San Diego Trademark Use: Use Caution When “Blanding-Down”
There has been a recent trend in marketing called “blanding-down” with respect to trademarks and trade dress. Blanding-down is when someone in the marketing department redesigns the company logo or trademark or trade dress by removing complicating elements like a background feature or using a more simple font style — that is, making the trademark more bland and simple. From a marketing perspective, maybe the redesign is a good idea: chasing “newness,” as the saying goes, or presenting a fresh image more in-line with young consumers. However, caution is in order because blanding-down your logos and trademarks may weaken the legal protection for those marks without necessarily providing legal protections for the new design. Advice and counsel should be sought from an experienced San Diego corporate attorney; the marketing department should not be making short-term marketing decisions that impact long-term intellectual property rights. The marketing decision may be the correct business decision, but steps must be taken to protect, through use, the classic designs and a new logo and/or trademark necessitates a new trademark registration. Here is a quick discussion.
Trademarks include marks and designs that are attached to packaging (and sometimes the product itself) that uniquely identifies the commercial source of your product. The focus is on the consumer; the mark must be recognizable to the consumer and a strong mark will be instantly recognizable. Examples include Apple’s apple logo, Tiffany’s signature blue box, MGM Film’s roaring lion, Coca-Cola’s unique lettering and red swirled soda cans/labels and many more.
Blanding-down is risky for two reasons. First, blanding-down endangers the existing mark. Companies spend substantial sums of money creating commercial marks and great efforts are undertaken to protect and enforce a mark from infringement. A strong mark has great commercial value. Marks drive consumer loyalty and thereby drive sales and profits. Blanding-down puts these investments at risk.
Take the Apple logo for example. One could simplify the design by using a simple circle, with a small half-circle removed from the right side and with a short-curved line bending to the left off the top at about the 350 degree location on the circumference. This might give a fresh look to Apple products, but it begins the process of weakening the classic commercial mark. In simple terms, there are now two different, though similar, marks for the same products. This weakens the link in the consumers’ minds between the product and the original mark as the consumer must now learn to associate the new mark with the product.
Legal protection of a mark is based on use and the strength of the mark. If a company allows an old mark to be weakened, the legal protection of the old mark is also weakened. In an infringement lawsuit distinctiveness, consistency-of-use, and strength are among the factors used by the courts to determine whether there is confusion created by a similar mark. Blanding-down can weaken legal arguments on all three factors. Worse still, blanding-down can be considered a form of abandonment. It is possible to lose legal protection of a commercial mark through non-use. Trademarks are governed by federal law under the Lanham Act. The Act specifically provides that a trademark is to be considered abandoned if “its use has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127. An example recently in the news was Smashburger’s efforts to cancel out the trademark registrations held by In-N-Out Burger for their TRIPLE TRIPLE and QUAD QUAD burgers. See news report here.
To combat the legal danger of abandonment, a company must continue to use the old design as well as the new bland version. But, as noted, this weakens the original trademark design.
Blanding-down is risky for a second reason: Unless steps are taken, the new design may not be legally protected. As noted above, sometimes a logo/mark redesign is the best marketing decision. Companies are constantly refreshing their look to attract new demographics. But those working in the marketing department may assume that the old trademark registration protects to the new redesign. That is not the case. If your company is making the conscious decision to bland-down your service marks or otherwise redesign them, new trademark registrations must be undertaken to protect the new marks from infringement.
Contact San Diego Corporate Law Today
If you need legal advice and services related to registering trademarks or your company’s other intellectual property, call business attorney Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard was named “best of the bar” four years running by the San Diego Business Journal. To schedule a consultation, contact us via email or call at (858) 483-9200. Like us on Facebook.