Branding Archives - Foresight Valuation Group

Fair Use: Friend or Foe?

Posted on March 29, 2019 10:45 pmModified on April 19, 2021 8:32 pmby Sebastian Custodia

Several months back in an article discussing Brand Extendibility, I touched on a humorous exchange between In-N-Out Burger and a microbrewery regarding some obvious trademark infringement. In that case, the burger chain’s attorneys decided to approach the situation in a light hearted manner, issuing a pun-filled cease and desist notice. Earlier this month, however, the company decided to take a different approach in dealing with infringement on its coveted trademarks. German shoe maker, Puma, recently released a sneaker called the “Cali-0 Drive Thru”which prominently features the In-N-Out palm tree logo on the laces, in addition to the white, yellow, and red color scheme used by the burger company. It is possible that Puma, and shoe designer Mike Cherman of Chinatown Market, felt that use of the trademark was in the confines of fair use, particularly given the amusing promotional videos released on Puma’s Instagram page. Although a statement made by In-N-Out’s executive vice president firmly asserts otherwise:

“By using In-N-Out’s designs and trade dress, Puma and Cherman intentionally confused consumers for their own benefit and have also created the impression that our marks and unique trade dress are available for public use.”

Trademark protection allows owners to stop the use of their registered marks in order to prevent any confusion by the public regarding the source of a good or service. Under certain circumstances, however, fair useof a registered trademark is permitted. According to the International Trademark Association, there are two types of fair use: Descriptive Fair Useand Nominative Fair Use. Descriptive FairUsepermits the use of an existing trademark in order to describe your own product or service. For example, courts ruled that the WD-40 Company’suse of the word “inhibitor” was permitted to describe its product as one that inhibits long-term corrosion, even though “The Inhibitor” is a registered trademark. Another example is the use of the phrase “sweet-tart” to describe the flavors of a juice, despite SweeTart being a registered trademark of a candy company. In Puma’s case, it would seem that descriptive fair use does not apply. In fact, after reviewing the official description of the sneakers, which says that they pay homage to California’s “burger diners,” one might argue that infringement of the In-N-Out palm trees is even more blatant. Puma might be covered by descriptive fair use if it described a pair of shoes as “easy to slip in and outof,” for example, but in this case infringement seems probable.

The second type of fair use, Nominative Fair Use, permits the use of a trademark to refer to the actual good or service offered by the trademark owner. Most commonly, nominative fair use is used by the media in its reporting on certain events or products, such as the Boston Marathon, which is a registered trademark of the Boston Athletic Association. Nominative fair use is also often leaned on for parody of a brand or product. I suspect that Puma may have gambled on the Drive Thru shoes being covered by nominative fair use given the videos (mentioned earlier) that show the sneakers frolicking in a field of hamburgers. However, Puma still included the palm tree logo on its shoes and never directly mentions or gives credit to In-N-Out. Under different circumstances, Puma may have been permitted to use In-N-Out’s name in a parody promotional video for its Drive Thru shoes, although direct use of the palm trees for Puma’s own benefit without In-N-Out’s consent would likely never be permitted.

In-N-Out has a reputation for taking swift action against any party that might be threatening the integrity of its brand. After investing millions of dollars to build brand equity, most companies aim to protect their brands with the same vigor. Fair use may seem like just another legal loophole at first; however, in some cases brands might actually stand to benefit from the use of its trademark (particularly through parody and nominative fair use) by nature of increased exposure. Take Levi’s for example – a company that has been successfully working to re-build its brand equity through various means such as stadium naming rights, which I’ve covered in the past. In 2017, Saturday Night Live broadcasted a skit that parodied both pop culture and the brand itself, titled “Levi’s Wokes.” Among the SNL regulars, the skit also prominently featured movie star Ryan Gosling wearing a pair of ridiculous jeans jokingly produced by Levi’s. As of this writing, the video has over 3.3 million views on the SNL YouTube channel alone. For a company that was looking to reinvent itself and reintroduce its brand name as a pop culture icon, one can only assume that this type of publicity was welcomed with open arms.

Monitoring trademark infringement is key to any successful branding strategy. The last thing a brand manager wants is to lose control of public perception of the brand, and infringing products or services can be a catalyst for just that. In-N-Out actually sells its own pair for branded shoes on the company website and seems to command adequate public attention without Puma’s help – a quick Google search for something like “In-N-Out vs. Shake Shack” reveals just how prominent the burger chain is in pop culture. In certain instances, particularly those covered by fair use, brand managers with a keen instinct to protect their investments may have to take a back seat. In such cases, it is important, to understand and even embrace fair useof a brand, and recognize the benefits that it may bring. Just ask Levi’s who recently went public after a 30+ year hiatus from the stock exchange and has seen a roughly 30% increase over its $17 IPO price.

If the Shoe Fits: The Case for Endorsements as a Branding Tool

Posted on January 22, 2019 6:14 pmModified on January 22, 2019 6:16 pmby Sebastian Custodia

Endorsements have long been a strategy for brand managers to help boost brand equity and product sales. Historically, high profile endorsements have primarily been reserved for the world’s largest companies – those with deep pockets. In today’s world of social media influencers, however, the strategy is far more available even to the smallest startups. And furthermore, with athletes and other celebrities increasingly diversifying their interests and personal brands, there is rising access to even the most coveted partnerships. Today, we are seeing endorsements being utilized by companies of all sizes and from all industries. From apparel, to financial services, to technology, big name endorsements have become a go-to for the world’s top brand managers.

Endorsements in the Basketball Shoe Game

Traditionally, we have viewed endorsements and partnerships as a way to gain an advantage over competitors and grow sales. No business utilizes such a strategy quite like the basketball shoe business. Since the introduction of the Air Jordan sneaker by Nike in the mid-80s, the generic, unendorsed basketball shoe has all but vanished. The vast influence of basketball endorsements has even carried over to other sports – for example, Nike’s website offers football and baseball cleats under the Lebron and Jordan brands. Nike has since made a concerted effort to corner the market by signing the game’s top stars to exclusive endorsement deals. To get an idea on just how highly the company values these deals, we can look to the 2014 deal made with Kevin Durant, reportedly worth $300 million over 10 years. And it gets better – just a year later in 2015, Nike signed Lebron James to a lifetime endorsement deal worth “north of $1 billion.” With deals like these, in addition to exclusive contracts with other stars such as Russell Westbrook, Kyrie Irving, Paul George, and retired superstar Kobe Bryant, it is difficult to imagine how any company could dream of challenging Nike’s dominance in the basketball shoe business.

This, however, is exactly what Under Armour set out to do. The athletic apparel company, which started with a simple mission to replace cotton undershirts with microfiber shirts for elite athletes, has since established itself as a viable challenger to Nike in the shoe game. How exactly did Under Armour set out to contest the company that once held over 90% of the sneaker market? Endorsements! One such endorsement in particular – Stephen Curry. In 2009, before he was one of the greatest shooters of all time, Curry entered the NBA under contract with Nike. When it came time to renegotiate, Under Armour saw its opportunity to leverage the power of endorsements and take a shot at Nike. Ultimately, in 2013, Curry signed a deal with Under Armour for just $4 million per year (a relatively insignificant amount in the world of celebrity endorsements, which Nike refused to match). Since then, Under Armour has made significant headway in the shoe business, and the original endorsement deal signed with Curry continues to be defined as nothing short of a “steal.” In 2016, one Morgan Stanley analyst estimated that the affiliation with Curry could be worth up to $14 billion to the company and its shareholders, on the back of a 350% increase in basketball shoe sales. And although Nike still owned the top 3 spots of endorsed shoe sales in 2017, Curry and Under Armour claimed the 4^th spot. As a result of all its success on the back of the 2-time MVP, Under Armour has signed Curry to an extension through 2024 in a deal that includes equity in the company. Following in the footsteps of Under Armour’s success, companies like Puma, Adidas, and New Balance have recently ramped up their endorsement efforts in the basketball world.

Endorsements as a Tool for Brand Revitalization

Companies like Under Armour, State Farm, Heineken, Capital One, and many more, use endorsements to grow their already healthy brands to new heights. But what about brands that have fallen from grace? How can brand managers revitalize a brand and return it to its former glory? In a previous post, I discussed how Levi’s leveraged stadium branding as a key component of its revitalization efforts; however, that is just one of many tools available. In fact, endorsements can also be an extremely effective strategy in rebuilding brand equity. While Under Armour is busy fortifying and growing its position in the shoe business, competitor New Balance is kicking off its comeback via an endorsement deal with NBA star Kawhi Leonard. The company hit its peak in the basketball world in the 1980s with its high profile partnership with James Worthy, but hasn’t released a performance basketball shoe model in about a decade. Even within the same industry and sector, we are witnessing endorsements being used as a multi-tool.

But the power of endorsements is not limited to the shoe business. Today, we are seeing another revitalization attempt from a brand that once defined the mobile category. Palm, the maker of the undeniably iconic Palm Pilot of the ‘90s, will lend its name to a new line of devices that recently launched. According to a recent Bloomberg article, two former Samsung employees launched Palm Ventures and licensed the Palm name from a Chinese manufacturer that now owns the brand (and also owns the BlackBerry brand). For Palm, there are 2 main obstacles to its revitalization efforts: 1) it must reintroduce itself as a player in the mobile device and/or wearable market, and 2) the brand managers need to sufficiently differentiate Palm from the immovable incumbents, such as Apple and Samsung. To make a splash with its relaunch, Palm has secured an endorsement deal with NBA icon (and Palm investor)… Stephen Curry. The Steph Curry endorsement is a great move towards achieving the brand reintroduction, particularly given his positioning in the Bay Area. His marketing efforts have the potential of creating brand awareness among one of the top target markets for mobile devices.

Palm originally found success as a mobile device for the business traveler, one of the first to offer reliable email service on the road. With Apple and Samsung now controlling most of the personal mobile device market, the new Palm phone is being marketed as a “companion device” to your existing smartphone. The tiny device is being positioned as a replacement for smartphones in certain situations where carrying a large device might be cumbersome – going to the gym or going out to dinner for example. Through this repositioning, the company is attempting to leverage its original brand equity as a mobile device pioneer, while laying the groundwork for new sources of brand equity as a companion device.

The revival of a brand shares many strategies and tactics with the accumulation of Brand Equity for an entirely new brand; however, certain nuances exist that can supplement the efforts for a once iconic brand. As someone with a vivid recollection of the desire to own a Palm Pilot (and someone who appreciates the art of the 3-pointer), I am rooting for the success of Palm. To this point, Palm has not been able to leverage its Curry endorsement quite like Under Armour, but a 4^th NBA championship might just turn the tides. Only time will tell if I’ll be checking my iPhone or my Palm underneath the table at future dinners.

Should Your Toothpaste Company Launch a Frozen Food Line? A Closer Look at Brand Extendibility

Posted on September 13, 2018 9:43 pmModified on April 19, 2021 8:30 pmby Sebastian Custodia

Brand equity (often equated with brand value) is an all-encompassing measure of the benefits that a company receives from its brand as a result of its cumulative marketing and brand maintenance efforts. There are various valuation methodologies that attempt to assign a specific monetary value to a given brand which range from simple cash flow models to complex combinations of various rankings and analyses (such as the methodology used by Interbrand). In an article titled Brand Equity: An Overview published out of the University of Virginia, brand equity is said to encompass the following measures:

Brand Association: What triggers consumers to think of the brand and what comes to mind when they see the brand

Brand Vision: The way the brand presents itself and reflects the overall business strategy

Brand Positioning: How to brand positions itself in the target market relative to competitors

Brand Image: How consumers view the brand and what target personas the company wants to associate with the brand

Brand Awareness: A measure of how well consumers recognize the brand; on a scale from “Unaware” to “Top of Mind Awareness”

Brand Loyalty: How likely consumers are to switch between brands within the same product category

Brand Extendibility: Potential to leverage the positive perceptions associated with the brand to new customers

Each one of these components of brand equity deserves to be explored at length; however, this piece will focus on exploring Brand Extendibility in further detail. As mentioned in a previous post, the direct monetary benefits that a well-constructed brand offers the company are traditionally boiled down to 2 main categories; the ability to charge premium prices, and diminishing marginal marketing costs as a company expands. Brand Extendibility is the main value driver of the second category. A company can introduce its brand to new customers in 1 of 2 ways. First, a company can launch a new product in a new product category. Modern tech companies are a great example of utilizing Brand Extendibility in this way. For example, Amazon has successfully launched products in the e-reader, virtual assistant, tablet, and smart TV product categories (among many others) all under the Amazon name which has become known for its highly efficient and customer centric image. The second method of brand introduction to new customers is extending to a different target market within the same product category. Proctor & Gamble has done an excellent job of this over the years. For example, P&G has extended the Tide brand to many different subcategories within the broader detergent category, and has extended its Crest brand to many different subcategories of the broader oral care category. Under both of these brand extension methodologies, a strong brand relieves the parent company of a great deal of marketing and other brand building expenses. Similar to the concept of economies of scale, where a company’s fixed costs become less significant as production of a product increases, Brand Extendibility reduces the significance of marketing costs as the brand extends to new products and customers.

It is important to remember, however, that a brand can be over extended. When this happens, the value of the brand can actually take a hit, as the intended messages and associations begin to get diluted (appropriately called “Brand Dilution”). Think Harley-Davidson Perfume, or Colgate Beef Lasagna. You can imagine the rugged image of Harley taking a hit as bottled fragrances hit the shelves, and Colgate’s association with freshness and cleanliness beginning to fade when depicted next to layers of marinara sauce in the frozen foods section. The lesson is not only to intelligently manage the brand internally, but also to develop restrictions on who licenses your brand and under what terms. Unfortunately, there are times when a brand extension is attempted without the company’s permission.

Such was the case with In-N-Out Burger, when a micro-brewery launched a new beer called the “Neapolitan Milkshake Stout” back in July. The Neapolitan Milkshake may be ubiquitous with the burger chain for some west coast residents, but the real problem was the proposed can design for the beer, which mimicked the In-N-Out soda cup design almost exactly and used a clear copy of the company’s logo bearing the text “In-N-Stout.” You can imagine the In-N-Out executives’ reaction to seeing their clean-cut brand being used to market what some would consider a vice. If this were a deliberate move made by In-N-Out burger to try and extend their brand to the adult beverage market, we would have to question the thought process behind the decision and wonder whether or not this would actually serve to damage the family-friendly brand. In this case, however, the release of the product was out of the company’s control, and thus, swift action was the only way to mitigate such potential damage to brand equity. Fortunately, In-N-Out’s legal team crafted arguably the perfect response; issuing a pun-filled cease and desist notice which has received a great deal of publicity to date. One could argue that this response and the press coverage that followed may have actually resulted in increased brand equity.

Surprisingly, this is not the sole case of a questionable brand extension into the beer arena. Back in 2015, breakfast cereal brand Wheaties teamed up with a micro-brewery in Minnesota to launch the “HefeWheaties” beer in an intentional brand extension effort. Whether or not this extension positively or negatively affected the Wheaties brand equity can be debated; however, the value-add of Brand Extendibility is clear. When a recognizable and respected brand is used in the marketing of a new product, the marketing team benefits from all past branding efforts and is relieved to a certain degree of expenses that they would normally have to incur in launching an entirely new brand. Imagine the relative expenses that Apple (the world’s most valuable brand) will undertake when it finally launches its rumored Apple Car, compared to the expenses that will arise when Wheaties inevitably launches its own electric vehicle.