July 11, 2014

Guest Blog Post! ISIS and Knowing When to Fold ‘Em

It's not easy choosing a name for your new product. You brainstorm, collect possibilities, consider the pros and cons, sweat it out, and finally pick a mark. Then you open the paper and find that a new group using your carefully-chosen name is taking over large portions of a foreign country, summarily killing prisoners, and imposing strict religious law. All of a sudden, you find that you're not that hungry for breakfast.

This won't happen to most trademark owners, of course, but it did happen to AT&T, Verizon, and T-Mobile, which rolled out a joint venture offering a mobile payment service called ISIS.

They did what they could do â they undoubtedly searched carefully to try to make sure they wouldn't encounter problems with other marks. They filed applications to register ISIS and ISIS-related marks â 46 of them, according to the Patent and Trademark Office's database, starting around February 2010. Many of those applications have now become registrations. They created a nice website at paywithisis.com.

Then the bad news started rolling in from Iraq. A group calling itself the Islamic State of Iraq and Syria â commonly shortened to ISIS â swiftly took substantial territory in Iraq and terrorized the populace. American airwaves filled with gruesome stories about ISIS's deeds. Most recently, the group declared a caliphate, with its leader as the commander of Muslims worldwide. Here are some excerpts of his coming-out address:

Although it appears that the group may have moved on to a different name (either The Islamic State or State of the Islamic Caliphate), it would be hard to blame the mobile payment people for wanting to create some distance between them and the militant group. And, sure enough, the venturers announced this week that they will choose a new name for their service.

The lesson? Sometimes the best-laid plans come to naught for reasons completely outside your control. As they say, stuff happens. (If it happens to you, you probably use a more colorful term than "stuff.") Stuff happened to Jeffrey Martin, Inc., whose appetite-suppressant candy called AYDS, a product with robust sales in the 1970's and early 80's, suddenly was a sound-alike for another feared killer. After a half-hearted name change to DIET AYDS, that product eventually was withdrawn from the market.

The mobile payment venture was probably wise to move on. Certainly any brand owner wants to be in control of public perception of its brand, and these were some pretty powerful bad associations with the name ISIS. Those associations may or may not rapidly dissipate if the militant group also changes its name, but the venture presumably thought that was too much of an unknown for a large enterprise trying to gain widespread public acceptance. May they have better luck with their new name.


Meanwhile, the Egyptian goddess Isis, the throne-headdressed sister/wife of Osiris and representation of pharaoh's power, has not made a statement about re-branding. She probably figures she can wait this one out.

John Scruton has practiced IP law since 1995 and has been in Stites & Harbison's Louisville office since 2000, particularly dealing with trademarks and copyrights.