Tuesday, November 24, 2020

Registration of “Generic.com” Trademarks after Booking.com

One of the most critical aspects of starting a new enterprise, or growing an existing business, is
establishing and protecting a strong brand. For most modern entrepreneurs, this means not only selecting a name and logo but also acquiring a domain name. Some online businesses have taken the approach of using a domain that incorporates a generic term for the sort of goods or services provided by that business and using that domain not only for their website but also as their primary brand for advertising and sales purposes (for example, shoes.com, hotels.com, mattress.com). While these domains can be valuable from a marketing perspective, it can be difficult to protect these domains from a trademark perspective. This is a particular challenge for businesses that have come to use a domain as their primary brand, because such “generic.com” terms are often denied federal registration as trademarks. 

In June 2020, the U.S. Supreme Court issued a decision in United States Patent and Trademark Office v. Booking.com B.V. stating that trademarks that combine a generic term with a top-level domain such as “.com” should not automatically be considered generic overall. The United States Patent and Trademark Office’s (USPTO) had rejected Booking.com’s applications to register the mark BOOKING.COM for online hotel-reservation services on the basis that these terms are generic and unregistrable by default. However, the Supreme Court found that, if consumers recognize an applicant’s “generic.com” mark as specifically identifying that applicant as the source of the goods or services, the mark may be registrable. 

Wednesday, November 18, 2020

Trademark Scams: A Different Kind of Pandemic

 


As we near the end of another year, I am sorry to report that the number of misleading solicitations and notices received by trademark applicants and registrants has become so prevalent as to be almost epidemic (maybe a poor choice of words at this time but you all know what I mean).

Information regarding trademark applications and registrations is readily available in the public records of the United States Patent and Trademark Office (USPTO), as well as international and foreign registers. Private companies use this information to send official looking notices of impending registration maintenance deadlines, opportunities for private registry or other database registrations, watch services and similar offerings — all typically warning of an urgent need to act or risk adverse consequences such as the loss of trademark rights. In some instances, the notice may appear as an invoice or bill suggesting that the payment of a fee is the only requirement for satisfying the subject matter of the notice. These notices maybe sent by mail, email or even text message.

At one time, these scams were relatively obvious. Messages sourced from a strange email address, using poor grammar and misspellings to communicate unclear purposes for requested information or payment — all of these were obvious tips that something was not right. Unfortunately, misleading and fraudulent solicitations have increased in sophistication as well as frequency.  

Solicitations and notices for services relating to a registration or pending application usually come from an organization using an official-sounding name such as the “Patent and Trademark Office,” “Patent and Trademark Bureau,” “Trademark Compliance Center” or some other combination of words that appears to be government related. The notice will have accurate information regarding the subject mark and include official looking bar codes and logos in a format that is similar to or could be expected to come from a legitimate government source. Some may even include the official USPTO logo, or that of a legitimate international or foreign government registry. While these notices generally refer to an actual filing requirement, they are not always accurate about the timing of the requirement and the quoted fees are usually high, without specifying applicable government filing fees. 

Wednesday, November 4, 2020

A Latte Insight on Pumpkin Spice

 Each year, as summer fades into fall, there are certain autumn classics people anticipate, even during a pandemic: hay rides, football, raking leaves, etc. A relative newcomer to that list is pumpkin spice. Leading the pumpkin spice charge is the Starbucks Pumpkin Spice Latte that hit the market in 2003. Analysis of Google Trends data for the term “pumpkin spice” indicates that it was not until several years after the release of Starbucks’ iconic fall beverage that the pumpkin-spice bandwagon really got rolling. Google Trends data goes back to 2004. This data analyzes the popularity of search queries from Google searches.


The Google Trends chart shown below covers Google search queries for the term “pumpkin spice” for the time period from 2004 to the present. The horizontal axis represents time, while the vertical axis represents interest in a given Google search term, here, “pumpkin spice.” Regarding the vertical axis — from Google Trends: “Numbers represent search interest relative to the highest point on the chart for the given region and time. A value of 100 is the peak popularity for the term. A value of 50 means that the term is half as popular. A score of 0 means there was not enough data for this term.”

(Chart from Google Trends)









Increasing Popularity

To simplify, the higher the graph, the more popularity for the search term. So, in the mid- to late-2000s, pumpkin spice had moderate growth, and then began to take off around the turn of the decade. As seen above, pumpkin spice reached peak popularity in September 2017.

Seasonality

Also apparent is the seasonality of pumpkin spice, which can be seen in the spikes that occur each fall. Of note to pumpkin spice geeks is the day on which those spikes reach a peak. In 2004, the peak occurred on Nov. 25, Thanksgiving Day. Analysis of the annual peak for each of the years for which Google Trends has data indicates that, each fall, there is a peak around Thanksgiving. That peak has remained around Thanksgiving, but over time, a spike began to develop earlier (in September). It’s telling that as pumpkin spice has become more popular, companies saw the marketing value of providing pumpkin spice products, which caused consumers to anticipate a new wave of products as summer winds down.

Change in Seasonal Peak

Thanksgiving represented peak popularity of pumpkin spice season until 2016 when, as shown in the chart below, pumpkin spice peaked higher on Sept. 1 than Thanksgiving (Nov. 24) over two months later. Not only has this early-season peak surpassed the Thanksgiving peak every year since 2016, but the early-season peak has continued to start sooner, such that, for 2020, the peak was Aug. 25. Marketers have continued pushing pumpkin spice further into August as this year, Dunkin’ rolled out its Pumpkin Spice Latte on Aug. 19. Can July Pumpkin Spice be far off?
(Chart from Google Trends)





What started primarily with adding pumpkin spice to a drink, has, like every great entrepreneurial activity, spun into adding pumpkin spice to just about every conceivable product. A couple highlights, and the year they debuted, are noted below. Hurry up and get your pumpkin spice fill, because Starbucks releases its suite of festive beverages, including Peppermint Mocha, in less than a week, Nov. 7.

Timeline of Pumpkin Spice Products

2007 – Dunkin’s Pumpkin Flavor Swirl

Not to be left in the dust by Starbucks, the Pumpkin Flavor Swirl can be added to coffees, lattes, and other drinks.


2012 – Pringles Pumpkin Pie Spice

“Once you pop, you can’t stop” did not apply to this Pringles variety as it was discontinued.


2015 – Hostess Pumpkin Spice Twinkies

Eighty-five years after the snack cake was invented, it got a fall makeover.


2015 – Clear American Pumpkin Spice Sparkling Water

Evidence that anything can be turned into a pumpkin-spice product.



2017 – Greenies Pumpkin Spice Flavor Dental Treats

Fido is no longer left out of the pumpkin spice craze.


2017 – Native Pumpkin Spice Latte Deodorant

Keep that pumpkin spice scent with you long after you’ve finished your morning pumpkin spice latte.



2019 – Hormel Foods Pumpkin Spice Spam

In 2017, Spam shared a picture on its Facebook page of Pumpkin Spice Spam, a product that was not real and meant solely as a joke. The picture went viral, the product became a reality in 2019, and it sold out in hours. No doubt the café’s Viking patrons in the Monty Python “Spam” sketch would be big fans.


Friday, October 30, 2020

Yuval Noah Harari, Sapiens: A Brief History of Humankind (Harvill Secker, 2014)


Is it really possible to fit the history of mankind into a mere 500 pages? Yuval Harari gives it a shot and, while understandably a little light on a granular level, it’s a pretty enlightening journey, even to a history buff like me.

Take, for instance, money — a topic near and dear to every entrepreneur’s heart. Most of us think we know what it is, but really, as Harari tells us, money is an illusion, a social artifact that we all have agreed, consciously or not, will have a certain meaning. Money has no value except that which we give it. It’s all based on trust. 

Harari traces the development of money from ancient times, when bags of grain were used as a means of exchange, to the silver coins used during the biblical era. The silver itself had no inherent value. Unlike the grain, you couldn’t eat it, nor did this soft metal serve any other useful purpose, but it was a great deal easier to carry around and store. Fast forward to today, when most money is actually in the form of electronic data (not just credit cards, but Bitcoin!). Even easier to use!

The amazing thing is that this system based on trust is, and always has been, a global phenomenon. Harari says it all: “Money is the only trust system created by humans that can bridge almost any cultural gap, and that does not discriminate on the basis of religion, gender, race, age, or sexual orientation. Thanks to money, even people who don’t know each other and don’t trust each other can nevertheless cooperate effectively.”


Thursday, October 22, 2020

Farmers Are the Ultimate Entrepreneurs

Fall is here (although it looks like winter outside at the moment!). This time of year always makes me think of farmers across the upper Midwest harvesting their crops. I consider farmers to be the ultimate entrepreneurs and, generally, some of the smartest and most determined people I have ever met.

Like many entrepreneurs, 2020 has presented a lot of challenges for farmers who, even before this year, were already battling declining profit margins, low commodity pricing and increasingly unpredictable and extreme weather patterns. Farmers are constantly innovating, growing businesses by themselves and taking full responsibility for the success of their products, from seed to harvest. I think entrepreneurs can learn a lot from America’s farmers.

Here are three things entrepreneurs can learn from farmers: 

  • Use your mission as motivation. For an entrepreneur to be successful, the entrepreneur better have a mission that matters and motivates them. A farmer’s mission is to produce the world’s food and other essential agricultural products. Farming is essential and fundamental to society. An entrepreneur’s mission should be equally as critical.
  • Employ data analytics. Farmers rely on sophisticated data analytics to aid their decision-making, such as what crops to plant and when to plant them, whether to contract in commodity futures and when to sell products. Data allows farmers to evolve and to avoid relying solely on historical practices to dictate future actions. Entrepreneurs should use data to help them innovate with knowledge and confidence, particularly when you’re operating in a high technology environment where things can change rapidly.
  • You are only as good as you word. Farming communities are typically small and a farmer’s word means everything.
    Trustworthiness matters and can be a key driver in establishing a positive business reputation, business longevity and key business relationships. Of course, written agreements are relevant and can be important (how could a lawyer like me say anything different). Like farmers, entrepreneurs should value their verbal commitments at least as much as written legal agreements. 

There exists a misconception that farmers and farming are behind the times. Those of us who work with or have been exposed to farmers feel the opposite way. Just like high tech startup entrepreneurs, farmers frequently embrace innovation, work tirelessly and are among the first to take on risk and innovate if there is a potential return. 


Monday, October 12, 2020

Hot off the Press: SEC Proposes Conditional Exemption for Finders


It has been over three years since the SEC’s Advisory Committee on Small and Emerging Companies recommended (by a split vote) that the SEC should propose a conditional exemption for finders from the broker registration requirements of Section 15(a) of the Exchange Act for certain capital raising activities involving accredited investors. Last week, the SEC finally issued such a proposal

This is potentially big news! I’ve spent countless hours advising emerging companies about issues related to the retention of “finders” to assist with fundraising. For almost 30 years, these “finders” have been pointing to the Paul Anka no action letter* (from 1991) as evidence that they can be compensated for helping raise capital without being registered as brokers. 

The problem with the Paul Anka precedent is twofold. First, it is based on a very narrow situation that rarely matches the actual circumstances faced by people who regularly work to help emerging companies find capital. Mr. Anka only did it once in his life, and he never had any contact with the potential accredited investors about the investment. Second, given the SEC’s stance on the need for broker registration for anyone receiving transaction-based compensation in these situations, the SEC had essentially stated in recent times that, if it had a “do over,” even on the limited Anka facts, it likely wouldn’t have provided no action relief in the current regulatory climate. 

Tuesday, October 6, 2020

LET THE LAWSUITS BEGIN. ARE YOU READY FOR CCPA 2.0?


My last post discussed the California Consumer Privacy Act (CCPA), the importance of getting ready
for enforcement by the California Attorney General beginning last July 1, and the likelihood of lawsuits under the CCPA’s “first of its kind” private right of action.

We have not yet seen any government enforcement actions by the California Attorney General’s Office, but warning notices have apparently been sent to businesses alleging violations of the CCPA. While the content of these notices is confidential, Stacey Schesser, California’s supervising deputy AG, shared some information at an International Association of Privacy Professionals event in July. According to Schesser, the letters mainly targeted businesses that were missing key privacy disclosures (such as a “Do Not Sell” link) on their websites or weren’t properly responding to consumer rights requests, including those relating to the right of access or deletion. The CCPA allows a business 30 days to cure its violation before the AG takes any action.

While waiting for government enforcement actions, we have seen at least 34 class actions filed under the CCPA, including one against Walmart. The retail giant was allegedly hacked, resulting in credit card information of Walmart customers being sold on the dark web where criminals and fraudsters operate with relative impunity.