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June 25, 2002

A Naming Guy on MONDAY and CONSIGNIA

Burt Alper is Strategy Director of Catchword, a San Francisco naming company.  I asked him what he thought of two recent naming stories, PWC Consulting's change to MONDAY, and the British Post Office's change from the Post Office to CONSIGNIA, and then back to the Post Office.  Here is his reply:


"Before I start ranting and raving, please note that as a general rule, all name changes are viewed with disdain.  Accenture, Agilent, even FedEx and SGI (as official name changes) were all universally panned by the media, and worse still, most employees.  Over time, these brands have become more comfortable, and the barrage of complaints has died down.  Nevertheless, both Consignia and Monday suffer from "novelty blues".



Consignia was doomed from the start.  I understand why they wanted to change the name, but they should have known better than to choose a name like that.  Look at who they compete against:  United States Postal Service, Federal Express, DHL ... all very dry, but solid sounding organizations.  Companies that are considering a name change must be aware of who they really are, not who they wish they were.  Consignia is a fine name, just not right for Royal Mail.  It sounds techy, new, and Italian.  Even though the Latin root implies some sense of reliability, the style of the name is totally inappropriate for this space.  Royal Mail feels more appropriate.  It may reek of monarchy, but it sure sounds like the folks you expect to deliver the post.



What's most upsetting about all this is that they spent the money to change ... twice.  Talk about paying both coming and going!



The recent announcement by PwC is another example of inappropriate naming styles, although in this case, the semantic content of the name is troubled too.  (At lease Consignia didn't have any negative associations.)  Monday is the day we all dread.  Songs have been written about how crappy the day can be.  Other than Monday Night Football, can you name a single positive association?

 

But wait, there's more.  How are we supposed to use the name?  "I'm going to engage Monday."  How does one differentiate the dreaded day from the company?  How about, "I'm the president of Monday."  Oh really?

 

The web site tries to educate us on why the name works (starting fresh, working hard, etc.).  I found it interesting to note that the name does not function independent of the brand identity.  You NEED the background to understand the name.  Even if you didn't like the name Accenture, you could at least see where they were coming from.



I'm in the naming biz, so I know how hard projects like this can be.  Nevertheless, in their effort to think out of the box, PwC may have placed themselves out of contention.  Time will tell whether this name becomes accepted by the business community.  I'll wager they lose market share for the next 6-12 months until their remaining clients begin to spread the word about how good they are (and prospective clients become desensitized to the name itself).  Better deliver on quality of work, though, or the life of this identity will be short."

 

Thank you, Burt.

 

Posted by Marty at 03:58 PM | | Comments ()

Google and Chilling Effects

Law.com article on how Google handles copyright complaints.

Posted by Marty at 03:49 PM | | Comments ()

US Bancorp Prevails in First RDRP Decision

Registering a domain name merely to sell it held to be a violation of .biz's charter resriction that the name be used for a bona fide commercial purpose, under the Restrictions Dispute Resolution Policy.  Same registrant took the .info version as well, and lost that under the UDRP in a consolidated decision.

Posted by Marty at 03:29 PM | | Comments ()

June 21, 2002

Genericide of REALTOR Estopped For Now

A local realtor, er, real estate agent, brought this Trademark Trial and Appeal Board action against the National Association of Realtors to cancel its registration for REALTOR as generic.  NAR prevailed but the issue in chief wasn't tried.  Plaintiff  argued that REALTOR was already a generic term when she had been a member of NAR up unitl 1996, and not that it had become generic after she left NAR.  Thus, under the doctrine of licensee estoppel, she was barred from challenging the rights of her licensor.


Someone who has never been a member of NAR would not have that issue to contend with.

Posted by Marty at 04:23 PM | | Comments ()

June 20, 2002

Franklin Mint Prevails Over Princess Diana Fund

Princess Diana did not effectively protect the exploitation of her likeness in the U.S. during her lifetime, and her successor in interest, the Princess Diana Fund, failed in the lower court level against the Franklin Mint, which had been making Diana merchandise pretty much from the day of her wedding to Charles.  This Ninth Circuit decision affirms the lower court, and includes an interesting discussion of the post-mortem right of publicity in California, trademark fair use, and the awarding of attorneys fees.

Posted by Marty at 09:55 PM | | Comments ()

Trademark Applications Way Down

My practice is doing fine but this is still depressing.  Interesting discussion of the types of names people are selecting these days.

Posted by Marty at 04:12 PM | | Comments ()

Mouse v. Mouse

This article regarding Disney possibly opposing the Genessee District Libary Book Mouse isn't as meaningful if you can't see the actual mouse.

Posted by Marty at 04:02 PM | | Comments ()

Ambush Marketing at the World Cup

50 Chinese fans enter the World Cup stadium in Kwangju, South Korea, and security is alerted.  Preparations are made to intercept them and then averted at the last second.  Why?  Because they were all wearing hats bearing the trademark SAMSUNG, and Samsung is not an official sponsor of the World Cup.  "They're walking billboards now" laments FIFA's lawyer.  This from page B1 of today's Wall Street Journal.

Posted by Marty at 03:55 PM | | Comments ()

June 19, 2002

Naming and Searching

David Schwimmer (the actor, not my five month old son), played a character named Martin in a movie.  As a result, movie reviews of "Six Days, Seven Nights," (mostly pans), dominated any Google search for "Martin Schwimmer."  Finally, as a result of this blog, I have vanquished him to the third O in the GOOOOOOOOGLE results.

Posted by Marty at 10:24 PM | | Comments ()

More On Linking

Most of this Gigalaw how-to article on linking and framing isn't objectionable, but the best practice suggestion, "Don't Deep Link Without Permission," seems like overkill.  There is no caselaw to suggest that deep linking is per se illegal.  The two cases cited involved more than linking, but presumably misappropriation of data. 


Disclaimer: Not being your lawyer (as far as I know), I'm not rendering advice I intend for you to rely upon.  I'm just saying some of the other advice on the Internet perhaps shouldn't be relied upon.

Posted by Marty at 03:02 PM | | Comments ()

Panda Prevails in Steel Cage Death Match

House of Lords affirmed WWF victory.  Now the newly-renamed WWE is tempting fate by running bus ads featuring the McManos (with Sopranos imagery).

Posted by Marty at 02:46 PM | | Comments ()

June 18, 2002

I Want To Shoo-oo-oot the Whole Day Down

PWC Consulting is changing its name to MONDAY.  If you have a better name, please hit the envelope button to the left and send it in.  Best entry so far: HACKY SACK FRIDAY.


Update: I am not endorsing this parody site, just providing a link to it.


 

Posted by Marty at 06:11 PM | | Comments ()

I Would Use The Internet To Express Myself But I Couldn't Get The Right Domain Name

Other Icann-watchers are targeting Esther Dyson's column in yesterday's Wall Street Journal for various quotes such as "ICANN is weak and powerless" (this from ICANN's first chairman).  I'm puzzled by this one: "ICANN can control not so much freedom of speech as freedom of presence of the Internet."


I don't know what Ms. Dyson is referring to as "freedom of presence" but it seems to me that affordable and unfettered availability of Internet access is a lot more critical to "presence" than domain names and until people can access the Internet without bolting the door, then we're focusing on the wrong aspect of the issue.


 

Posted by Marty at 05:25 PM | | Comments ()

More Rights in GIVENCHY than GIVENCHY itself?

Strange blurb in the National Law Journal.  Givenchy (a sub of LVMH) owns US registrations for GIVENCHY for perfumes and watches.  Time Products alleges it has the rights to import and distribute GIVENCHY waches in the US (presumably from Givenchy's European watch manufacturer).  Givenchy distributed watches in the US as a giveaway with a purchase of GIVENCHY perfume.  Time Products has now brought suit in Florida alleging that LVMH has distributed "imitation and/or counterfeit" products.  I see how a trademark owner could in theory breach a sole and exclusive license.  I don't see how a trademark owner can sell imitations or counterfeits of its own product.  If I'm missing something, write me.

Posted by Marty at 05:05 PM | | Comments ()

June 17, 2002

Another Net Jurisdiction Case, This From the DC Court of Appeals

The latest case on jurisdiction in cyberspace. Not really a close case as to personal jurisdiction.  Defendant had applied for a securities license in the forum.

Posted by Marty at 04:20 PM | | Comments ()

June 16, 2002

Arsenal defeats merchant in Prelim Match, Now on to ECJ Cup

The use of sports teams' logos on merchandise is another perceived David v. Goliath trademark issue, pitting the greedy team owners against the small businessman who merely wants to provide the fan with the opportunity to express his/her allegiance to his/her favorite team, with logo merchandise at popular prices.


Arsenal, not quite in the same league (fame-wise, not soccer-wise) as ManUtd, sued some guy who hung out near the stadium selling scarves which said ARSENAL on them.  He made it clear that these were unauthorized.  


The British High Court (Laddie, J) had said: The logos on the stuff were for the fans to demonstrate their allegiance to the team, and not to designate the origin of the goods.  The use was descriptive, and not infringing.  Arsenal appealed to the European Court of Justice.


The Advocate General for the ECJ issued his opinion this week: it doesn't matter how the fan will use the goods, they bought it the merchandise because it has the trademark on it.  If the reproduction is unauthorized, then its trademark infringement.  Note: the Advocate General's opinion can be affirmed or ignored by the Court itself (although it's predicted it will affirm).


Special bonus to those who read the opinion: the Advocate General is obviously a soccer fan, and drafted a little economic history of soccer.  In fact, one almost gets the sense that he came down on the owners' side because soccer teams tend to be broke.  Use "Arsenal" as a search term after clicking here.


 

Posted by Marty at 01:34 AM | | Comments ()

June 14, 2002

Matt Damon as the Domain Administrator, Christopher Lee as ICANN

I have been leaving the reporting of the drama over the re-delegation of the .za TLD (South Africa's country-code) to Bret Fausett's ICANN Blog.  However I couldn't resist mentioning this story that, to prevent a government take-over, the former administrator has hidden the "key" to the domain abroad.  This is shaping up to be the first domain re-delegation to end in a chase scene.

Posted by Marty at 03:02 PM | | Comments ()

June 13, 2002

If The Lakers Win Next Year, Let's Just Call It Four-in-a-Row

This is the kind of story that gets anti-IP folk riled up about those who "highjack" common terms, but remember, Pat Riley can only enforce the trademark THREEPEAT against people who use it as a trademark, not people like you and me who use THREEPEAT all the time to describe situations where we have won our third consecutive championship.


Also, author uses "patented term" when he means "registered trademark."


 

Posted by Marty at 03:44 PM | | Comments ()

June 11, 2002

No Biz Like Paint Biz

This STOP decision transferring paint.biz to complainant is another argument for appellate review of UDRPs and other domain name resolution proceedings.  Complainant's ITU trademark application for PAINT.BIZ was filed after the November '00 announcement of the .biz TLD was announced.  It apparently does use PAINT.BIZ as a trademark on the real world.  We don't know if it began use of the mark prior to Nov. '00.  Such use would dispel the (plausible) notion that complainant set this whole thing up.


p.s. The panelist's observation that registration of a U.S. trademark provides constructive notice to defendant is both correct and irrelevant, as because this was a STOP proceeding, respondent was on ACTUAL notice that complainant DIDN'T have a U.S. registration.


 

Posted by Marty at 02:49 PM | | Comments ()

Brand As Navigator

The brand owner's dream is that if  your brand is ACME, then the consumer can find you at ACME.COM. In otherwords, the brand is the navigator.  In practice, the "dot com assumption" works effectively for only a small number of the world's brands, but it raises the hopes of any business.


How can navigational systems help the Internet mirror the ability of the real world to allow coexistence of identical marks in different geographic locations and different goods or services?  Unrestricted gTLDs provide no context when used as a search tool, and therefore cause consumer confusion and create the potential for cybersquatting.  Keyword functionality (common name resolution) should probably be an Internet standard built into browsers, and not something MSFT or Keith Teare or a private company should own.  Pay-per-view search engines are not really navigational aids . 


Google on the other hand, if it can develop functionality like this geographic-based search, may be a contender in the holy grail of brand navigation, where what you search for is what you get.

Posted by Marty at 04:25 AM | | Comments ()

June 10, 2002

However The Reference To Pavlov Appears To Be Without Irony

Good article from INTA on the protection of sound marks.

Posted by Marty at 05:34 PM | | Comments ()

World Wide Direct Line

I thought link-blocking software was going to make these disputes go away, but the Danish newspaper guild is one of several entities accusing linkers of trademark infringement (and, more plausibly, unfair competition).  In 1998 I wrote a paper entitled "Dismantling the Web With Trademark and Copyright Law."  The hypothesis was that the Web was anti-thetical to everything media needed to maintian status quo.  Encouraging linking was like encouraging channel-changing, and had to be removed (or seriously limited).  Will the Web look more and mpore like cable tv?


Question for discussion: if link-blocking software is readily available and a website doesn't employ it, does that imply a license to link?

Posted by Marty at 03:55 PM | | Comments ()

As Opposed To Basing Your Business On Publicizing The Misfortune and Suffering of Others

In defending its policy to oppose hyperlinks (see story above), the managing director of a Danish newspaper organization stated: ``We consider it unfair to base your business upon the works of others."

Posted by Marty at 03:14 PM | | Comments ()

June 07, 2002

Let's Go Into Business Selling Walkmans In Austria

This news story reports an Austrian supreme court decision stripping Sony of its trademark and holding that WALKMAN is generic for hand-held portable tape-players.  The text of the decision is not yet available.


Question for discusion:  If WALKMAN is generic in Austria, can I assemble them in Austria ans sell them into the rest of the EEC?  The 1998 ECJ SILHOUETTE case applies to the exhaustion of trademark rights, not the use of generic terms (for the text of the SILHOUETTE decison, click on caselaw and use 'Silhouette' as a search term when you go to the ECJ site.).  Here's more on parallel goods within the EEC.

Posted by Marty at 06:19 PM | | Comments ()

June 06, 2002

Ludicrous UDRP Decision

Registrant registered ralphlaurensheets.com and ralphlaurensheets.net.  It warehoused the names.  It did not respond to demand letters.  It did not respond to the UDRP.  And this panelist found that bad faith was not shown.  This decision shows as much as anything else how screwed up the UDRP is. 

Posted by Marty at 03:16 AM | | Comments ()

June 04, 2002

Try the Dover Sole or the Copper River Salmon

There's an article on the front page of the Wall Street Journal today about the town of Parma, Italy, home of not only Parma ham but Parmigiano-Reggiano cheese as well (also known as Parmesan cheese).  The ham consortium of Parma is involved in a dispute with Asda, a British supermarket chain, over the use of appellations of origin, indicators of geogrpahic source (such as "apples of Oregon").  The Parma merchants argue that hams raised and cured in Parma, but sliced and packaged in Britain, cannot be referred to properly as Parma Hams.  The Brits have won the latest round before the European Court of Justice, decision on its website.  Click on caselaw, then use 'ASDA' as a search term on the ECJ website.  When  Appellations of origin are big business.  Ask the lawyers for scotch whiskey or champagne sparkling wine. Parma Ham commands $20 a pound in the U.S. - that's more than any nationally advertised branded ham.  Next time you're in a good restaurant, look at the menu.  Chances are you will see several appellations of origin, and no brands.

Posted by Marty at 06:16 PM | | Comments ()

June 03, 2002

Better Rights in the Osbournes than the Osbournes themselves?

See the story about the self-infringing shirts and the shirts themselves.

Posted by Marty at 05:20 PM | | Comments ()

Welch Allyn vs. Tyco (TYCOS vs. TYCO)

Don't let this happen to you.  This Northern District of New York case doesn't really represent new law but it illustrates that "Creeping Equities" is still a common problem which can befall a strong mark in a narrow field.  Plainitff had used TYCOS on sphygmomanometers and stethoscopes since 1909.  Defendant, one of the world's larger companies, used TYCO as a secondary trading name when it entered the healthcare field several years ago.   Several years ago plaintiff probably would have lost a dilution action, as its reputation was in a specific field.  Now equity bars plaintiff from undoing the resulting reverse confusion.  


UPDATE on June 7: In view of the indictment of the CEO of Tyco this week, one wonders if Welch Allyn is experiencing schadenfreude.


 

Posted by Marty at 04:59 AM | | Comments ()

Dot Name and State of the Domain

Ben Edelman (a Harvard senior!!) has released another behaviorial report, this time on .name, available at http://cyber.law.harvard.edu/people/edelman/name-restrictions/.  He came up with 6000 names that violated the eligibility rules, such as, well, harvard.university.name and allergy.tylenolallergysinus.name.  GNR, the .name registry, receives approximately $11 for each registration, valid or not. 


The State of the Domain Name report released this weekend at www.sotd.info (sic) which estimates that GNR has registered approximately 75,000 names to date.  I suspect that GNR has spent at least $800k to date  (on great give-away bags at the Montevideo reception, for example). 


Taking into consideration these 6000 names and then the cyberpiracies (I have a matter against a guy who took about a hundred famous names) and other ineligible names, we are talking about maybe 10-15% of GNR's revenues.  One conclusion is possible: If a registry or registrar were to strictly enforce its own rules, it would put itself out of business.


Remember the reason NSI gave for not enforcing the .org charter?  It didn't want to punish the registrants who were telling the truth.  Also, there was the $70 a name.


UPDATE - June 7 - GNR has posted a response on www.icannwatch.org.


 

Posted by Marty at 04:31 AM | | Comments ()