Can You Trademark A Common Word: Seidman v. Chobani

Can you trademark a common word?
Is it possible to trademark a common word?

It’s a legal showdown between the Grand Poobah of corporate do-goodery and a small-town-saving yogurt company. Simple trademark rights are at the center of Dov Seidman v. Chobani, but one of the suit’s central legal questions – involving Twitter marketing — is teasingly complex.

Who’s Who: Dov Seidman and Chobani Yogurt

Dov Seidman: Corporate Management Guru

Author of “How: Why How We Do Anything Means Everything,” charity luminary and CEO of LRN, Dov Seidman coined the phrase “How Matters” — which he uses in promotional and corporate training materials.

Chobani Yogurt: “American Dream” Business

In 2005, a Greek immigrant saved a small upstate New York town when he took over a failing Kraft Foods factory, and turned it into the HQ of a successful American yogurt brand. What’s different about Chobani yogurt than all the other yogurts? Its texture, which is dependent on how the yogurt is strained.

Droga5: Chobani’s Creative Advertising Team

Partially owned by talent agency William Morris Endeavour, Droga5 is a marketing and design house, and the creative team behind Chobani’s latest re-brand.

Why Is LRN’s Dov Seidman Suing Chobani Yogurt For Trademark Infringement?

“How Matters” is at the heart of the matter:

  • Seidman uses the two-word tagline in his books and company corporate coaching materials.
  • In January 2014, Chobani launched a high-profile marketing campaign – replete with Super Bowl commercial – focusing on what makes Chobani yogurt better than other yogurts. The tag line of the campaign, “How Matters,” speaks to the company’s yogurt sifting technique.

Seidman feels that Chobani’s “How Matters” infringed on his “How” trademark. So, Seidman sued Chobani, plus Chobani’s marketing arm, Droga5.

And lest you think how-mannered Seidman has nothing to do with the suit — that it’s probably the busy work of meddling attorneys — think again. The LRN headman has made it clear that his Chobani battle is more than a legal fight, “It’s a moral fight – it’s a “how” fight.”

Unguard!

Chobani’s Defense Against Seidman’s Trademark Lawsuit: The Word “How” Can’t Be Trademarked; Oh, and We’ve Never Heard Of Seidman

Chobani spokespeople insist Seidman’s case is meritless. Their defense arguments:

  • Seidman should’ve never been granted a trademark on the word “how” to begin with, because its overbroad; and
  • Nobody on Team Chobani/Droga5 had heard of Seidman before or during development of the “How Matters” re-brand campaign; so, how could we have copied. (Though, trademark law isn’t about the elimination of copy-cats, which we’ll get to below.)

Since the lawsuit hit, the food manufacturer also decided to file a formal trademark application for the term “how matters.” Seidman also groused:

“They’re using ‘how’ to convey and connote that they are an ethical company. They are using ‘How’ exactly the way I use it. They’ve appropriated the foundation of my entire philosophy.”

What can be trademarked and what can’t?

Is Chobani right? Is “How” too broad a word to trademark? Yes and no.

Trademark law is less about “you copied my idea,” and more about “don’t confuse the marketplace or consumers.” In order to be granted an official trademark registration, you must demonstrate the unique and transformative nature of the thing you want to trademark.

Dov Seidman was able to trademark the word “how” because he popularly turned an adverb into a noun in the realm of the business consulting trade. But be sure, this is one of those cases where subjectivity and objective law collide.

The Intersection of Trademark Law and Social Media Marketing

The B-plot of Seidman v. Chobani is Chobani’s insistence that nobody from the yogurt company or Droga5 (the marketing team) knew of Dov Seidman’s work. Instead crediting a night out at an open kitchen eatery as the spark for “How Matters.”

But here’s the rub. Seidman can prove that in 2013, Andrew Essex, a Droga5 big-wig, lunched at LRN offices. Also, a few days before Chobani’s super bowl rollout, the company tweeter tweeted:

“@DovSeidman: Thanks for inspiring the world to care about ‘how.’ Can you help inspire the food industry, too?”

Damning, right?

Maybe not.

According to Chobani, Dov’s name was on a media lead-list of “influencers” that “might be worth alerting about the campaign.”

That explanation may sound farfetched to non-marketers and non-business-owners, but marketers and business owners know that Chobani’s justification is 100% feasible. Companies out-source social media tasks all the time.

Besides, lead/media/PR lists have been around since Barnum built his circus.

Which raises the question: legally speaking, what level of familiarity can we assume based on “marketing tweets?”

After all, do you know the philosophies and tag lines for all of your company’s social media followers and friends?

Now, is it a workable legal defense?

Maybe; maybe not. For starters, the tweet was specific and demonstrated an intimate knowledge of Seidman’s work. Moreover, companies are responsible for authorized work published under their brand.

But if Chobani does outsource its social media marketing, the provisions of its outsourcing contract could prove important.

But the question of whether or not a tweet constitutes a relationship is a tricky one, especially in today’s marketplace, where everyone’s “a friend” and a whole lot of businesses aren’t “in technical control” of their social media marketing efforts. In theory, these questions could become the pivotal ones in deciding Seidman v. Chobani.

Speak With A Trademark Lawyer

Kelly / Warner has a successful intellectual property litigation team. We also handle routine copyright and trademark licensing and registration. If you’re in the market for an intellectual property lawyer, get in touch with Kelly / Warner Law.

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