Another Acronym to Add to the Bad Rebrand List

"Coffee by Design rebranded product packaging may be a bad rebrand"

Earlier this year, we wrote about AdAge’s list of the worst rebrands in 2018. Topping the list were acronyms, nicknames, and abbreviations. If Coffee by Design finished its rebrand to CBD in 2018 instead of 2017, it may have made the list as well.

Coffee by Design was founded in 1994 in Portland, Maine. The company operates four coffeehouses and coffee roastery that sells to nearly 500 wholesale and mail order customers around the globe. In 2010, Coffee by Design obtained a federal trademark registration for the acronym CBD in connection with “coffee shops” and “coffee.” In 2010, the CBD acronym did not dominate the Coffee by Design packaging, and the packaging did not change much, if at all, in 2015. But in 2017, Coffee by Design decided to change all of its packaging and marketing materials – from cups to bags – from Coffee by Design dominating to its new CBD logo dominating.

It was after this change was implemented that the problems started happening. In 2016, Maine residents voted in favor of legalizing recreational marijuana. Governor Paul LePage vetoed the adult-use pot bill, which the Maine Legislature overturned. That paved the way for marijuana retail shops to begin doing business in the spring of 2019.

Apparently, the owners of Coffee by Design did not know that CBD was a common acronym for cannabidiol, an ingredient in some products. All of a sudden, there was an influx of retail shops in Portland, Maine and other states where marijuana is legal promoting the sale of CBD products. This was causing confusion in markets where Coffee by Design was known.

It also caused some of Coffee by Design’s customers in geographic areas that do not allow marijuana sales or who simply do not agree with marijuana use, to question the quality of Coffee by Design’s product. As a result, Coffee by Design has spent considerable time and money to educate its customers that its CBD mark does not stand for cannabidiol. For example, the company had to prepare a list of talking points for its 65 employees to better handle questions about the confusion.

Despite the clear confusion occurring, Coffee by Design does not plan to rebrand again. The owners think the confusion will subside as the sale of marijuana becomes old news, and instead made a plea for the marijuana retailers to use cannabidiol instead of CBD when promoting their products. Well, we hate to burst Coffee by Design’s bubble, but that is likely not going to happen. When you choose a descriptive mark, businesses are allowed to exploit the descriptive meaning of the mark. Our best guess is the use of the CBD acronym is not going away any time soon.

WeWork is Expanding its Current Family of Marks

"WeWork sign on building that is part of a family of marks"

WeWork announced that a rebrand will follow the latest investment by Soft Bank in the company. Following the investment, WeWork will change its name to THE WE COMPANY. In a blog post, the company said:

“The We Company’s guiding mission will be to elevate the world’s consciousness. Living a conscious life means choosing to live proactively and with purpose. It means being a student of life, for life, where we accept that we are always growing and in a constant state of self-discovery, self-growth, and change.”

This sounds like a great mission statement although it is not entirely clear how THE WE COMPANY conveys this better than WeWork. The more likely reason for the rebrand is the company is growing its divisions and THE WE COMPANY better conveys this change in their business, which is a smart change.

THE WE COMPANY is creating a family of WE marks. WeWork operates individual and enterprise office. WeLive are residential living communities. WeGrow are early education schools. Additionally, WeBank, WeSleep, and WeSail are in the works. “A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.”

Marketed the right way, a family of marks increases the conceptual strength of a trademark, which is a good thing. As trademark searchers, it is also something we need to be aware of. More often than not, it is a good idea to avoid adopting a mark that may be misconstrued as being part of another party’s family even if the goods or services appear to be unrelated to the family.

Acronym, Nickname & Abbreviation Rebrands Top 2018 Worst List

"picture of an acronym, nickname, and abbreviation"

AdAge ended 2018 with its list of the worst rebrands of 2018. The unremarkable list included:

  • XANDER – short for Alexander Graham Bell – AT&T’s advertising unit
  • DUNKIN’ – abbreviation of DUNKIN’ DONUTS
  • FIG – abbreviation of FIGLIULO & PARTNERS
  • CAPRI HOLDINGS – new name for Michael Kors Holdings
  • M/H VCCP – acronym for agency Muhtayzik Hoffer
  • RTW RETAILWINDS – new name for New York & Co. Inc.
  • REFINITIV – Blackstone’s financial and risk business
  • KONTOOR BRANDS – VF Corp’s jean brands and outlet business
  • VMLY&R – name of merged entity comprising VML and Y&R
  • WW – acronym for Weight Watchers
  • Tribune Publishing – reversal of acronym TRONC, which stood for TRIBUNE ONLINE CONTENT

About 64% of the rebrands on the list involve an acronym, nickname, or abbreviation. Generally, naming professionals will say that a name should be easy to read, say, and spell. You would think that an acronym, nickname, or abbreviation would check all the boxes for a good name, but as you can see that it not always the case and why working with a professional is important.

Whether you are moving to a similar acronym or an entirely new word or phrase, you will have to spend some significant money to educate the market about your new name. Distinctiveness is an important characteristic of any new name. In the naming context, distinctiveness lets you stand out from the crowd. And in the legal context, distinctiveness provides broader protectable rights.

Consideration of an abbreviation, nickname, or acronym is a must when assessing the similarity of the marks confusion factor. And to adopt an abbreviation, nickname, or acronym of the long form for an otherwise problematic mark is not an acceptable work around. The Trademark Trial and Appeal Board has held on more than one occasion that “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words.” In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (C.C.P.A. 1978).

Building Brand Awareness Requires Consistent Trademark Use

"Aeromexico style guide showing brand awareness"

All startup companies and even some mature businesses have an issue with creating brand awareness, and brand awareness is the first step in the sales process. If prospective purchasers are unaware of your brand, it is much more difficult to get those prospective customers into the sales funnel and move them towards the conversion you want, which is ultimately a sale. There are many parts to building brand awareness, but one important part is consistent trademark use.

Recently, FastSigns highlighted four examples of business that made changes to their signs and graphics to help establish and grow their businesses. What you notice in the examples is not only the consistent use of graphics and colors, but also consistent use of the trademark. If the appearance of your trademark is different every time a prospective purchaser sees it, it will take longer to build up a strong association between the trademark and your goods and services.

After a mark is chosen, you then need to decide how the mark will be used so that it will stand out from the remaining text on the page and be distinguishable from other marks in the marketplace. These decisions should be standardized and set out in a Style or Usage Guide. 99designs has provided some tips on creating a Usage Guide, but their post also highlights the importance of working with a branding firm. After all, your business has just seven seconds with a customer to make a first impression.

Consistent trademark use is especially important if the chosen trademark is merely descriptive and the owner is trying to acquire trademark rights or the trademark exists in a crowded field. In these situations, the trademark conceptually is more difficult to distinguish from other similar trademarks. Therefore, creating the same experience for consumers will help estabi

Dunkin’ Donuts Drops DONUTS Says Call Us Dunkin

"Dunkin Donuts restaurant with new Dunkin logo"

On the heels of the Weight Watchers’ rebrand to the acronym WW, Dunkin’ Donuts announced that it is dropping the term DONUTS from its mark. Starting in January, the doughnut shop will roll out a new logo, store signage, and advertising, but will keep its orange and pink color scheme. But the change is not sitting well with all Dunkin patrons who have a connection to the misspelled DONUT, which is created when the brand launched in 1950.

Ordinarily, deleting non-distinct matter from a composite trademark does not affect the overall commercial impression of the mark. In fact, the Trademark Manual of Examining Procedures states that non-distinct matter should be excluded from a trademark drawing when an application is filed. But something is being lost in the DUNKIN’ DONUTS case because over the years consumers have come to recognize the misspelled word as indicating Dunkin’ Donuts as the source of goods or services displaying that term. And consumers are capable of identifying the same source through more than one trademark. So it seems like Dunkin’ Donuts is losing something by dropping the misspelled DONUTS from its mark.

Dunkin’ Donuts said the reason for dropping DONUTS is to highlight a wider array of menu items and appear to a younger generation. Vox reported what it perceives as a trend for established brands to rebrand to something more “vague.” In the case of an established brand dropping a non-distinctive term like in the case of JO-ANN FABRICS rebranding to just JOANN, the mark is not getting more vague. It retains the distinctive portion that consumers rely on to identify the source of the goods or services.

A trademark is not supposed to say everything about a company’s business. That is what advertising copy is for. The trademark is supposed to represent the reputation of the company, and serve as an indicator of the quality of the goods or services. In other words, when consumers see DUNKIN’ they don’t need to immediately know that the company sells doughnuts, coffee, sandwiches, salads, etc. When they see the term DUNKIN on, for example, a rice cake, they will presume the rice cake is delicious because of their positive experience with the DUNKIN brand.

Does an Acronym Make a Good Name and Trademark

"Weight Watchers' new logo the acronym WW Wellness that Works"

Weight Watchers announced its rebranding to WW and the launch of a new tagline Wellness that Works, which set off the debate about whether this was a wise move. Weight Watchers was founded in 1963 and currently operates in about 30 countries around the world. The company’s mission was to help participants lose weight by forming helpful habits, eating smarter, getting more exercise, and providing support.

In March of this year, Weight Watchers announced that it intended to enter the competitive meal kit market with the likes of Blue Apron. It was reported that this step was part of CEO Mindy Grossman’s vision of rebranding the company as healthy lifestyle brand. The move to WW that stands for Wellness that Works instead of Weight Watchers is another move in the rebranding plan. But if the decision was made to move entirely away from the brand that has been used for over 50 years, moving to an acronym may not have been the best choice.

Whether you are moving to a similar acronym or an entirely new word or phrase, you will have to spend some significant money to educate the market about your new name. Distinctiveness is an important characteristic of any new name. In the naming context, distinctiveness lets you stand out from the crowd. And in the legal context, distinctiveness provides broader protectable rights.

Accordingly Acronym Finder, there are 81 different WW acronyms. There are also 202 registered trademarks for WW in the United States Patent and Trademark Office database. Not all of these registrations are in the healthy lifestyle space, but it demonstrates that consumers are exposed to a lot of WW acronyms. As a new acronym just starting out, that mean a lot of effort educate the market what your WW stands for.

Acronyms also do not solve conflicts with prior registered marks, which could be increased because of the sheer number of acronyms that are registered. Time will tell whether it was a smart move to walk away from 50 years of prior use of Weight Watchers in favor a new WW acronym or if it could have been possible to create new brand messaging using the well-known Weight Watchers mark.

If At First You Don’t Succeed, Start the Rebranding Process

"times square at night showing the rebranding process"

The rebranding process is often times easier said than done, but it should not be considered an off-limits concept. Especially for startups who may not have the money to pay for professional naming services, it may be that the name you adopt does not resonate with your customer base. The foolish thing that any business can do is to recognize a bad decision but to stubbornly not make the necessary changes. The smart business decision is to start working on the rebranding process – maybe this time with some professional naming help.

If you find yourself in a situation where the rebranding process is necessary, you don’t have to feel alone. Some of the worlds largest companies went through a rebrand.

Larry Page and Sergey Brin, the founders of Google, originally launched the search engine under the BACKRUB name. After a year of living with BACKRUB, the name was changed to GOOGLE.

Richard Schulze, the founder of Best Buy, opened his first electronics store under the name SOUND OF MUSIC. However, after a tornado forced Mr. Schulze to run a large sale of the damaged merchandize promising “best buys,” which was a huge success, the company’s name was officially changed to BEST BUY.

Steve Case, the founder of AOL, launched the online bulletin board under the name QUANTUM COMPUTER SERVICES. This name stayed with the company while it acquired more than 100,000 members, but was eventually changed to AOL.

Caleb Bradham, the inventor of Pepsi, originally branding the soda BRAD’S DRINK, but about five years later rebranded it Pepsi-Cola. PayPal was originally CONFINITY. Blackberry was originally called RESEARCH IN MOTION. And Yahoo was originally called – take a breath – JERRY AND DAVID’S GUIDE TO THE WORLD WIDE WEB.

There are other examples that could have been included, but the point is that business owners should not be afraid to change course on a name if the name originally chosen is not working. Just make sure you conduct a trademark search on the new name first.

Life is Good Learned the Hard Way that Font Style Matters

"Life is Good logos with different font styles and colors"

The goal of every trademark applicant should be to secure the broadest scope of rights possible. One way to achieve this is to rely on the standard character form drawing when filing a trademark application instead of the particular font style used for the literal portion of the mark. We talked about the standard character form drawing in a prior post. However, sometimes protecting the font style used in a trademark makes business sense to do.

Life is Good used a unique font style for its LIFE IS GOOD logo that resonated with consumers. In fact, the font style became something consumers relied on to distinguish LIFE IS GOOD goods and services from others. In 2015, Life is Good substituted the unique font style for a more traditional typeface. This seemingly small change had a large impact on the brand’s image.

The main purpose of the mark drawing is to provide notice of the nature of the mark sought to be registered.  The drawing of a mark is promptly entered into the automated records of the USPTO and is available to the public through the Trademark Electronic Search System (“TESS”) and the Trademark Status and Document Retrieval (“TSDR”) database on the USPTO website. A special form drawing is required if words, letters, or numerals are presented in a distinctive form that engenders an uncommon or “special” commercial impression that would be altered or lost if the registration issued based on a standard character drawing.

A trademark applicant employing a unique font style that it recognizes consumers rely on to distinguish its goods or services from those of another company should protect both the literal portion of its mark in a standard character form and its stylized form. The reason to protect the stylized form in this circumstance is that it makes a potential enforcement matter more easy if the infringer adopts a similar typeface as well. But if you don’t know if consumers will rely on the typeface to distinguish your goods or services from others, then just stick with the standard character drawing.

Rebranding Report: MONI Rebrands to Brink’s Home Security

"Announcement of MONI rebranding to Brink's Home Security"

Security Sales & Integration reported that after rebranding from Monitronics to MONI less than two years ago, the company has become the exclusive licensee of the Brink’s Home Security brand. Brink’s Home Security was spun off from The Brink’s Company in 2008 and changed its corporate name to Broadview Security in 2009 as a requirement of the spinoff. Broadview Security was acquired by Tyco International 2010, and its services were transitioned to the ADT brand. There are two federal registrations for the BRINK’S HOME SECURITY mark, which are owned by Brink’s Network.

MONI is one of the largest home security companies in the U.S. with about one million subscribers. Peter Giacalone – a Security Sales & Integration columnist – opined that the reason MONI pulled the plug on its rebrand so fast was because “[t]he MONI brand really had no great impact or history.  It was a good thought at the time, but pales in comparison to resurrecting the Brink’s brand.” First year royalties for the BRINK’S HOME SECURITY mark are reported to be about $5 million.

This story demonstrates what we discussed in a prior post that brand drives revenue. If you have the opportunity and financial means to step into the shoes of a recognized brand, it may be hard to turn that opportunity down, which is what MONI apparently was presented with.