Brett Favre, Christina Aguilera, Shaun White, and numerous others. Partnering with charities is also another way celebrities can benefit.

As you can see, developing, maintaining, and enhancing a celebrity brand can take a tremendous amount of time, work, experience, practice, and even stepping out of a comfort zone. However, the more a celebrity remains in the spotlight, the more important that brand becomes.

The Licensing Executives Society: A Voice for the IP Community

Founded in 1965, the Licensing Executives Society (LES) is an organization that supports, represents, and connects nearly 3,000 IP, business, and technology licensing professionals. LES provides members with best practices, education, mentoring, networking, and participation. Membership benefits are many and include chapter events, access to the LES directory, industry connections, social media channels, industry publications, certified licensing professional (CLP) certification, CLP preparation courses, free education, career center advantages, and registration discounts.

At Pellegrino & Associates, we are a big proponent of this organization and all that it offers the IP industry. This is why we are so actively involved. Our company president Mike Pellegrino is currently treasurer of LES. He is also the chair of the patent valuation standards committee established by LES, whose charter is to pursue American National Standards Institute (ANSI)-accepted standards for the valuation of patents in a variety of contexts including financial reporting, capital formation, economic damages calculations, and others. Mike is also a member of LES’s public policy committee, seeking to help set standards for intellectual property-focused regulatory matters with the SEC and others. He is also a member of LES’s standards committee for IP use in the boardroom.

While our expertise within the organization is on IP valuation, LES strives to find standards for many IP areas. These areas include the following: ISO/TC 279 innovation management, IP protection in the supply chain, FRAND licensing, IP licensing, IP management for startups, intangible assets in the boardroom, IP valuation, and IP brokerage.

Working together with IP professionals around the world, LES represents one voice for the IP management community. It supports a variety of organizations including corporations, law firms, consultant/service providers, universities/government, entrepreneurs, and students in various industries such as life sciences, high technology, consumer products, and others. We are proud to be a part of and to support this prestigious organization. To learn more, visit the LES website at https://www.lesusacanada.org/. Also, be sure to check out the Events section to learn about the annual LES meeting.

Trademarked Scents a Rarity

Trademarking a scent is an uncommon event. This is because scents usually serve as a particular function, such as perfumes or air fresheners, where their purpose is to make something smell a certain way. Therefore, scents are typically patented rather than trademarked. While patents often protect something that serves a function, trademarks typically help consumers associate certain products with a brand. Trademarks that are most familiar include logos, symbols, and slogans. However, scents, sounds, and colors may also serve as trademarks, but trying to prove that they work as trademarks is a hard sell.

To trademark a scent, the scent must be distinctive, reminding consumers of a particular product. However, this is a rare occasion. In fact, only 13 active scent trademark registrations exist today. Although distinctive smells surround us daily, we do not typically think of a particular company or product to attach that smell to. For instance, while McDonald’s French fries or even a Starbucks coffee may have a particular smell, these smells are not distinctive enough to separate them from other fast food French Fries or coffee. For instance, when we smell greasy fries, we do not automatically think of McDonald’s. We typically just associate that smell with French fries in general.

Therefore, obtaining a trademark for a scent is a remarkable feat. However, in May of this year, Hasboro joined an elite group of scent trademark owners. The USPTO determined that the Play-Doh scent is distinctive enough for consumers to associate it with the product. Given that Hasboro has sold more than 3 billion cans of Play-Doh since 1956 and sells 100 million cans annually, it is likely that millions of people have become familiar with the scent. This means that the scent is unique enough that when consumers smell it, it reminds them of Play-Doh. It means that the scent is like no other. In comparison to other companies that have been awarded trademarks for scents, Hasboro’s Play-Doh scent was likely incidental based on its ingredients. This means that the company likely did not purposefully create a scent for its products like Verizon did to help customers associate its scent with Verizon stores. Rather, the mixed ingredients just had a particular scent that worked to Hasboro’s advantage. Filing for a trademark for that scent was a smart business move for Hasboro.

Could Blockchain Technology Be the Game Changer in Combatting Cybercrime?

Cybercrime poses a huge threat, costing the world an estimated $600 billion in 2017, up from $450+ billion in 2016. Among cybercrime is the threat of identity theft. In 2017, 16.7 million U.S. citizens were victims of identity theft at a $16.8 billion cost, up from 15.4 million victims at a $16.2 billion cost in 2016. These statistics indicate that cybercrime is a serious problem that continues to climb at a rapid rate.

Cybercrime can happen in a variety of ways including sending unsolicited emails, illegally downloading music, stealing personal bank account information, creating computer viruses, and so much more. With all of these options, it’s no wonder cybercrime is so high! Furthermore, technology changes so rapidly that businesses and individuals often use outdated technology. Using outdated technology presents a host of opportunities for cybercrime to occur.

As cybercrime continues to create challenges, companies continue to improve technology. A relatively new concept called blockchains is on the horizon, which may be the game changer in slowing down cybercrime. Blockchains are digital registers that permanently and securely store transactions. This technology uses a hierarchical method to save data in blocks, with each block pointing to a previous block with a timestamp of each transaction. This method makes it easy to trace and audit transactions. It is also a secure way of tracking transactions as data saved in blocks cannot be modified or breached. In addition, the decentralization of blockchains makes it hard for cybercrime to occur.

While the technology is in its infant stages, interest continues to increase. According to Statista, the blockchain technology market will rise from an estimated $210 million in 2016 to an estimated $2.3 billion by 2021. An increase in blockchain patent filings corroborates a significant increase in the field as blockchain patent applications more than doubled in 2017 with more than 1200 applications compared to 594 in 2016. Some of the biggest companies in the world are conducting research and filing patent applications, including Sony, Google, Microsoft, Bank of America, Walmart, MasterCard, IBM, and many others. Blockchains can support a variety of industries that conduct many transactions such as finance, real estate, healthcare, music, insurance, and many others, as evidenced by the various types of companies filing for patent protection.

As blockchain technology becomes more mainstream and more companies continue to file patent protection, potential exists for combatting cybercrime on a higher level.

IP Potential in eSports

Sports play a big role in entertaining people around the world. The variety of sports brings a significant amount of fans, amounting to tens of billions. Each sports market involves some form of intellectual property. For instance, the football market has many patents. Football patents exist for helmets, trousers, the ten-yard line, artificial turf, shoes, and more. Trademarks exist for Super Bowl logos, specific team names, taglines, and much more. And of course copyrights exist for televised games. Without intellectual property, these markets would not make near the revenue that they do and there would be no entitlement to the pieces that make up the markets. For instance, without copyrights, any fan could sell or copy televised events, merchandise, or tickets without repercussions. At that rate, the sport would not be able to make a profit to pay the team players or other personnel that make events happen. In turn, the markets would fold and billions of fans would be in mourning.

While traditional sports command big followings, another type of sport is receiving great interest, eSports. eSports is hitting the market by storm. In 2017, eSports drew 258 million unique viewers with $1.5 billion revenue, with an expected reach to 299 million viewers this year and $2 billion revenue by 2021.

eSports is the sport of video gaming on a professional level. It typically involves a team. Popular eSports include League of Legends, Dota 2, Counter-Strike, and Overwatch. Fans can watch via online or at special venues such as arenas. Prize pools are in the millions of dollars, with an expected rise as eSports continues to garner more interest. Just like traditional sports, eSports advertises, endorses, and brands its events. Therefore, obtaining intellectual property to protect the eSports market is a necessity.

What makes eSports so enticing and exciting to so many people is that it does not take extraordinary athletic ability, a specific body build, or an exorbitant amount of money in training, equipment, and apparel to make it in the sport. The average person could make it in the eSports world with lots of practice in front of a video screen at home. Honing one’s skills still takes commitment, but the costs of getting there are not quite as high as traditional sports. Furthermore, the average person is more likely to relate to eSports competitors because he or she can also be a participant, making it even more exciting to watch others at the professional level. In contrast, most average people can only dream of having the skills, knowledge, and build to make it to a traditional sports level. For all of these reasons, the eSports market is expected to soar in the coming years. As a result, it is likely that intellectual property surrounding eSports will increase.

In the past ten years, patent grants for “digital gaming” have reached nearly 160,000, according to a search in ipAnalytx, an IP analytical database. Companies involved in the market include technology giants such as Samsung, Google, Microsoft, Intel, and many others. However, patents are just one type of intellectual property that will experience an increase in the eSports market. Gaming companies that broadcast or hold events must file for copyrights to avoid piracy. Teams and their players must invest in trademarks to protect their identities, market their brands, and gain sponsorships. Therefore, the IP potential for eSports may be enormous.

China’s IP Changes and Their Impact

China is a big contender in the innovation world. According to the WIPO, China was closely on the heels of the United States in 2017 for the most international patent applications. The United States filed 56,624 PCT (Patent Cooperation Treaty) applications, while China filed 48,882 PCT applications. In 2016, China received more overall patent applications than any other country with more than 1.3 million applications. In comparison, the United States paled with a little more than 605,000 patent applications.

Given the sheer size of China and the number of patent filings, China will remain a big contender in innovation for years to come. While competing with the volume of innovation coming from China is cumbersome, the United States also faces billions of dollars in IP theft from China. The exact number is not known, but estimates range from $225 billion to $600 billion annually. Furthermore, inconsistent protection of foreign patents and various rules make it challenging to solve IP infringement cases fairly. In addition, China typically offers damages awards at the low end of the spectrum, making litigation exceptionally expensive due to the time, effort, and loss in sales during the process.

In order for the United States and other foreign parties to feel that they are getting a fair shake, the treatment of IP via China must conform to higher standards. Fortunately, albeit slowly, China is showing signs of improvement resulting in fairer outcomes. For instance, in late 2017, China awarded New Balance $1.5 million in damages for trademark infringement. This was a significant win for New Balance as it previously had little luck winning counterfeit arguments in China prior to this point. Also in 2017, the Motion Pictures Association of America (MPAA) won a copyright infringement case against a large online Chinese video company, indicating China’s effort to crack down on piracy. Furthermore, according to a 2016 study, foreign companies won more than 70% of patent infringement cases in China.

While China is showing marked improvements in its treatment of IP, the standards do not rival those of the United States. Treatment of IP in China will likely be challenging for years to come as the country works to define its standards and policies. However, the good news is that the country is working on the issue. Therefore, a positive outlook for fair treatment of IP may strengthen U.S. and China business relationships.

2017: A Year in Review

The year 2017 was a great one for Pellegrino & Associates. We worked with a number of repeat clients and enjoyed working with many new ones. All of these clients bring interesting concepts from a variety of industries. Among these industries, the law industry increasingly seeks our services. In fact, nearly half of our engagements in 2017 involved law firms. As a result, we provided our expertise to two of the biggest IP litigations in the country last year! Also, one of the rulings on Mike’s opinions made headlines on Docket Navigator. Our firm’s experience as expert witnesses continues to prove valuable in many cases related to intellectual property.

Throughout the year, we attended a variety of conferences and were invited by several organizations for speaking engagements. These organizations and conferences included the following: Global IP ConfEx, ICLEF webinars, Financial Poise webinars, LES webinars, USPTO Global Intellectual Property Academy, and IAM’s 3rd Annual Patent Licensing.

Via our projects and speaking engagements, we have traveled all over the country. For instance, we traveled to Baltimore, Battle Creek, Chicago, Columbus, Dallas, Los Angeles, Philadelphia, San Francisco, and Washington, D.C., to name a few. Not only do we get to travel to some interesting places for our projects and speaking engagements, but we get to learn about interesting topics daily. Some of our project topics in 2017 included the following: airlines, battery technology, bicycle crank systems, biotechnology, cardiovascular innovations, catheterization, chain drive systems, customer service, electronic health record systems, face protection market for both industrial and extracurricular activities, medical, monoclonal antibodies, system and methods for allocating resources in a network, and women’s handbags.

Other highlights include the publication of Mike’s article, “Flawed System Leaves Innovators Without Fair Patent Protection” in the Indianapolis Business Journal. Click the article title to read Mike’s perspective on the topic of patents and asserting patent rights. Mike was also nominated as one of the world’s leading IP strategists on IAM’s Strategy 300, which lists the top 300 people in the intellectual property world. Check out Mike’s bio at the following link: http://www.iam-media.com/strategy300/directory/Detail.aspx?g=eb47c05b-eac0-4f8a-a182-4e292d59c7a4&q=P. In addition, Mike is working on a new version of BVR’s Guide to Valuing Intellectual Property. This third edition will feature updated content, as well as new chapters. Examples of new chapter content will include information on Monte Carlo simulations, the intersection of big data and patent valuation, ways to build models to account properly for time variance, and others.

While we love what we do, we also find great value in taking time every quarter to regroup and connect as a team. This past year, we enjoyed some friendly competition at former racecar driver Sarah Fisher’s go kart facility. We also took some opportunities to take in some fresh air for a hike in beautiful Brown County and another adventure in southeastern Indiana for a peaceful kayak trip. We finished the year collaborating on an island in the Breakout Game room. All of our adventures as a team outside the office give us a moment to appreciate each other and a chance to regroup. And every adventure is so much fun!

As you can see, we’ve had a productive year filled with fun adventures, interesting projects, great business relationships, new speaking engagements, and educational conferences. As we enter our 15th year in business, we look forward to learning more about innovations and working with former and new clients in 2018!

Tax Reform and Its Effect on IP

Tax reform typically has many implications for businesses and people in general. In terms of the 2018 tax reform specifically, the new changes will have positive effects for a lot of businesses and people as tax rates will be lower. This reform presents a positive outcome for intellectual property (IP) owners as well. Since many valuation analysts use the income-based approach for determining IP value, the tax reform changes the value of IP for the better. Read more to understand how the tax reform changes IP value for IP owners.

Generally, the income-based approach is a common and accurate approach for determining value of IP. A valuation analyst using the income approach bases his or her opinion on the intellectual property owner’s business plan, marketing and operational inputs, and other external references. Using this method, the valuation analyst projects the economic income generated solely from the intellectual property over a discrete period, known as the remaining economic life (REL) as well as any residual value after the REL.

To determine economic income, the valuation analyst projects the revenue (or cost savings or other economic benefit) generated from the intellectual property over the REL, and then offsets that revenue with costs related directly to the intellectual property’s exploitation such as labor, materials, required capital investment, and any appropriate economic rents or capital charges.

With cash flows for each discrete year in the REL and a calculated residual value, the valuation analyst discounts the cash flows and the residual value using an appropriate discount rate to the present value. The present value becomes the intellectual property’s value before the valuation analyst applies any applicable value adjustments.

As indicated, a valuation analyst has to discount cash flows to determine the present value of IP. The tax reform directly affects the value of IP as income tax places a direct burden on cash flows. Since the tax reform now has a lower tax rate, the value of the cash flow is higher. For instance, if a patent owner has an asset that generates $1,000 and $100 in profits, the owner will now pay a lower percentage in taxes. For instance, the owner may have paid 40% of the $100 in 2017 versus 20% of the $100 in 2018. Therefore, the patent owner generates more cash flow as they pay fewer taxes, making their IP worth more.