When Kirkman Westlake Bowman's VP of Relationship Marketing Julie McClung carefully soaked the labels off 19 jars of Smucker'sr swirled peanut butter-and-jelly several weeks ago for a press kit her firm was putting together, she had no idea she was walking into a possible trademark controversy.
She simply saw the company's plans to send the jars to press contacts as a "metaphor" for the synergy the company found in a recent merger. Kirkman Bowman & Antonio joined with the Westlake Group Oct. 22 to create a $13 million communications company.
Executives thought sending the product was a cost-effective, yet whimsical, way of spreading the news. In the end, the cost for the jars of Goober Grape was about $48. FedEx shipping ran about $7.50 each, with less than 20 shipped. The jars, affixed with new labels, announced: "KB&A and the Westlake Group are now together. It was just one of those combinations that made sense."
Simple enough?
But now, KWB principals are waiting to hear whether The J.M. Smucker Co. of Orrville, Ohio, thinks the company tromped on Smucker's trademark rights when it used Goober Grape in the small-scale media campaign.
The mailing, which went to trade journalists such as those at PR NEWS, AdWeek and AdAge, was certainly attention-getting. Many of the press materials stuffed into a journalist's in-box each week are more mundane than amusing. But this gimmick sweetened the media relations pot.
The problem is that KWB didn't check with Smucker's to get an okay for the mailing or to investigate what trademark issues might be at stake. Smucker's refused to say whether corporate legal eagles are examining the incident.
This case emphasizes that creative minds sometimes forget to check whose toes they might be stepping on. Intellectual property rights are receiving a hardy dose of attention in this era, due to the way the Internet and globalization are forcing companies to examine how their brands are protected.
Trading on Whose Trademark?
A distinction should be emphasized in the KWB/Smucker's case: the mailing doesn't directly link the new company to the Smucker's brand, nor does KWB use the Smucker's name to endorse its company. The connection is veiled - which only points to how delicate intellectual property matters can be.
"I'm not that concerned about this because this was not a play on the Smucker's label," says Michael Hobbs of Troutman Sanders LLP, Atlanta. Hobbs works with KWB but wouldn't speak further about the KWB case. "But the U.S. Federal Trademark Dilution Act (of 1996) tends to blur these issues."
That law protects trademarks based on the argument that a misconstrued use might dilute the power of a trademark in the marketplace. An example of the legal debate prompted by this kind of safekeeping is the use of the word "spam" to describe unwanted e-mail, adopted from the name of the Hormel product.
The defense that plays well for KWB is the First Sale Doctrine, which sets out that once you buy and own a product, you can do with it what you like.
Still, that law isn't a panacea, Hobb cautions.
If you plan a campaign akin to KWB's, it makes sense to research which attorneys represent the patent or trademark in question and send a letter alerting the company of your plans. You can access government trademark contacts and patent databases through http://www.pto.gov, Hobbs adds.
Yet the lips of Smucker's PR execs are sealed about how the company will proceed.
"We'll deal with the company [directly]," said Brenda Dempsey, corporate communications manager, "but I can't comment beyond that."
Companies employ lawyers and spend millions each year to make sure that their product and service rights aren't violated. Take for instance, Rolodexr, which routinely sends letters to journalists who don't put the trademark symbol after its name. The company even asks the offending publication to sign an agreement that it won't make the same mistake again.
(KWB, 864/282-8000; Smucker's, 330/682-0015; Troutman Sanders LLP, 404/885-3000)