As reported on brandchannel.com, Yahoo! recently decided to remove the trademark registration symbol [®] from its logo, discarding something that has been a part of its brand identity since 1995. Apparently a new employee was “bugged” by the symbol, so CEO Marissa Mayer allowed them to go on a spree removing the offending item from the website and company campus. Mayer even posted an image of one of the forsaken “R’s” on Instagram.

While use of the trademark symbol ™, (SM) or ® is not mandatory (as Mayer later tweeted, “Legal assures us that our trademark is implied and quite secure”) it does serve a purpose: not only does “marking” provide notice of ownership rights (or claim to ownership of the trademark) and help reinforce the public’s association of the mark with its owner, it also may allow the owner to assert certain types of damages in lawsuits against infringers. In the US, failure to use a registration notice [®] limits the remedies available to the owner in a lawsuit and may prevent a plaintiff from recovering damages and profits in a suit for infringement if the defendant is not shown to have actual notice of the registration.

In this writer’s humble opinion, the ® isn’t just a symbol for Registered trademark, it’s a mark of Respect. Knowing the time, money and effort that generally goes into securing trademark registration, why shouldn’t ® be proudly proclaimed? The legal rights that are acquired through registration are significant and deserve acknowledgement, as indicated in the form of the “R” symbol. Why graduate with a Ph.D. if you’re only going to list high school on your resume?

Rather than be seen as a hindrance to design aesthetic, the ® symbol can be regarded as a beauty mark or a badge of honor, to be displayed with pride. While typically placed to the upper or lower right of the mark, credit goes to brands that embrace the symbol in creative ways –

• note how American Express puts it to the left of its logo:

• As does LEVI’S -- while also incorporating the ® as part of the overall design:

• Broadcaster HBO at times uses the ® faintly:

• While the 20th Century Fox logo places it to almost 3-D effect:

• Meanwhile Intel (never one to shy away from trademark marking incorporated the ® symbol into the holding shape for “Intel Inside”:

Let's acknowledge brand logos that blatantly alert consumers to the fact that they are trademarks… or trade marks, if you will:

• Metro Goldwyn Mayer:

• Guinness:

•Heineken:

Your trademark is your brand’s most valuable asset, and registration is earned through no small investment. It’s your property — and you should alert others to this fact. Like your favorite outfit or item of clothing, the trademark notice is not something that needs to be worn everyday — (typical guidelines recommend applying it at least once, in the first or most prominent use of the trademark) — but it sure does make you feel good when you have it on.

One can’t help but wonder if Yahoo!’s clean-up efforts could perhaps have been put to better use, and TechCrunch, for example, speculates if the exclamation point is the next thing to go. Considering what removal of it did for Google, maybe Yahoo! was focusing on the wrong symbol all along.

Jerome McDonnell is Group Trademark Director for Interbrand.

 Photo Courtesy of TMZ

Kanye West believes he is “Way Too Cold.” Perhaps he’s way too cool to be blamed for trademark dilution. West has released a song titled “Theraflu” along with explicit imagery that included the product. Theraflu has in no way endorsed or approved the use of their brand’s likeness or image in the manner Kanye West has used it. Shortly after Theraflu issued their statement of disapproval, Kanye officially changed the title of the song to “Way Too Cold.”

Dilution occurs when a famous trademark is used in a context in which the trademark's reputation is adversely affected or its distinctiveness is weakened. Dilution can take two forms: blurring and tarnishment.

The similarity between a famous mark and another mark may create an association between the two. This association between the two marks, or blurring, impairs the ability of the famous mark to retain its distinctiveness in a particular market. For example, Intel is best known for its production of semiconductor chips and microprocessors. If an unaffiliated company used Intel on shoes, it would cause blurring to the Intel brand.

Tarnishment is an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. For famous marks, tarnishment or blurring may impair their distinctiveness because of association with other similar marks.

Famous marks are well known, recognized and trusted by their consumers. However, owners challenging dilution need to establish their mark as a unique source of distinctiveness under the terms of the Federal Trademark Dilution Act. They may need to show the following: 1) geographical reach of advertising and publicity, 2) volume of sales, 3) extent of actual recognition of the mark, and 4) whether the mark is registered.

In the case of famous marks, dilution is based on use by another person of the mark with the potential for confusion. Any use by another person can cause the likelihood of confusion. The use of the name will assume affiliation with the owner of the mark regardless of the goods or services of the infringing use. The goods or services may be related or unrelated for a dilution claim to stand.

Examples of recent dilution cases include, Chick-fil-A. Chick-fil-A, owner of the tagline “Eat Mor Chikin,” has sent a cease and desist letter to stop t-shirt artist Bo Muller-Moore for his use of “Eat More Kale” because of the likelihood of confusion. Though Muller-Moore believes odds are not in his favor in the battle against the multi-billion dollar company Chick-fil-A, Muller-Moore is determined to fight until the end. He is currently working with filmmaker James Lantz on a documentary called “A Defiant Dude,” a documentary about a t-shirt artist who defies Chick-fil-A.

Chick-fil-A “Eat Mor Chikin” has battled at least 12 additional trademark applicants for their use of “Eat More…” In 2003, the tagline “Eat More Fish” was terminated after a TTAB proceeding with Chick-fil-A. In 2008, Chocolate Bar, LLC, owner of the tagline Eat More Chocolate, was forced to abandon their trademark after Chick-fil-A opposed the use. Pictured at left is the Eat-More Candy Bar, which originated in Canada as a Lowney product and was acquired by Hershey Canada from Nabisco Ltd. More trademarks that have either been abandoned or cancelled are, Eat More Goat, Eat Mor Greens and Eat More Beer. Chick-fil-A is very protective over their tagline and trademark. Regardless of opinion on these cases, brand owners can learn a thing or two about protecting and policing their brands.

Earlier this year, it was reported that all four trademark applications were rejected for Crackberry by a judge. It was ruled that the trademarks would dilute Research in Motion Ltd.’s “Blackberry” trademark.

The South Butt clothing line was intended to poke fun at the brand The North Face. The battle was settled outside of court for an undisclosed amount. This case is an example of tarnishment.

Dilution has the ability to weaken famous marks that have worked hard establishing themselves as well-known brands to their consumers. Owners of famous marks have spent millions of dollars to uphold their reputation in a consumer-based market. Dilution is a problem because it can take away the consumer trust and owner’s protection of a brand. For example, if Coca-Cola is seen on goods and services such as clothing lines, lawn mowers, financial services, and cosmetic surgery facilities across the world, it would depreciate the Coca-Cola brand. This is deemed to be one of the major issues in trademark law because dilution can put the mark’s reputation for quality and distinctiveness at risk through tarnishment.

Here are some dilution metaphors to help make a deeper connection:

• A rodent metaphor: "the very nature of dilution, insidiously gnawing away at the value of a mark." Ringling Bros.-Barnum & Bailey v. Celozzi-Ettelson, 855 F.2d 480 (7th Cir. 1988).

• A musical metaphor: "It is the same kind of dissonance that would be produced by selling cat food under the name 'Romanoff' or baby carriages under the name 'Aston Martin'." Exxon Corp. v. Exxene Corp., 696 F.2d 544 (7th Cir. 1982).

What are your examples of trademark dilution?

Nicole Briggs is a Trademark Consultant for Interbrand’s NY Verbal Identity team.

"Keep your friends close, but your enemies closer," goes the famous line from The Godfather Part II. It's good advice for a mafia don, but not so good for a brand. What happens when high profile employees' friends turn out to be enemies of your brand's reputation? That's the challenge facing blue chip brands Berkshire Hathaway, Goldman Sachs, IBM, Intel, and McKinsey & Company in the wake of Raj Rajaratnam's conviction for insider trading.

The potential damage to the brands is serious for all. The nature of the damage is varied. For IBM and Intel the allegations that employees shared insider information hits directly at shareholders. For the press' favorite whipping boy Goldman Sachs it adds to the perception that the firm's aggressive style leads it to play close to the edge of the rules. McKinsey's business as the quiet, trusted advisor will take a hit if CEOs hesitate to confide in the firm. The damage to Berkshire Hathaway and Warren Buffett could be worst of all if investors wonder why the Oracle of Omaha didn't see this coming.

All five brands need to get out in front of this. Don't talk about generic ethics policies. Show clients, partners, and investors why they can and should believe in you. Trust is a table stake for every brand but when it is damaged, nothing else the brand does matters. It is a lesson these brands—and a host of others—should take to heart.

To build excitement around the 2nd Generation Intel® Core™ i5 processor, Intel is launching an action-adventure video titled "The Chase." The spot demonstrates the performance capabilities of the new processors by creating an action-movie style chase sequence that takes place through a wide variety of program windows on a computer desktop.

Having spent the last few days at the Consumer Electronics Show, aka CES, I have one request to the technology industry: Please, for the love of 3D, the Cloud, and the tablet army, keep it simple.

You see, for every brilliant idea from Silicon Valley’s geniuses, there is also a not so brilliant idea from Silicon Valley’s marketers: a brand. Yes, we can debate whether a feature name is a brand, but if it has a ©, ® or ™ after it, it’s close enough. I mean, think about it — does it really matter to you if your Zoink Tech® Amoeba 4G™ smartphone has a Super Paraview™ display?  Or that the shiny new tablet you’re eyeing features a 1.2Ghz, tri-core Phantom® CPU with SimuNet Technology™? I get that these companies are looking for ways to get the attention of the press, that they’re interested in one-upping the competition, that some analyst, somewhere at a Bloomberg terminal understands why this matters, but are they building their brands for the consumers who actually buy these things or for themselves? From what we’ve seen at CES, I’d say it’s the latter.


So, is it that brands just don’t have a place in technology? Quite the contrary, brands matter more in technology today than ever before. In fact, you could argue that they matter more in technology than they do anywhere else. The consumer electronics industry, the computer industry, the mobile industry, even the automotive industry all depend on companies continually leapfrogging themselves. This means that each generation of offerings are somehow more complicated than the last. What’s more, the pace of that change — the pace of complication — is moving at an ever-increasing pace. Faced with so many choices, with so much change, there is simply no way that a real consumer can keep on top of it all. 

That’s where brands come in. Just as Intel simplified choice in the personal computer industry 20 years ago when it said there are PCs with Intel® processors and then there’s everything else, it is time for the rest of the tech world to catch up. By creating brands that stand for something bigger, something relevant, and something distinct, tech companies can make it easier to engage consumers each time there’s something new. A strong, enduring brand can make it simpler to go from V1 to V2 to V3. A strong brand can make it possible for a consumer who visits an AT&T store once every two years to select their product from the 30 devices that weren’t there six months before. Simply put, a strong brand can drive choice and driving choice drives sales — and driving sales is what keeps every marketer employed.

So, to all the marketers who were at CES, and even those who weren’t, please keep it simple. You’ll thank us if you do.

Stay tuned for more on CES in the next couple of days...