Branded keywords generate some of your highest converting traffic. But that makes them a prime target for trademark bidders who steal your clicks, drive up your costs, and even mislead your customers.
The report on Branded Keywords looks at trademark bidding across 250+ popular brands in 10 industries to find out just how much damage trademark bidding is causing. The full report is available for download today at https://www.brandverity.com/branded-keywords/.
Julianne Henley is a guest author and a member of GSB's Cannabis, Hospitality, Travel and Tourism, and Intellectual Property Practice Group. You can reach Julianne at firstname.lastname@example.org or at 206.816.1375.
Brexit, the United Kingdom’s (UK) decision to leave the European Union (EU), is headline news. Brexit is already impacting trademark rights in Europe, including in the hospitality industry.
Our friends (and former contributors) at Seattle-based BrandVerity produced an infographic showing that the average hotel brand is losing 26,500 website visitors on direct web traffic each month, leading to a real loss in revenue as these bookings are made elsewhere. Their findings are based on the information found in the hotel selection of their quarterly report on The State of Branded Keywords in Paid Search.
The report assesses the paid search landscape on branded keywords of over 250 consumer-facing brands. Looking at Q1 2015, it found that trademark bidding has cost the typical brand tens of thousands of visitors each month. The full report is available for download today at https://www.brandverity.com/branded-keywords/.
We are excited to announce that The State of Branded Keywords in Paid Search, Q4 2014 is now available for download from our good friends (and former contributors) at Seattle-based BrandVerity. This comprehensive report shows how third parties use popular brand terms in paid search advertising, and includes over 250 brands from 10 different categories. This report is an update of their Q3 2014 study, previously featured on our blog.
If you have any questions about the report, please feel free to contact me.
Ruth Walters, member of our Hospitality, Travel and Tourism practice team, focuses on hospitality operations, general intellectual property and technology transactions. In today’s post, she describes how trademark infringement suits can be tricky at best and the various factors to consider before filing suit. Thank you for today’s post, Ruth! – Greg
Lagunitas Brewing Company filed a federal trademark infringement lawsuit against rival Sierra Nevada Brewing Company. A mere day or so later, Lagunitas dropped it. In addition to providing some writers the opportunity to make awesome (see above), or groan-worthy puns, the situation is an interesting example of how legal justification and the money to sue are not the only ingredients to consider when policing a brand.
In its complaint, Lagunitas alleged that the label for Sierra Nevada’s new Hop Hunter IPA infringed a family of trademarks owned by Lagunitas representing its own IPA labels. In particular, Lagunitas alleged that the large block letter style in the center of the label used by Sierra Nevada plus the prominence of the term IPA was likely to create consumer confusion as to the affiliation of Sierra Nevada with Lagunitas with regard to this particular beer. Pictures of the labels can be found here or here, for example. It’s possible Lagunitas would have won the suit, but as soon as the public got wind of what was brewing, trouble began fermenting and Lagunita’s founder tweeted that he was dropping it.
This subreddit post and comments provide some interesting discussion of past, similar lawsuits and the tone is generally negative or mocking (and also contains some NSFW words). While the craft brew industry has been exploding since the 70s, it seems from the backlash against Lagunitas that at least some of its members and consumers believe the industry should behave like a small artisan’s guild where mutual adoration of the product and commitment to the craft make legal disputes like this as unseemly as bar brawls.
The reality, of course, is that craft breweries are facing increasing competition in the marketplace and must fight ever harder to distinguish themselves from their competitors. This means working harder and harder to choose distinct brands and to protect them. Every trademark attorney, including this one, hammers into the heads of his or her clients that a failure to police trademarks can result in a loss of rights, so it is always important to watch the marketplace (and trademark registries) for potential infringers.
And yet, deciding whether to proceed with a demand letter or lawsuit is always risky and not just because litigation costs money and is uncertain. Non-legal considerations, like customers’ perception of the brand and its market position, public relations issues and other very fuzzy (fizzy?) factors might influence a trademark (or copyright) owner to let matters lie or even help them come up with more creative solutions to the issue. Like Linden Lab did back in 2007 when Darren Barefoot made a parody of their MMORPG Second Life (here’s an archived copy of GetAFirstLife.com, with the link inviting a cease and desist letter at the bottom and some content about bodily functions). A legal parody using other’s trademarks and copyrighted material is difficult to achieve; this all could have gone a very different way.
None of this is to say that Lagunitas’ suit was frivolous and merely intended to intimidate Sierra Nevada or the rest of the industry, or to do else that might be called “brand name bullying,” nor that what is perceived as bullying is, in fact, bullying and not protection of one’s property. It is simply to point out that the benefit of taking legal action in intellectual property matters, even with perfect justification, may pale in comparison to how taking that action may be perceived by the folks on whom the business’ existence relies—its customers.
Do you need to register or renew your trademark? Claire Hawkins, Chair of our Intellectual Property Practice group and member of our Hospitality, Travel and Tourism practice team, shares the good news of reduced application fees being offered by the US Trademark Office in 2015. Thank you for today’s post, Claire! – Greg
If you’ve waited until 2015 to register or renew your trademark, you are in luck: this year it will be $50 cheaper to file a trademark application and $100 less expensive to renew a trademark registration with the US Trademark Office, which is great news for all hospitality businesses looking to build, refine, or maintain their US trademark portfolios.
In the December 16, 2014 issue of the Federal Register, the PTO issued Final Rules reducing fees for trademark applications and renewals. The purpose of the new rules is to increase end-to-end electronic processing, to encourage electronic communications, and promote efficiency. The changes go into effect on January 17, 2015.
According to the PTO the reduction is possible due to efficiencies that have allowed the PTO to create an operating reserve and that the revised fee structure maintains a reserve sufficient to manage operations and address long-term investments. The changes will also help to continue with an appropriate and sustainable funding model; support strategic objectives relating to online filing, electronic file management, and workflow; and improve efficiency for operations and customers.
The fee reductions are applicable if a trademark application or renewal for the Principal or Supplemental Register is filed using the Trademark Electronic Application System (“TEAS”). In addition, applicants must authorize email communication and file specified documents electronically throughout the application process. Failure to fulfill the requirements under the new rules will subject the applicant to an additional processing fee of $50.00 per class.
The fee changes are as follows:
- $275.00 per class, a $50.00 reduction, for filing a new trademark application using the standard TEAS application form. This option will be known as TEAS Reduced Fee (“TEAS RF”).
- $225.00 per class, a $50.00 reduction, for filing a new TEAS Plus trademark application. A TEAS Plus application is one in which the goods/services description comes directly from the PTO’s Acceptable Identification of Goods and Services Manual.
- $300.00 per class, a $100.00 reduction, for the renewal of a trademark registration.
As expected, the public comments to the proposed changes supported the fee reductions. The changes are seen as good news for small businesses and individuals who saw the fees as a barrier to trademark registration. In addition, two commenters suggested increasing fees for filing paper applications; however, the PTO advised that there are no current plans to increase any filing fee.
What is soft branding? Is it better to be a soft brand or a hard brand? Claire Hawkins, Chair of Garvey Schubert Barer’s Intellectual Property Practice and member of Garvey Schubert Barer’s Hospitality, Travel and Tourism Practice, gives serious consideration to the outer edges of soft branding and offers her insights on the intellectual property components hoteliers and restaurateurs need to consider. Thank you for today’s post, Claire! – Greg
“I know it when I see it”: Considerations for Soft Branding
Independent hospitality businesses can benefit from the appeal of freedom, individuality, and uniqueness, but over time may also struggle with the lack of convenience and efficiency that established, consistent, and defined brands have. One-of-a-kind hotels, restaurants, or the like are great at capturing customers preferring “hidden gem,” “independent,” “boutique,” “local,” or “customized” venues, but by not going so far as to define the scope or consistent aspects of their brand, may not have the resources necessary to adequately protect the time and effort it took to develop and implement the unique aspects of the brand. A sign of success is surely competition, and it takes real cash and resources to stay ahead of trends. How then is it possible to have the flexibility of a unique and undefined brand, but also to prevent brand infringement and consumer confusion from copycats?
The décor or trademarks of major brands such as Marriott, Applebee’s, or even Motel 6 and Olive Garden are easy to define and identify. Recognition is one benefit of defined branding, along with the ability to set and meet customer expectations. The counterpart to these hard brands is of course the soft brand. Soft brands essentially define what a brand is supposed to do, rather than what elements make up that brand. Is it better to be a hard or a soft brand? Hard brands have the perception of strength and solidity, and soft brands communicate of grace and fluidity. With either, consistency is key, but consistency is much harder to achieve with soft brands.
If it is at all possible, building a more defined brand portfolio is helpful when trying to keep hold of your good idea, and to stop others from appropriating efforts or styles you worked so hard to establish. One way to protect and be better able to police a brand is to have definitions, uniformity, and registrations.
Not just logos or words can be registered and protected with the US Trademark Office, but décor, product packaging, and color schemes as well in the category of “trade dress.” Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products and to prevent a consumer from buying one product or service under the belief that it is another. For example, an arrangement of a children’s clothing line, the design of a magazine cover, the appearance and décor of a chain of restaurants, and a way of displaying wine bottles in a wine shop can all be protectable trade dress.
To register trade dress with the US Trademark Office, the trade dress must be defined and consistently used, but also be distinctive and not simply functional. These requirements serve the purpose of trademark or trade dress protection generally, which is to allow customers to identify the source of a product or service by creating recognition in the consumer’s mind.
Given these seemingly strict requirements, before dismissing trade dress registration out-of-hand as to restrictive to your one-of-a-kind brand, consider whether you might still be able to meet the minimum threshold to register some aspects of your brand, which could go some distance to both building a portfolio of intellectual property assets that can be leveraged, but also allow you to stop infringers and copy-cats:
1. The US Trademark Office requires a clear statement of the goods or services offered in connection with the trade dress, e.g., “retail store services featuring communication products and services,” “hotel and motel services,” “casino services,” “resort hotel, restaurant, bar, and lounge services,” or the like.
2. You must also submit an image and description of the trade dress to be protected:
? Color is not claimed as a feature of the mark. The mark consists of trade dress consisting of a three-dimensional building with concave facade, a curved roofline sweeping up toward the left top corner when viewed from the front and the word "WYNN" in a stylized script in the top left corner. The horizontal lining does not indicate color, but is a feature of the trade dress.
? Color is not claimed as a feature of the mark. The mark consists of trade dress of a hotel's exterior. At one corner of the building is a tower featuring several windows beneath a ledge, above which is a pedestal featuring the stylized text "MOTEL 6". The elements in the drawing shown in broken lines show the position of the mark as applied to the building in which the services are provided and are not claimed as features of the mark.
? The color(s) white, orange, gray, dark orange, and beige is/are claimed as a feature of the mark. The mark consists of trade dress consisting of the interior of a hotel room. The walls in the room are white except for two walls that are colored orange: the wall behind the combination TV stand/hanger rod and the wall behind the bed. The bed features a gray blanket with a dark orange sash. Above the bed are two white rectangular wall lights. On one side of the bed is a built-in luggage rack that spans the distance to the wall featuring the window and on the other side is a built-in nightstand that spans the distance to a beige seat, which conforms to the wall. The seat is immediately adjacent to a writing desk, beneath which is a four legged chair, and above which is a mirror with a small ledge beneath it and below a rectangular white light. At the far end of the room is a window covered by a dark orange curtain that matches the bed sash. The elements in the drawing shown in broken lines show the position of the mark as applied to the room in which the services are provided and are not claimed as features of the mark.
? The color(s) green is/are claimed as a feature of the mark. The mark consists of a three-dimensional trade dress depicting two exterior doors. Each door has a green frame, a green bottom portion, and a glass panel in the upper portion. The wording "ROCCO'S TACOS AND TEQUILA BAR" appears on the glass panel. Door elements shown in dashed lines are not part of the mark. The colors black and white represent background, outlining, shading and/or transparent areas and are not part of the mark.
? The color(s) blue and white is/are claimed as a feature of the mark. The trade dress consists of repetitive wording in blue on a white box, the wording consists of the following, all in blue and in no particular order; hot burgers, pop, cool and frosty soda, luscious frosty soda, creamy shakes, luscious mouth watering warm buns, firm fries, warm buns. The words POP BURGER are in blue and appear at the center of the top of the box, which logo consists of the word POP with the image of a burger in place of the letter O, and the word BURGER written across the patty of the burger.
3. To secure US registration of trade dress you must submit a date of first use and to maintain the registration, consistently use the mark as shown on the registration.
The benefits of federal registration include formal, public notice of your claim of ownership of the trade dress; a legal presumption of your ownership of the trade dress and your exclusive right to use the trade dress nationwide on or in connection with the goods/services listed in the registration; the ability to bring an action concerning the trade dress in federal court; the use of the U.S. registration as a basis to obtain registration in foreign countries; the ability to more easily stop competitors from engaging in behavior that is likely to cause consumer confusion; and the inclusion of the asset in your intellectual property portfolio.
If a definitive brand is not your thing, here are some additional options to help protect your investment in a soft brand:
? Agreements – consider non-compete language in agreements with employees, franchisees, licensees, and the like with respect to specific or general brand aspects.
? Remaining fluid – put time and energy into staying ahead of the trends to minimize mimicking, and be willing to jettison aspects that become trendy or are appropriated by others.
? Distinguish yourself – stay aware of competitors or similar businesses and avoid any similarities so that any copying of your own style is easily identified.
? Selective registration – choose one aspect in a softer brand that is key, use it consistently, and obtain registration for that aspect.
It is a great time to be an independent business in the hospitality industry, but be aware of both the limitations of an intentionally un-defined brand and the benefits of identifying, registering, or otherwise adding some protection to the business you are building.
If you have any questions about brand or trade dress protection, please feel free to contact me directly email@example.com.
Photo credits: images are from the US Trademark Office’s website and are used as examples of successful trade dress registrations.
Our friends (and former contributors) at Seattle-based BrandVerity have produced another detailed study on third parties’ use (and dare I say, abuse) of popular brand terms in paid search advertising. Many of you have experienced these abuses (and the associated frustration) yourselves. Now details about these abuses (and the supporting metrics) are in one comprehensive report. The report is available for download today at https://www.brandverity.com/state-of-branded-keywords-paid-search-q3-2014/
Keep BrandVerity and this report in mind next time you negotiate a distribution agreement or, once the agreement is finalized, you wish to keep your distribution channels honest.
Since 2013 the number and type of web domains has exploded and is having a major impact on brands. Ruth Walters has been watching this new era of growth and can share her insights on brand protection. Ruth focuses on hospitality operations and general intellectual property and technology transactions. Thank you for today’s post, Ruth! -Greg
Back in the olden days of last year, there was no particular reason for hospitality industry members to be particularly interested in the administration of the Internet unless you were curious. Now, it benefits every brand owner to understand and pay attention to the basics of how new domain names come into being, who selects them and how they become public. Beginning in late 2013 and early 2014, the number and type of domains has exploded, providing brand owners both the opportunity to expand and strengthen their on-line presence and to expand the number of potential infringing domains there are to worry about. Much of the domain name process operates outside the awareness of many brand holders, and many have been caught unaware.
The Internet is administered by a non-profit corporation called the Internet Corporation for Net Names and Numbers (ICANN). It is this entity that decides, among other things, what letter strings go after the dot. Beginning in 2012, ICANN began its New Generic Top-Level Domains Program to “increase competition and choice in the domain name space.” ICANN accepts applications for new letter strings and then evaluates them and delegates them to the applicant registry (not registrar, which is the entity in this process most familiar to brand owners and the public—like Register.com, GoDaddy, or Network Solutions). Eventually, the registry works with ICANN-approved registrars and the new strings are available to the public for registration.
Some terminology: the letter strings after the dot are called top-level domains (TLDs) and are divided into two main categories—generic top-level domains (gTLDs) and country-code top level domains (ccTLDs). gTLDs are further divided into two sub-categories “unsponsored” gTLDs (uTLDs) which anyone can register (like .com, .net, .biz and .info) and sponsored gTLDs (sTLDs) which can only be registered by members of a “sponsored community” (like .gov, .edu, .aero)
The huge push in adding TLDs in the last year or so has focused on gTLDs and the addition of a third category of domains, the Internationalized Domain Name (IDNs) which allow TLDs in characters that are not US-ASCII, such as Chinese, Arabic or Cyrillic. These may be representations of existing TLDs, like .com, in the applicable characters or new TLDs or both.
Any brand owner can see the potential problems here. The number of TLDs to worry about has gone from a handful to, over the next few years, possibly more than 1300. That makes more than 1300 opportunities for a cybersquatter to register [your brand] in connection with a new domain and possibly several opportunities missed to register useful new TLDs, such as .review, .hotel, .restaurant or, depending on how you feel about things, .wtf. There is also the possibility that the new TLD itself may infringe a trademark, and ICANN has accounted for that possibility in its review and the provision of a post-delegation dispute resolution process.
The more likely scenario is that the second-level domain (the bit right before the dot) will be the infringing piece. ICANN has responded to the significant concerns of brand owners in this regard by introducing a new rights policing mechanism called the Trademark Clearinghouse, participation in which is mandatory for all new gTLD registries. Rather than requiring brand owners to rely on the Uniform Domain Name Dispute Resolution Policy process, requiring brand owners to proceed only after a potential infringing name is registered, the Clearinghouse allows for some pre-registration enforcement. Successful registration of valid trademarks with the Clearinghouse permits those trademark owners—for a fee, of course—to:
- Apply before the general public for the domain names in which the second-level domains; and
- Receive notice of any third-party registrations for domain names containing an exact match to the registered mark(s) for as long as the records are maintained at the Clearinghouse. The potential registrant of an infringing domain name also receives a warning when attempting to register a domain name during the 90 days after the close of the sunrise period, which is called the “Trademark Claim” period.
Registering with the Clearinghouse, if possible, has obvious benefits. In addition, brand owners can track the opening and closing of sunrise periods on both the Clearinghouse and ICANN websites (ICANN’s site includes sunrise periods out into 2015; the Clearinghouse site is more limited).
The Clearinghouse in turn works with a variety of registrars who provide what are called “blocking mechanisms” for the new gTLDs. In very brief, the owner of a trademark registered at the Clearinghouse can purchase blocking services to block third-party registrations of domain names containing that trademark (and, possibly, similar marks) without having to go to the trouble of defensively registering [your brand].[gTLD] 70 or 80 times.
Uniform Rapid Suspension System
If blocking, defensive registration and notification still don’t work (which is entirely possible, given the nature of the Internet) ICANN has also instituted the URS which creates a more streamlined process for shutting down infringing domain names than even the UDRP provides.
As we have written before in many circumstances, the Internet is a tough place for brand owners and, in some ways, it has gotten tougher. Fortunately, there are mechanisms that exist to help brand owners keep control of their good names on the Internet and also to explore new opportunities for expanding their on-line presences.
Is hotel rebranding the latest 2014 trend? Claire Hawkins, Chair of Garvey Schubert Barer's Intellectual Property Practice and new author to Duff on Hospitality, weighs in on the topic and offers her insights on the intellectual property elements you'll need to consider. Thank you for today's post, Claire! - Greg
Is hotel rebranding trending, and is that a further sign of the recovering lodging industry? There have been a number of announced changes in hotel names and brands in the last few months, and while this may or may not signify an economic uptick, you can be assured that there has been a lot of work behind the scenes to get to this point for all of these venues.
A recent article noted there are many intellectual property issues involved in hotel rebranding, as well as the considerations of public opinion, current trends, and bottom line financials.
All of these factors are compounded given the general nature of hotels: large scale, significant reputation considerations, the considerable costs of the accompanying renovation (and usually updating) and replacing old inventory items that have the old brand, as well as the economic consequences of the time it takes (sometimes up to a year) for the unbranding and rebranding phases as well as reincorporating into the referral, booking, and online channels with the new name.
With all these issues already demanding time and resources, it makes sense to be very sure that the new brand to be adopted is available and that it will be a strong brand. Every company relies on trademark laws to communicate to consumers and to protect the reputation of its business. Making sure your new brand is not too similar to any other existing brand or trademark (including trade dress or other protectable elements), and then registering and managing your rights and responsibilities worldwide and online prevents your marketing and advertising resources and goals from being wasted. Examples of learning these lessons the hard way include instances when Hard Rock Café sued Hard Rock Hotel for trademark infringement; Hershey Entertainment & Resorts Company sued Radisson for calling its hotel Radisson Harrisburg Hershey; Barley Swine restaurant in Austin sued Barley & Swine restaurant in Florida; and Seacrets hotel in Maryland stopped use of SECRET SPOT as a name for restaurant services.
The benefit of a strong brand, if adopting a new one, is that you will be able to use the brand to refer to your business and reputation in a broad, confident manner, prevent others from using similar marks, and build up value and credibility with much more ease than with a mark that already has other similar users out there, and clearing the mark first can help prevent those schedule-interrupting cease and desist letters from third parties.
If you are instead switching to an existing brand, being aware of the strength of the brand’s intellectual property portfolio (worldwide trademark registrations, domain names, franchise or service agreements, web use, trade dress protections, etc.) as part of the initial due diligence can inform you of issues or hurdles or ongoing problems that will need to be considered or managed as the brand is adopted. For example, if the brand has had to send numerous cease and desist letters to others because the name is fairly descriptive, it would be important to include that aspect into future budgets. On the other hand, determining that the brand to be adopted has a strong portfolio of established rights and registrations would be an indication that the change would indeed bring value and stability to your endeavor.
Takeaway: For any of the many reasons to shift, update, adopt, or change a brand, evaluating the strength of the trademarks, trade dress, domain names, and other intellectual property elements should be included in the list of to-do items before proceeding. If you’re going to go with this trend, if it is one, you might as well go with confidence!
Greg Duff founded and chairs Foster Garvey’s national Hospitality, Travel & Tourism group. His practice largely focuses on operations-oriented matters faced by hospitality industry members, including sales and marketing, distribution and e-commerce, procurement and technology. Greg also serves as counsel and legal advisor to many of the hospitality industry’s associations and trade groups, including AH&LA, HFTP and HSMAI.