Friday, January 27, 2006

Kirkland’s “F”

In case you have missed the stories about the Brooklyn bagel bakery that fashioned itself after a New York City Metropolitan Transit Authority subway car (for example, here and here), you haven’t caught up with the latest challenge with “trade dress.”

Précis: four guys decided to open a bagel shop by turning what had been a long-empty storefront into what New York Times reporter Dan Barry called “a gleaming subway ideal. They installed silvery poles, hung subway straps, and displayed various station signs, from Willets Point/Shea Stadium in Queens to 161st Street/Yankee Stadium in the Bronx.

“When they were done, two sleek neon signs announced to a fairly desolate corner in Carroll Gardens the addition of a new business: F Line Bagels. The F was encased in the same distinctive orange circle that helps riders to pinpoint the stops along the F train route, including the one at Smith Street, directly opposite this new store.” Then a lawyer from the MTA showed up.

Now Susan Kirkland has raised the issue in a terrific post to the Graphic Design Forum – a must-read if you are at all concerned with design and trademark issues. (And follow the thread…there are many superb good comments to her post.)

I admire the F Line guys’ creativity, but most of my clients are large companies who take trademark protection seriously. This is laudable; their legal teams bend over backwards to avoid similarities with other brand names, etc. It’s a growing problem for branding, however, because it is becoming difficult to find some option that isn’t in use somewhere else.

Trademark law provides a little relief in this situation: categories. That is, you can use a name in one category (say, oilfield chemicals) that may already be in use in another (e.g., workshop tools). There’s no crossover. However, the line between categories is becoming more and more blurred...and some legal teams are widening their explorations.

Some copying is legal in parodies. But F Line Bagels, a clever turn, is not a parody. It is a business that (wittingly or not) attempted to take advantage of another entity’s “trade dress” (in this case, the MTA). However you feel emotionally about the MTA lawyer's cease-and-desist approach to F Line, this is still about trade dress infringement.

Take this a step further. How many companies do you know that have, at one time or another, done a tradeshow booth parodying the “MASH” TV show? How many of you recall the astonishing large number of CEOs who did a “Patton” parody after that movie came out many years ago. Who's responsible for saying, “You can't do that - it’s someone else's intellectual property?” Given the ephemeral nature of a trade show appearance or a CEO's rah-rah sales meeting speech, do you throw a flag on the play?

Designers (and other creatives) have a responsibility to do the right thing. That may include researching existing uses of trade dress or a brand name extensively. This is a service for which one should charge.

Levi’s jeans spent years and quite a few dollars warning the rag trade that “Levi’s” was a trademark - its message to competitors was: get your own. THIS is my can’t have it.

Sometimes, shortcuts are illegal. And a major tip-o-the-Hatlo-hat to Susan for bringing the subject up.

Photograph © 2006, Andrea Mohin/The New York Times. "F Line" story © 2006, The New York Times.

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