KFC’s Unique Brand Extension: a Fire Log

"KFC brand extension into a fire log"

Kentucky Fried Chicken a/k/a KFC took its brand to a whole new level with the KFC fire log. Now, you can have the smell of KFC’s fried chicken not just at dinner time, but all day long. At least you could have had that smell if you were lucky enough to get your hands on one. Apparently, the KFC fire log sold out in hours.

KFC’s decision to launch a fire log under its well-known KFC brand is a bold, but helpful brand extension. It is helpful because brand extensions increase the strength of the mark. The more opportunities consumers have to encounter a mark, the more likely they are to associate the mark with a single source.

It is also a common misconception that a trademark must be used at all times otherwise the trademark rights are abandoned. A trademark must be continuously used, but that use needs to be consistent with the nature of the goods or services being offered for sale. In this case, KFC is offering the logs for a limited time. So long as KFC repeats this activity in 2019, it will be able to maintain its trademarks rights for KFC in a fire log.

Another good example of this are businesses at county or state fairs. There are several businesses that exist solely to sell their goods for a limited time during a state or county fair. But they do this every year and don’t lose their trademark rights when the fair closes for the year.

What is also interesting about the article is KFC’s statement that “[t]he smell of the Colonel’s Original Recipe fried chicken is unmistakable.” This statement suggests a non-traditional trademark in the form of a smell. The definition of a trademark in the Trademark Act is extremely. It says that anything can function as a trademark provided it is capable of distinguishing and indicating the source of goods or services. If the smell of the Colonel’s fried chicken is unmistakable, then pursuing non-traditional trademark protection may be worth considering. These types of trademarks generally require more effort to protect, but they are a great addition to any trademark portfolio.

Branding Cooperation Key for a Successful Franchise

"Boy eating french fries outside a McDonald's franchise"

A franchise relationship is a trademark license relationship that has crossed the control line into turn-key business. A franchise relationship exists when: (1) there is a trademark license; (2) a fee; and (3) the trademark owner provides significant control over the operation of the business. This control element exceeds the quality control requirement of a trademark license, which is to monitor only the quality of the goods or services, and marketing collateral bearing the mark to ensure a certain standard is maintained. In some cases, a franchise relationship is the best way to scale a business and building unity between the franchisor and franchisees is key to success.

A franchisee is the franchisor’s presence in a given geographic area. In other words, the franchisee is the eyes and ears of the company. The United States is not a homogeneous market. What is important to consumers in Midwest about about a good or service may not be the same to consumers in, for example, the Northeast and so on and so on. A strong relationship between franchisor and franchisee can result in this information exchange and more targeted branding.

One aspect of a targeted branding strategy is the use of different taglines. A house mark (i.e., the trademark that appears across product and service lines) or product mark (i.e., the trademark that appears on a specific product or service) cannot change by the market. There needs to be consistent use of these trademarks for many reasons. A house mark or product mark also does not have to tell a prospective consumer everything about your goods or services. Other marketing collateral can be used convey this type of information including taglines.

A tagline can indicate source just like a house mark or product mark, so they should be protected and searched like a house mark or product mark. But the luxury of a tagline is that it can be more targeted to the geographic market it is being used in. This is not to say that franchisors should not also have a national tagline for the business. What this means is that a business should recognize that consumers can and will identify with their business through multiple trademarks. So the franchisor should develop a trademark portfolio accordingly by working with its franchisees on what taglines resonate with consumers in their particular geographic markets.

Interworking of the Similarity of the Marks Factor

"Cartier watch and two rings are jewelry that was the subject of a case involving similarity of the marks"

A recent Trademark Trial and Appeal Board decision is a good example of how the similarity of the marks, relatedness of the goods or services, and strength factors work together. Tai Fook Jewellery Company Limited sought to register the mark T MARK (in standard characters) for, among other goods, jewelry. The Trademark Office refused registration of Chow’s trademark application on the ground that its mark was likely to cause confusion with a prior registered mark TJ MARC & Design also for jewelry. .

Chow made the same losing argument about the sophistication of the consumers claiming that jewelry is personal; therefore, consumers will exercise care when making a purchasing decision. However, the Trademark Trial and Appeal Board said what it was said numerous times before that if the restriction does not appear in the goods or service description, then it will not read a limitation in to the description. Accordingly, the Board found the goods are legally related.

When goods or services are legally related, the channels of trade and classes of consumers are deemed to overlap. Moreover, less similarity between the marks at issue is required in order for a likelihood of confusion to exist.

Chow also made the common losing argument about the strength factor. Chow introduced a table of six third-party registrations – four shy of the 10 we believe is the minimum required to establish a weak mark – and then only one third-party registration containing the letters TJ and covering jewelry. Therefore, the rights in the TJ MARC & Design were not limited to a close representation of its mark.

When it came to the similarity of the marks factor, the Board stated that marks must be considered in light of the fallibility of memory. The proper focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.

Because the goods were legally identical, the fact that the marks began with the letter “T” and ended with the word MARK or MARC made the marks more similar than dissimilar. The crown design element and use of TJ instead of just the letter “T” were insufficient to distinguish the two marks because the TJ MARC & Design trademark was not weak, and consumer focus on the literal elements of a trademark before any design element (although this is debatable).

Using Sans-Serif Font Makes a Bland not a Brand

"Brandless website showing sans serif brand"

A recent Fast Company article identified displaying a trademark in sans-serif font as the hottest branding trend in 2018. If you were part of this trend, the article labeled your trademark a bland not a brand. According to the article, blanding occurs when the trademark lacks any meaningful differentiation from its competitors. Even a coined trademark is incapable of being a brand if it is not accompanied by something that makes is visually pop. The author says “[t]he point is differentiation; by definition, that’s what branding is.”

We have the large tech companies:  Apple, Google, Aribnb, and Uber, to thank for this trend. Because of the nature of their businesses and market status, just the word in sans-serif font functions as a brand not a bland. Their success has spawned a legion of imitators who can’t do the same thing. “The problem is that the blands haven’t earned the branding they ape.”

The article alludes to differentiation occurring through more than just sight, which is absolutely true. All the messaging done through advertising and public relations ultimately is embodied in the trademark, and that is what consumers recognize when they see a trademark even if it is just the word. If your brand strategy is to use the trademark in a sans-serif font, that is perfectly okay so long as you are using other collateral to differentiate your business and to tell your brand story. The experience consumers have with your business will influence the differentiation in the marketplace more than any visual cues your trademark may possess.

For example, look at the evolution of the Google trademark. The color placement and font style has changed over the years, but that is pretty much it. Starting out, the GOOGLE trademark could have been considered a bland not a brand by the article’s standard. Over time, Google has clearly become a well-known brand that consumers trust regardless of how the GOOGLE term is presented.

The question for young companies is whether you need eye-catching branding to begin with or if can build the differentiation you need other ways. What is important for young companies to keep in mind is that it takes time to build a brand and is something that can’t be rushed. Patience is key and so is the commitment to sticking with the brand strategy.

Rare Loss for Plaintiff in Alcoholic Beverages TTAB Case

"Thunder Road whiskey bottle wins at TTAB"

Breweries, distilleries, and wineries that are defendants in Trademark Trial and Appeal Board cases have not fared well this year. More often than not, alcoholic beverage defendants foolishly cling to overly broad goods descriptions that ultimately prove to be their downfall. The scene was set for another plaintiff victory in a recent TTAB case, but in a rare turn of events the defendant prevailed because it properly offered sufficient third-party use evidence to establish the term in common with the plaintiff’s mark was conceptually weak.

Thunder Road Brands, LLC applied to register the mark THUNDER ROAD (in standard characters) for “alcoholic beverages, namely, Tennessee sour mash whiskey and moonshine.” E. & J. Gallo Winery opposed the registration of the THUNDER ROAD mark based on its prior registered mark THUNDERBIRD for the broad description “alcoholic beverages except beers.” Thunder Road Brands did not bring a motion to narrow E. & J. Gallo Winery’s broad description to the actual THUNDERBIRD product, which is a flavored fortified wine.

Accordingly, with the goods being legally identical – thus less similarity between the marks required for a likelihood of confusion to exist – and the marks sharing the THUNDER term in the first position, things were not looking good for Thunder Road Brands. Its only hope was to convince the TTAB that the THUNDER term was so incredibly weak that the difference between ROAD and BIRD was enough to avoid a likelihood of confusion.

E. & J. knew this and offered evidence of its commercial strength:  (1) continuous use since 1957 (over 60 years); (2) sales volume and revenue from 2009-2016; (3) advertising expenses from 2009-2015; (4) two YouTube videos showing a THUNDERBIRD television advertisement; and (5) third-party publicity in two songs, one by ZZ Top and the other by The Beastie Boys. The TTAB was unpersuaded by this evidence because it was stale and showed a downward trend. Strength or fame must be determined at the time of trial.

Similarly, E. & J. relied on two stale brand awareness studies, but more importantly E. & J. failed to properly authenticate the studies. Nevertheless, while the evidence did not establish fame for likelihood of confusion purposes, the Board did find that the evidence demonstrated the THUNDERBIRD mark was entitled to broader than normal scope of protection. However, based on what happened next, “broader than normal” probably means THUNDER used with a bird name.

Thunder Road Brands offered 25 third-party registrations and 13 Internet examples of THUNDER formative marks mostly for beer. These examples were relevant because the Board found that beer, wine, and spirits are related goods. The Board held that these third-party examples were enough to outweigh the evidence of commercial strength offered by E. & J. to the degree that it concluded the THUNDER term for alcoholic beverages is overall a weak term.

What makes trademark issues deceptively simple is the interplay between the likelihood of confusion factors, which are generally overlooked by attorneys that merely dabble in trademark law. In this case, because the Board found the THUNDER term was weak, the difference between ROAD and BIRD was sufficient to distinguish the marks despite the goods being legally equivalent.

Assessing Trademark Strength at the Search Stage is Critical

"Snap & Pour logo the SNAP does not lack trademark strength"

Trademark strength is an extremely important likelihood of confusion factor even if it is not generally a dispositive factor like the similarity of the marks or relatedness of the good or services factors. When the trademark strength of a particular term used in connection with certain goods or services is improperly assessed it generally leads to unintended consequences. These can include spending unnecessary money prosecuting a trademark application or getting into a dispute with another party. We say the former happen in a recent Trademark Trial and Appeal Board decision.

Gabor Alex Stibinger filed a trademark application to register the mark SNAP FUNNEL (in standard characters with FUNNEL disclaimed) for “funnels; household utensils, namely, specialized funnels with a small diameter inner bottom opening and a larger diameter bottom outer ring specifically adapted to stabilize the utensil to various size bottles that also acts as a pour spout; household utensils, namely, silicone funnels; pouring spouts for household use.” As a preliminary matter, we have to ask why Mr. Stibinger would settle on this description. It does no good to include an extremely broad description like “funnels” along with the narrow description that describes the funnel in detail. A trademark application is not like a patent application. There is no benefit to writing a goods or services description like claims in a patent application.

The Trademark Office refused registration of the SNAP FUNNEL mark based on a prior registration for SNAP & POUR  for a “funnel which snaps onto plastic containers, including automotive fluids and household cleaners and detergents.” Mr. Stibinger appealed the Trademark Office’s refusal to the Trademark Trial and Appeal Board.

In his brief, Mr. Stibinger cited 61 third-party registrations that included the SNAP term. However, none of the registrations were for funnels. In fact, the Board found that none of the third-party registrations were for goods related to funnels. Accordingly, none of the third-party registrations established the SNAP term lacked trademark strength when used in connection with funnels.

If Mr. Stibinger was aware of these 61 third-party registrations during the trademark search stage and a proper trademark strength assessment was made, then maybe a decision could have been made to avoid the refusal based on the SNAP & POUR mark. We know that when a term lacks trademark strength, adding another weak or even generic term like FUNNEL could be enough to avoid a conflict. But when there is no conceptual weakness, then adding a more distinctive term is necessary to avoid a conflict.

BOB’S Take on the Seattle NHL Team Name

"Welcome sign to Seattle NHL team"

The National Hockey League recently announced the addition of a new team in Seattle, WA bringing the total number of teams in the league to 32. This is an exciting time for hockey fans, but also an exciting time for namers and trademark searchers. Shortly after the announcement of the new team in Seattle, the speculation began about the new team name. It did not take long for the list of prospective names to be leaked and for Vegas to start putting odds on which team name will emerge victorious. 

Here is the list of prospective names:

Vegas believes the EMERALDS is the odd on favorite to be the name of the new hockey club. Being the inquisitive trademark searchers that we are, we want to know what BOB thinks the name should be. We used BOB’s patent pending, multiname search functionality to conduct the search. 

First, we downloaded the Sample Excel Worksheet. Next, we entered the proposed names under the “Mark” column. In the “Wild Card” column, we used the truncation symbols we believe will result in a broad enough search to uncover any potential conflicts with the proposed names.

We saved the Excel Worksheet to our desktop and went back to BOB’s website. There, we uploaded the Excel Worksheet and selected a goods and services description. 

We chose “Entertainment Services” because a hockey game is entertainment and we want to know about other entertainment services that may have names similar to the names the new Seattle franchise is interested in. It is always a good idea to use a broad description of goods or services in a trademark search. You can’t eliminate marks from the results as not being concerning if you don’t find them in the first place.  

Finally, we entered our email address – bob@trademarkbob.com – and clicked “Import.” We received a message that our list was uploaded, the 13 credits were deducted from our account, and within minutes the results were in our in-box. 

What we learned is that there is a crowded field for every mark being considered by the Seattle franchise except for TOTEMS. In other words, there are other entertainment services being offered in connection with the entire proposed name or a portion of the proposed name. And because none of these marks are for “entertainment services, namely, hockey games,” Seattle franchise should be safe to adopt anyone of them.