February 16, 2017

Branding 101: It’s Like Cheers: Where Everybody Knows Your Name – But Everybody Pronounces It Differently

For those of you faithful Trademarkology readers out there, you may recall that I last posted to the blog Christmas week â and reveled in the honor of getting to write about SANTA trademarks:

Dear Santa

Well, I have a confession to make. Instead of blogging about Dear St. Nick, I almost wrote about the GRINCH:


While the USPTO has over 2,000 active registrations and applications where SANTA is all orpart of the mark, the GRINCH has only 32 â and all of them are owned by none other than Dr. Seuss Enterprises, L.P. and Geisel-Seuss Enterprises, Inc. (with the exception of Reg. No. 3,436,739 for M.K.G. MONEY-KILLA-GRINCH which may be the topic of another post later this year).

Why, you may ask, did I opt to stiff the GRINCH? Simply put, I'm holding a grudge.

You see, my law firm has offices in Louisville, Kentucky. For more than three decades, Louisville has held an annual festival called "Light Up Louisville" where the community kicks off the holiday season. It's a free event designed for families and children which culminates with Santa and the Mayor pulling the ceremonial switch turning on the holiday lights in the city.

My grudge with the Grinch started in 2008, the year the city had planned its Light Up Louisville celebration to include a children's area called "LouWhoVille" with costumed characters from the classic "How the Grinch Stole Christmas" including Cindy Lou Who, other citizens of Who-Ville, and the Grinch. Well, the Grinch would have none of it. The Grinch's lawyers sent Louisville a trademark cease and desist letter (and not one of the nice ones like Jack Daniels is famed for sending). It was a mean-spirited one. It threatened suit if the city did not pull the plug on its plans. Eventually the city relented and renamed the child area "Lou-Ville" and then-Mayor Jerry Abramson was quoted in the local press as saying, "It appears these lawyers' hearts are two sizes too small."

The play on words of LouWhoVille by Louisville was inspired by the fact many people â including lifelong residents of the city â pronounce the city's name differently. It is a problem which is sometimes faced by brand owners. Rather than launching an educational campaign to teach people the "correct" way to pronounce Louisville, the city and its Visitors and Convention Bureau took a totally different approach. Instead, Louisville embraced the diversity of pronunciations and celebrated the multiple ways people pronounce the its name and made it the theme of their community branding campaign:


In fact, the city even filed its own application to federally register LOOAVUL LUHVUL LOUEVILLE LOOAVILLE LOOEYVILLE LOUISVILLE as a mark and is the proud owner of Reg. No. 4,079,605.

They just won't be calling it LouWhoVille, and I won't be writing about the Grinch.