Branding 101: Understand Your Message

“Bluetiful” is the newest addition to the 24-count Crayola crayon box. The color was inspired by YInMn Blue, the blue pigment discovered accidentally in 2009 by chemist Mas Subramanian and his team at Oregon State University. Bluetiful replaces the yellowish color, Dandelion. (What was wrong with Dandelion?)

Was “bluetiful” an error in branding? Critics say the name will teach children a non-word, and incorrect spelling. No doubt it will. But according to Crayola’s CEO, “[b]luetiful was the clear winner,” out of the other possible names, Blue Moon Bliss, Dreams Come Blue, Reach for the Stars, and Star Spangled Blue.

Disconnects in language, culture, and customer attitudes have resulted in some pretty memorable and clear branding misses.

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The Risk Associated with Cease and Desist Letters

In an ongoing trademark dispute between Forever 21 and Gucci, Forever 21, Inc. v. Gucci America, Inc., et al., 2:17-cv-04706 (C.D. Cal.), Gucci recently got the upper hand, slightly: the court granted Gucci’s partial motion to dismiss–but permitted Forever 21 to amend its complaint.

This dispute began nearly a year ago, in December 2016, when Gucci sent Forever 21 a cease and desist letter demanding that Forever 21 cease all sales of garments and accessories bearing the stripe combination blue-red-blue. Gucci owns a federal trademark registration for that stripe combination.

Gucci sent two more cease and desist letters in January and February 2017, threatening to file suit against Forever 21 if the garments and accessories containing blue-red-blue and green-red-green stripes were not removed from its stores and website.

Instead of responding to Gucci’s letters, Forever 21 preemptively filed a declaratory judgment action against Gucci in the United States District Court for the Central District of California asking the court to declare that its garments and accessories do not infringe Gucci’s striped marks.  But Forever 21 didn’t stop there. It also requested that Gucci’s trademark registrations for the stripe combinations be cancelled based on lack of secondary meaning, aesthetic functionality, and genericism.

In response to Forever 21’s declaratory judgment action, Gucci moved to dismiss and filed counterclaims for trademark infringement, trademark dilution, and unfair competition.

On November 13, 2017, the Court agreed with Gucci that Forever 21 had failed to sufficiently allege facts supporting its claims for cancellation of Gucci’s striped marks, but gave Forever 21 leave to amend its complaint.  In other words, Forever 21 gets another bite at the apple.

It is important to keep in mind when you send a cease and desist letter in a trademark case that the letter itself will put the other side on notice that you may file a trademark infringement or dilution lawsuit against them. This threat, without actually filing suit, gives the other side time to preemptively file its own declaratory judgment action.  Suit is often filed in the most convenient, suitable jurisdiction for the other side, which may well be someplace inconvenient for you.  Be aware of this possibility the next time you send out a cease and desist letter.

If you need help understanding your trademark rights, Goodell DeVries can help. Contact Jim Astrachan at 410-783-3550 (jastrachan@gdldlaw.com) or Kaitlin Corey at 410-783-3526 (kcorey@gdldlaw.com).

A Brief Overview of the Trademark Registration Process

Before a business begins to use or files to register a trademark, it should research if other businesses are using the same mark for the same services, or if any have in the past. It should also do the same for any related, or similar marks for similar goods or services. This sort of search is designed to find federal trademark registrations, pending applications for federal registration, and common law (unregistered) trademarks that are in current use.

Such search should be conducted and reviewed by an experienced trademark attorney who can determine whether your proposed mark is, or may be considered, confusingly similar to a preexisting mark and can assess the risks associated with such finding. For example, if your proposed mark is confusingly similar to a preexisting mark, you face the risk of receiving a cease-and-desist letter or trademark infringement claim from the prior mark owner. You could also lose the investment and goodwill in your mark and spend considerable sums to re-brand your business if forced to cease usage.

Additionally, you will not be able to federally register your mark if it is confusingly similar to a mark covered by a prior federal registration or a prior-filed pending application. A trademark attorney can also advise whether your mark is distinctive (and thus capable of federal registration) or whether it is too descriptive to qualify for registration because the mark describes some feature, characteristic, function or purpose of the products or services to be provided under the mark.

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