MEMO TO PROCTER & GAMBLE: WILLA VERSUS WELLA=LOSER

This doesn't fall into the category of "what in the world  were they thinking?" It may or may not qualify as a case of trademark bullying. But I'll bet anyone a ham sandwich that Proctor & Gamble will be ( or already is) sorry that they decided to make life miserable for a wealthy preteen  girl and her mother. It's never a good sign when your adversary and her mother are photographed as part of a human interest story in the New York Times. You can find a link to the story here.http://dealbook.nytimes.com/2011/09/28/a-start-up-takes-on-procter-gamble-over-a-name/?scp=1&sq=willa&st=cse

In a nutshell, Willa, an  8 year old girl complains to her mother about not wanting to use kids shampoo. This is aha moment for Willa's mom,  Christine Prunier. Fast forward three years. Mom has developed a line of bath products and skincare products targeted directly at preteen girls. And the brand name for this line of ducts? WILLA, of course.
Ms. Prunier also developed a design to accompany the brand. And she sought to federally register Willa and Design  with the US Trademark Office. No problem said the Trademark Office. Big Problem said Procter & Gamble. P & G  owns   the brand WELLA, as used on a line of shampoo products sold  primarily though hair salons. P & G tried to stop Willa and her mom from federally registering their WILLA and  Design trademark.
Here's where the story gets interesting. Turns out Ms. Prunier is a woman of means. After getting advice from a family y friend, she filed a lawsuit against P & G in NYC. Ms. Prunier is asking for a finding that the term  WILLA used with a charming design of a young girl, does not legally infringe the term WELLA. Oh by the way, she asked for a jury trial.
When I first read this story I immediately thought of how my son kicks my butt at basketball, baseball and chess. Whenever he whips me I tell him (bursting with pride) "Son, with you, when I lose I win and when I win I win." But the reverse is also true if you are Procter & Gamble.  When you take on an 11 year old girl, whether you win or lose, you lose.

STILL WANT TO SHOP AT MAY'S OR A&S OR BON MARCHE? MACY'S SAYS NO BUT WILL THEY HAVE THE LAST WORD?

Several years ago I was in charge of burying the SOHIO trademark. British Petroleum had taken over Standard Oil of Ohio. So BP it was to be. And with great fanfare.
But we were concerned that a competitor(the dreaded Marathon Oil with its SPEEDWAY and MARATHON brands) might start using SOHIO for gasoline. So we left the SOHIO brand on gas pumps at marinas selling to pleasure boaters.

I was reminded of this when I read that Macy's- the victor in America's national retail wars- is fighting to stop a company from federally registering several famous names as trademarks. Strategic Marks LLC, is attempting to register several of the local/regional brands that were folded into the MACY'S brand. These brands include: MAY, BON MARCHE, JORDAN MARSH, and FILENE's.
Strategic Marks claims that Macy's abandoned these trademarks. Macy's acknowledges that they haven't been using them but denies that they have abandoned them.

The legal standard for trademark abandonment is "use discontinued with no intent to resume use" If a trademark owner fails to use his brand for three years the law presumes that he has abandoned that brand. Then the brand owner must come forward with concrete evidence to  show that she still has a legal interest in the disputed term.

Interestingly, though Macy's readily acknowledges that it is not using these brands, in their challenge to JORDAN MARSH Macy's states that it plans to begin using the brand again.

Oh really. Forgive me for being skeptical, but I would venture a guess that Macy's desire to resume use of these brands arose on the same day that they realized someone was trying to revive names  they thought were dead and buried.

Strategic Marks LLC claims to have a real interest in reviving these names for retail services. I find myself wondering who is willing to make the bricks and mortar investment to compete with Macy's?  Most of the local competitors in America's larger cities are gone. My guess: These names will never see  retail daylight. But it won't be a cost free experience for Macy's.

IS APPLE A TRADEMARK BULLY? THE TRADEMARK TROLL IS UNCERTAIN. GASP!!

Trademarks are funny things. Protecting them can be challenging. Anyone who reads this blog knows that I have been sharply critical of many  of America's most famous brand owners. In recent years those who should know better have pushed and pulled trademark law, copyright law and even the First Amendment in an effort to build a fortress around their brands. And this includes Apple. Their ongoing fight over the term App is yet another example of corporate hubris tarnishing a carefully constructed public image.

 So I was  prepared to cringe when I heard that Apple filed a challenge with Chinese authorities over the logo above on the left. Sichuan Fanffuo Food Co. Ltd has filed to register this logo. This company has been in the food business for many years.

To my eyes the logos are quite different. Apple has asked that the company remove the leaf from the their design. The company has refused, saying that without the leaf their apple looks like a bomb. Point well made.

But here's where things get interesting. The food company filed to register it's logo for "notebook computers" and "electronic game software" in addition to it's food products. The owner of the logo claims that he is seeking to register his logo in these categories on the off chance that someone might someday wish to use his logo for such goods.

Yeah right. Especially outside the United States, scammers have been registering trademarks and attempting to blackmail brand owners FOREVER. And, in earlier times, such scammers were often quite successful in China. Get the registration, then sell it back to the legitimate brand owner for a princely sum. 

Apple has also asked the food company to remove these two non-food categories from its application.

So is Apple a trademark bully? One compromise is to let them keep the leaf on their logo but delete the non food categories.

But I'm still left to puzzle over the fact that the two logos are so different. If this were a battle over words I'm guessing that it would not matter what the Chinese company was trying to do. Or what were its motives. Legally different is legally different. Yet we seem to employ a different subjective yardstick when graphic symbols are at issue. With that in mind take a look at  the logo of LG a prominent electronics manufacturer.