Conclusion of the Made In USA series

This is the last installment of a three-part journey.  What’s become of 2012’s holiday ad campaigns “Made In USA”?  The campaigns seemed to be coming from everywhere, and they sort of were headed from those various directions.  We are six-months in to this fiscal year.  Let’s recap.

 

There was not a lot of main-stream news announcing a patriotic trend in American consumer loyalty during the holidays.  We discovered an abundance of Made In The USA visual marks registered with the United States Patent and Trademark Office (USPTO). For example:

We noted there is a big difference between a visual mark and a basic word mark because descriptive words do not often merit trademark protection.  Thus, I cannot trademark “Oranges” to sell oranges.  A category of marks known as “certification marks” is available and anyone who meets those standards can use those marks.

The USPTO does not police fraud in the use of made in The USA or made in America claims.  The enforcement of labeling the national source of origin of goods and the requirements for the labels you see on your clothes and other goods are the providence of the Federal Trade Commission (FTC).

Charged with preventing deception and unfairness in the marketplace, the FTC Act gives the Commission the power to bring law enforcement actions against false or misleading claims that a product is of U.S. origin. Traditionally, the Commission has required that a product advertised as Made in USA be “all or virtually all” made in the U.S.

U.S. content must be disclosed on automobiles and textile, wool, and fur products. There’s no law that requires most other products sold in the U.S. to be marked or labeled Made in USA or have any other disclosure about their amount of U.S. content. However, manufacturers and marketers who choose to make claims about the amount of U.S. content in their products must comply with the FTC’s Made in USA policy.

The policy applies to all products advertised or sold in the U.S., except for those specifically subject to country-of-origin labeling by other laws. Other countries may have their own country-of-origin marking requirements. As a result, exporters should determine whether the country to which they are exporting imposes such requirements.  For more information about the FTC click here.

Measure twice, cut once.  Be sure to consult an attorney with experience in your industry before launching an advertising campaign.  In the end, you are responsible for protecting your own trademarks.  Registering them with the USPTO provides the owner of those marks with some greater protection than if the marks are not registered.  Registration is an expensive process for most.  One trademark in one category typically costs $325 just to file the application for registration.  Selecting and protecting your trademark is part of building your business.  It’s an investment in the goodwill and reputation of your company.  If we can help you with your trademark needs feel free to contact Daniel at Elliot-Davis, PC, via email Daniel@elliott-davis.com

Made In USA in the News – Made in America label stages comeback at U.S. stores

BY ADAM REISER

MAY 3, 2013

NEW YORK: When Roger Simmermaker went shopping for clothes at a Florida mall in the mid-1990s, he wanted to buy American, but to his frustration, he couldn’t find anything made in the USA.

The experience motivated Simmermaker, an electronics technician by trade, to write “How Americans Can Buy American” – a guide to finding products manufactured in the United States, which were a scarce commodity at the time. 

Nearly 20 years after writing the book, he has seen a big change, with the pendulum in full swing back toward a wider choice of American-made products. They are often available without the expected higher price tag.

“It’s definitely easier,” says Simmermaker, 47, who lives in Orlando and works for a defense contractor. “Especially in the last year or so, things have really changed.”

Those who believe in buying American-made goods from US-owned companies say it creates jobs and boosts the economy through reinvested profits and taxes.

Profit-driven US companies have their own reasons for locating factories, but manufacturers of goods ranging from refrigerators and dishwashers to laptops and tablets are starting to bring some of their production home, affording more opportunities for consumers with the patriotic conviction that Americans ought to buy American.

Better still, that “Made in the USA” label may no longer carry such a premium price tag. That’s because production and shipping costs in China and other foreign manufacturing centers are rising. Shifting some manufacturing back to the United States doesn’t necessarily mean manufacturers have to raise prices to compensate for higher labor costs.

To be sure, many industries are still dominated by imports – toys and textiles, for example. Still, Simmermaker and others who believe in buying American are seeing a broad shift.

“Reshoring” advocates were thrilled earlier this year when Wal-Mart Stores Inc., the world’s largest retailer, announced it was throwing its weight behind the movement. In January, the chain – known for its extensive selection of imported goods – said it would spend an additional $50 billion over the next 10 years on American-made products, “helping to onshore US production in high-potential areas like textiles, furniture and higher-end appliances.”

Likewise, Apple Inc. said it planned to build some of its iMac line in the United States instead of China. Ford Motor Co., Coleman Co. (part of Jarden Corp. ) and Master Lock Co. (part of Fortune Brands Home & Security Co.) all have said they’re returning some manufacturing to the United States. The list goes on.

WHAT IT MEANS FOR CONSUMERS 

While few companies will move production for patriotic reasons alone, the public relations boost that goes with a decision to bring jobs back to the United States is gravy.

“They run the numbers and say ‘We can deliver just as cheaply from a US operation as we can from, say, China.’ It has some nice extra benefits,” says Dan Seiver, chief economist for Reilly Financial Advisors, a wealth management firm in San Diego, California. “Whatever credit goes with it is fine”

With little pricing difference, the impact on US consumers might not be that obvious. But Simmermaker and other advocates also contend that products made in the United States are often higher-quality and safer than those made elsewhere.

There is a decided upside for the companies, too. Making products closer to their end-market allows them to be more nimble in terms of customizing and delivering products.

That was the case with Spreadshirt, a Germany-based custom shirt maker that recently opened a plant in Nevada to supplement the output of its existing facility in Pennsylvania.

In 2011, the company was running its Pennsylvania plant around the clock. To keep up with holiday demand, it was forced to send some work to a plant in Poland, said Mark Venezia, vice president of global sales and marketing for North America.

But the company quickly realized that the distance hurt overall costs and speed – to the tune of about $2 more per unit. “We didn’t lose money, but, obviously, it hurt our bottom line,” Venezia said.

Hunting for a new location led Spreadshirt to Henderson, Nevada, where facilities that met specifications were available at favorable terms, along with a pool of prospective workers.

“We just got this incredible deal that provided us so many benefits,” Venezia said.

Made in USA Certified Inc.

Selecting and protecting your trademark is part of building your business.  It’s an investment in the goodwill and reputation of your company.  If we can help you with your trademark needs feel free to contact Daniel at Elliot-Davis, PC, (412) 434-4911, extension 34.

Original article posted at MadeInUSANews.com

Made In USA

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Made In USA

We saw it on TV, we saw it on Facebook.  -Buy American this holiday season and help Santa support the American manufacturing industry?  Where did it come from?  Did it work?

The Facebook campaign launched prior to the holidays was done by Made In the USA Challenge. Through a meme, they claimed that consumers could contribute substantially to our Nation’s fiscal health by purchasing American made products. The National Retail Federation estimates Americans will spend more than $586 billion this year on holiday gifts and goodies -  that’s $750 per shopper. An article by ABC’s Diane Sawyer claims that if we all spent just $64 more on gifts with a “Made in America” label, we could create 200,000 new American jobs.

There is an abundance of Made In the USA visual marks.  That doesn’t necessarily mean all those goods and services are in fact made in the USA.  There is a special mark at the United States Patent and Trademark Office (USPTO) for verifying such patriotism of consumers’ goods and services.  Look for the word “certified,” or the like, on your goods.

A certification mark is a mark that is used or intended to be used by authorized parties to show that goods or services have been certified, namely, to meet certain qualifications and standards. That is, a certification mark certifies regional or other origin of goods or services, as well as certifies other characteristics of goods or services, or certifies that the work or labor for the goods or services was performed by a particular group. 

If the provider of a good or service can properly fit the definitions of the mark, then they can use it.

What happens if you discover a product falsely using “Made In USA” language?  I asked the USPTO, to which they gave this canned response: “LEGAL ADVICE CANNOT BE PROVIDED.”  It is important to note that the policing and enforcement of trademark rights lies with the owner.  The USPTO only registers trademarks.  The trademark owner is responsible for any enforcement.

There is a marked difference between a visual mark and a basic word mark.  To use the words “MADE IN THE USA CERTIFIED” one will have to contend with the owners of those words:  Made in USA Certified, Inc. in Florida and any person or entity using a  visual mark containing those words would be might expect to find themself in a Florida courtroom.

If you just want to support the cause and could care less about enforcement, a good resources for finding all things Made In USA, is madeinusa.org.

I invite you to take this discourse further.  Please email Daniel@elliott-davis.com.  Subject Line: Made In USA.

Selecting and protecting your trademark is part of building your business.  It’s an investment in the goodwill and reputation of your company.  If we can help you with your trademark needs feel free to contact Daniel at Elliot-Davis, PC, (412) 434-4911, extension 34.

The New Dan

Dearest Readers,

Dan Corbett set an impressive standard for this site.  When you ask this young man who his favorite bloggers are in the field, he delivers a spreadsheet.  Ask him, “what is a blog?” and he patiently indulges your willful technophobia.  It seems he grew up without a speed-limit on the information highway.  I was young in a simpler time, when kids were not allowed to touch the computer.  That said, I hope to stay relevant and keep everyone coming back for more.

Owner: Coca-Cola Co.

My first recollection of trademarks involved customer confusion and a cola company trying to protect its brand.  You may already know this story, but when I was a kid growing up in Kansas, one could walk into a restaurant, order a Coke®, and get any number of cola brands in his cup. For many good reasons, the cola companies required servers to disclose what brands, in fact, were served if a customer asked for a cola by brand-name.

Imagine a cola company’s point of view; surely they want to protect their brand’s reputation for taste, to leverage their advertising and sales efforts, and to prevent a phenomenon known as “genericide.”  Genericide will get its own blog-post one day, but in short:  it is the death of a trademark due to the fact that it is now a generic term and no longer indicates the source of a product or service.

My first formal education in the law of trademarks was in 1991.  Freshman-year, studying journalism and creative writing at IU in Bloomington, I learned that brand-names were off-limits for print.  The concept that some words were off-limits grabbed me as a challenge.  I grew enthused with the idea that I would write a novel chocked-full of as many brand-names as I could imagine.  Let’s face it, a character wearing sunglasses, using a cotton swab to remove the red chili pepper sauce from his right nostril, begs the question:  What brands does this guy buy?

Fear not, I’ve grown to appreciate the rules of capitalism since then.  Fourteen-years of legal practice have set me straight.  I aim to continue to do the following, but not limited to:

1. Contribute reliable information,
2. Stay relevant,
3. Entertain readers about the wily adventures of trademarks,
4. Humbly accept underwriting in any form, including brand-placement (we’ll talk terms later),
5. Listen and respond to reader-inquiries as efficiently as humanly possible.

Stay tuned, the next blog will explore the certification mark: “Made In USA” and we’ll see what reports come from the holiday marketing campaign this past season?

In the meantime, please enjoy this game for the bored:  As an experiment, try to go 2 days without using a brand-name.

Daniel T. Friedson

2013, Jan 6th

Signing Off (and Turning Over the Keys)

After more than three years of blogging at Pittsburgh Trademark Lawyer, this will be my last post.  I am leaving Elliott & Davis (the firm that has graciously indulged my blogging habit this entire time) to pursue other professional opportunities.

I have enjoyed the last three years, and, as someone who firmly believes in learning through teaching, this blog has been an incredible learning tool.  It’s forced me to stay current on developments in the law and has kept me armed with interesting cocktail-party-type anecdotes (e.g., the legal implications in Mike Tyson’s face tattoo) that have hopefully (at least to some degree) dispelled the notion that lawyers are boring or square.

I want to thank everyone who has read the blog (regularly or casually) of the past three years.  I’m grateful to have developed a steady flow of traffic that I wouldn’t have thought possible back when I was just getting started.

Finally, I’ve made some really good friends in the process.  Special thanks to Jim Singer, Tom Galvani, Ron Coleman, Ryan Gile, and Jack Greiner for their sharing links, thoughts, and experience.

But my departure doesn’t mean the end of Pittsburgh Trademark Lawyer—not in the least.  (Insert appropriate “the end is the beginning” type clichés here.)

I’m happy to announce that Daniel Friedson will be taking the helm in my absence.  Dan will roll out his first post early in the New Year, but I am confident that I’m leaving you in more than capable hands—another Dan, another journalism guy, and (a credential I can’t boast, but is definitely a nice one) a former clinical law professor.    Meet the new Dan, (kinda the) same as the old Dan.

College Football, Cookies, and Finding a Balance in Trademark Protection

College football season is upon us.  This weekend, a lot of eyes will by on my alma mater as they take on Penn State in its first game in the wake of the recent scandal.  A lot of eyes will be glued to TV sets and filling the stands in stadiums across the country. And that means huge licensing money, especially for high-profile teams.   According to the Collegiate Licensing Company, collegiate licensing is a market currently valued at $2.7 billion a year.

With this much money at stake, it’s not surprising that universities are going to great lengths to make sure the valuable brands that underlie their sports teams are protected.  But as readers of this blog know, there have been numerous accounts in the media over the last few years of “trademark bullying” — instances where brand owners are seen as going too far in protecting their rights and risk alienating potential customers.

So where do we draw the line between good enforcement and “bullying”?  As with most legal questions, there’s often a lot of grey area, but I think consumers themselves provide a nice feedback loop.  (Which perhaps lines up with or could be explained by a consumer theory of trademark law.)

The University of Alabama came under fire recently after it sent a cease and desist letter to a local bakery demanding that it stop making cakes and other desserts bearing the university’s logos.  After a widespread show of support for the bakery, Mary’s Cakes & Pastries, the university changed its tune and (get this!) apologized to the bakery for sending the letter.

This might leave some lawyers scratching their heads, but marketing and PR folks would see this as a no-brainer.  Why would you want to alienate the very people you’re hoping will fill the stands each fall and buy your official merchandise?

I think it’s fair to draw a distinction between the Alabama cookies dispute and, say, an instance where someone is selling knockoff t-shirts that compete unfairly with officially-licensed merchandise.  But what about the “zone of expansion” argument and the “duty to police”?  Even though I think Alabama did the right thing from a PR standpoint, would they have an argument that baked goods are a market to which they’re likely to expand or that they can’t acquiesce to the bakery’s use for fear of losing their rights?  Should they?

Those are the thoughts to chew on.  But, thankfully, what could have been another story of trademark bullying had a happy ending.

 

 

 

Newton Running and the Importance of Effective Branding

Not all lawyers think and write about branding strategies. Tom Galvani does, and he offers us some nice observations on Newton Running.  After a few minutes of impromptu guilt for being behind on the Sisyphean Runners World training schedule I’m currently using, I thought about Newton and what it takes to make the move from good branding to great branding– the kind of branding that’s so effective that people order wedding cakes that look like your running shoes.

Newton is a relatively new player in the high-end running shoes market. Interestingly, Newton started out with no intention of becoming a shoe company.  The founders’ original plan was to develop new technologies around the idea of “barefoot” running and license the technologies to a larger company like Nike or Adidas.  But when the large shoe companies passed on the idea, Newton kept going and became what it is today– a very successful niche running shoe company.

I first learned of Newton at a race expo, and my interest was piqued, in large part, because they were something different– a highly-touted (a shoe’s presence at an expo is some signal as to quality/seriousness) shoe with an unfamiliar logo.

There’s always been cache in being new or different, and I think Newton is a great example of this. In a strange way, the ubiquity that most brand-conscious companies seek can actually drive away (at least some) consumers.  This consumer segment tires of established brands and seeks out something novel.

(I’m curious if someone can think of other examples of brands that succeeded by virtue of being a fresh face in a market with a lot of bigger, older players.)

Tom duly notes, in his post, the importance of trademark protection for brand owners.  I’ll be the first to second that thought.  If I didn’t believe in it, well, I guess I’d be blogging about something else entirely– or maybe just using the internet for its true purpose: circulating cat memes.

In any case, what are the branding takeaways here?  Here’s what I have so far:

• Innovation matters.  Newton got its start (and finds a rabid base of fans willing to pay their $175 price tag) because they’ve focused on new technologies and other ways of setting themselves apart in the market.
• Timing is everything.  Newton got into a market at time when participation in marathons and other running events was on a dramatic rise.
• Focus on one thing and do it well.  Newton only markets shoes and apparel for runners.  This signals to consumers that Newton makes better running shoes than, say, a company with a similar history that’s trying to market multiple sports.
• Engage your audience.  Newton has a really cool blog where they provide interesting content (videos, running tips, etc.) and interact with their fans.

Anything I missed?

N.Y. Court Rules That “INSTANT HEART ATTACK” Can Stay on Menu, Despite Trademark Claims

There’s been a lot of talk on blogs and in the media on the recent decision by the Southern District of New York in a case involving a Las Vegas burger joint and a New York deli’s dispute over sandwich names that pay tribute to their cardiac side effects (the TRIPLE BYPASS BURGER and the INSTANT HEART ATTACK SANDWICH, respectively).

Applying the likelihood of confusion factors, the court held that the New York deli can continue using its name.  Tim Buker and Ron Coleman offer some nice analysis of this case at their blogs.

Tale of a Trench-Coat

Luxury retailer Burberry has made excellent use of Facebook’s Timeline feature, using the tool to showcase advertisements and other photographs showing their products over the years.  (If you scan down to the 1910s, you can check out some Burberry-brand aviator suits which I’m pretty sure would be tough to track down today.)  This all sounds well and good, but this is a law blog and not a paid endorsement for Burberry, so you know there’s conflict ahead.

When Bogart, LLC, the company that manages Humphrey Bogart’s celebrity rights, got wind of the fact that Burberry had included a photograph of Bogart wearing a Burberry trench in the film Casablanca they threatened Burberry, claiming violation of right of publicity as well as trademark infringement and unfair competition. Burberry fired back, requesting declaratory judgment of non-infringement.

So who’s correct here?  It’s first important to note that copyright and ownership in the photo itself is not an issue here– Burberry had obtained a proper license to use the photo.  With copyright off the table, the question then becomes whether Burberry’s use of the photo constituted a trademark infringement or, failing that, a violation of Bogart’s right of publicity.

Burberry should have a fairly good argument as to the trademark issue.  It’s not as though they’ve launched a retail campaign with advertisements, signage, and other media that trades on the image.  The use in the Facebook Timeline, they’d argue, when taken in context, is one of many factual statements the company is making about its history.

When it comes to the right of publicity claim, things are less clear.  As the Bose Media Law Blog explains nicely, when it comes to these claims, it’s good to be in California.

Looking past the legal analysis under these doctrines, this case raises much larger questions that brand owners, marketing professionals, and lawyers will want to watch closely.  Depending on how this case proceeds, the court may address important issues regarding social media, advertising, and free speech.

Right now, the lines are a bit blurry (which could help or hurt Burberry here).  It’s clear that Burberry enjoys some commercial advantage by being on Facebook (oh, and it probably doesn’t hurt to have 12 million fans).  But does that mean that all of the company’s activities on Facebook are strictly commercial and not legitimate instances of story-telling or commentary (thus entitled to First Amendment protection)?

Courts are going to face more and more difficult determinations such as this one and must be careful to craft rules that provide clarity, fairness, and workability to all parties involved.  There’s no question that the law should recognize and protect the rights of celebrities as relates to unwelcome endorsements or false sponsorship, but the law should be careful, too, to leave room for story-telling.

Western PA Company and Captain Morgan Square Off on Trade Dress

For many years, Capri Sun had the pouched-beverage market cornered.  As children, we were attracted to shiny, colorful packaging and the novelty of drinking from malleable pouch (despite the repeated frustrating experiences trying to insert the drink’s plastic straw without punching a hole in the side of the pouch).

Fast forward to today.  Not all beverages served in pouches are sugary kids’ drinks– adult beverage companies have jumped on the idea.  Which brings us to a recent IP dispute of local interest.

As the Pittsburgh Tribune-Review reports, American Beverage Corp. (based in Verona, PA, just outside of Pittsburgh) filed a federal trademark lawsuit recently, claiming Diageo, which owns Captain Morgan, copied its single-serve frozen cocktails design, constituting patent and trade dress infringement.  The Complaint is available here.

I’m not a patent attorney, so I won’t go into the question of whether the Defendants’ design infringes on Plaintiff’s patent.  But this case does present an interesting question about trade dress.

Here’s a look at the products, side-by-side.

Generally speaking, trade dress will not be protected if it’s “functional.”  If trade dress didn’t have this limitation, competition would be inhibited.  The first person to think of serving beer in a bottle would “own” that concept, and so on and so on.

But trade dress protection is available to reward producers for creating innovative product designs (and to protect consumers from confusion when they rely on the distinctive appearance of a product to make a purchasing decision).  Most people can recognize a bottle of Coca-Cola by its shape, even if the label were removed.  So the question is, how unique, how distinctive, is the American Beverage pouch? Is it like the Coca-Cola bottle, or is it just another pouch?