Monthly Archives: November 2017

Branding 101: Understand Your Message

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“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

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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.


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A Brief Overview of the Trademark Registration Process

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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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