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. 

Louis Vuitton’s Counterfeiting Woes

While imitation can be the sincerest form of flattery in many circumstances, it becomes a nightmare for many companies. The more popular a brand is, the likelihood it will face counterfeiters at some point. Globally, counterfeiting amounted to $1.2 trillion in 2017. According to the Global Brand Counterfeiting Report, global online counterfeiting created losses of $323 billion in 2017, with luxury brands experiencing $30.3 billion of losses in online sales. As these numbers indicate, counterfeited brands create a huge and expensive problem for the actual brands.

Not only do counterfeited products affect the economy, they may also affect consumer health and safety, especially when it comes to counterfeited drugs. In fact, one million people die annually from fake drugs and consumers spend $200 billion annually on these drugs. Other industries where counterfeiting is a serious threat to health and safety include automotive and aviation industries. Fake car parts cause 1.5 million injuries and 36,000 deaths annually.

One of the most counterfeited luxury brands is Louis Vuitton. As a result, it makes headlines frequently in its quest to assert its rights. The company spends more than $17 million annually to combat counterfeiters. Unfortunately, it is likely the company will always fight counterfeiters as counterfeiters continue to market and make products so closely designed like the original it is hard to distinguish between the real product and the fake product. Further, the Internet makes it easier to hide counterfeited products. In fact, on Instagram Louis Vuitton is one of the top targeted brands at 8.51%. This is only one online avenue. Recently, Louis Vuitton sued hundreds of websites over counterfeiting issues.

As indicated, the time and money Louis Vuitton has to expend in order to combat counterfeiters is tremendous. However, the alternative could prove detrimental. If Louis Vuitton were not pursuing counterfeiters, it would lose significant profits and could taint its reputation as knockoffs typically do not have the same quality. Therefore, the company must continue to assert its rights in order to protect its reputation, its revenue, and its future.

Patent Pools May Create Potential Antitrust Issues

Patent pools are on the rise. They are groups of two or more patent holders that publicly agree to share (or cross-license) patent rights. Patent pools are ideal for technology that contains a lot of overlap among various innovations in order to function properly. For instance, smartphones have a lot of overlap among innovations created by telecommunications technology giants. Companies such as Samsung, Microsoft, Apple, LG, and others sometimes form patent pools to share innovations and reduce the risk of lawsuits. This is fairly common in the telecommunications industry. In fact, a study conducted by Toulouse School of Economics indicates that cross-licensing accounts for half of all licensing agreements in the industry.

Sharing patents provides many benefits among companies within the same industry. Some of these benefits include reducing licensing fees, combining innovations to provide state-of-the-art products, providing faster development, and saving on costs, to name a few. However, while patent pools provide many benefits, they also create challenges. For instance, concern exists that patent pools may create collusive opportunities that hinder new companies from entering a particular market. These pools are also subject to regulatory scrutiny to ensure they do not create unfair competition or thwart innovation.

The challenges presented by patent pools can introduce complicated scenarios that may cause issues greater than what the pools were formed to avoid. Therefore, antitrust laws exist to promote honesty and fair circumstances for competition. However, every licensing agreement is different. Therefore, addressing specific provisions can make it difficult to provide antitrust rules that apply to all situations. Intellectual property by its very nature is unique, making it difficult to instill laws that are general and broad enough to encompass a tremendous amount of scenarios.

As the number of patent pools continues to rise, the need for antitrust laws promoting fair competition also rises. However, this area of law is not fully developed, enabling potential unfair situations presented by patent pools in the meantime. It will be interesting to see how patent pools can be regulated so that fair competition ensues. Unfortunately, given the complicated nature of intellectual property and individual licensing agreements, it may take some time to come up with solutions.

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.

Successful Athletes Are Ripe for Trademark Approval

In January, professional wrestler Rhonda Rousey filed a trademark for the “Rowdy” term. In March, the University of Maryland Baltimore County filed several trademarks after its historic win in college basketball when the No. 16 seed defeated the No. 1 seed in the NCAA men’s basketball tournament. In April, Boston Marathon winner Desiree Linden filed a trademark for “Keep Showing Up” to use on athletic gear. By filing for trademarks, these athletes and/or associations can capitalize on the accomplishments they have made.

People remember winners. Winning takes an abundance of skill and sometimes luck. When a remarkable win occurs, fans revere the athletes and their hard work. Therefore, it makes sense for athletes to capitalize on their wins by trademarking terms that the public associates with them. Obtaining a trademark is one way athletes can take control over who uses their likeness (or personal brand). It also gives them a way to continue earning money based on their skills, accomplishments, and dedication.

If athletes do not file for trademarks that people associate with their likeness, then other people and companies may try to make money on the hard work accomplished by these athletes. Furthermore, others may misrepresent or even abuse the likeness of a person, which could damage their reputation and downplay their capabilities. By filing for trademarks, these athletes are better armed to protect their image.

Not only are winners often an elite group of people, they are unique. For instance, there is only one Rhonda Rousey and one Desiree Linden. While other athletes exist in the same sport, their stories, skills, and accomplishments are always different. There is never the same story in any given win. Therefore, the logos, phrases, names, and terms for which these athletes apply are unique to those athletes. Furthermore, the more these athletes win or the more remarkable a win is, the more likely a trademark is warranted.

As athletes continue to achieve remarkable feats and set new records, the distinctive trademarks associated with them will continue to prove valuable to them.

Ohio State Football Coach Urban Meyer and His Worth

One of the most well-known college football coaches recently found himself in a contentious situation. On August 1, 2018, Ohio State placed Urban Meyer on administrative leave while a two-week investigation took place regarding his knowledge of a domestic violence situation involving his former assistant coach, Zach Smith. According to sources, Meyer knew about domestic violence charges against Smith, yet allowed the assistant coach to remain on the job. Meyer contends that he followed proper reporting protocol.

As with any news story, sources often take different sides. Some sources claim not enough evidence exists to fire Meyer and argue that he did the proper thing, while others believe Meyer should have fired his assistant earlier or taken stronger action. During the investigation, many stories continued to arise, often making it a he said/she said situation in the public eye. This publicity creates ground for arguments and adds to the chaos of a controversial situation. Ultimately, the final decision resulted in a three-game suspension over Meyer’s handling of domestic abuse allegations.

While the investigation ensued and Ohio State fans held their breath in anticipation of the outcome, the integrity of the university was at stake (and may still be). Negative publicity on such an important figure tied to the college reflects on the university as a whole.

Currently, Meyer’s net worth is reportedly $20 million. If the university had decided to fire Urban Meyer, there is potential risk that his value would decline. He could have lost nearly $40 million on his contract with the university. Furthermore, it could be difficult for him to find another position in the same capacity at another university or even in the professional football realm. He would likely lose endorsements. In fact, during the investigation, Bob Evans put its partnership with Meyer on hold. It is not clear whether the franchise will reinstate it now that the verdict is in.

Meyer is not the first coach to face such a circumstance. In 2011, Penn State fired its iconic coach Joe Paterno. Such circumstances do not only affect the coach, but also the university, students, staff, and fans. Therefore, much more is often at stake than just the career of the coach. The actual perception of the university is paramount.

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.