Tag Archives: Benny Goodman

Best of 2013: Arnold Palmer and the Perfect Brand

First published November 11, 2013, this post is based in part on part of my contribution on trademark law and the right of publicity in the New York State Bar Association publication, In the Arena.  As with other posts on the blog where I have recycled revisited such material, it may sound a little bit less like a LIKELIHOOD OF CONFUSION® blog post and a little bit more book-like.  In this case, however, the post is a significant expansion upon what appeared in the book.

As seen in the Benny Goodman case in the TTAB, celebrity, brand power and trademark rights may outlive a celebrity’s peak performing years, but will bear fruit only as long as the roots of the “brand” itself—the image, sensibility or other association the celebrity name elicits—remains alive.  How does a brand stay alive after the celebrity’s career (much less his life) are over?

BG in Hi FiFor insight into the answer, consider the management of the BENNY GOODMAN trademark, where one significant basis for the TTAB’s ruling against the seemingly bona fide applicant was the finding that a corporate successor in interest was actively exploiting the late King of Swing’s fame.

In contrast, the custodian of the intellectual property rights bequeathed by Goodman’s contemporary and colleague, the great band leader Glenn Miller, managed to completely squander those rights. Miller died tragically in 1944, and decades of internecine squabbles among his heirs followed. Finally, in 2006 the Ninth Circuit essentially declared the “Glenn Miller” and “Glenn Miller Orchestra” trademarks dead as well, affirming the district court’s ruling that decades of inaction by the plaintiff, despite knowledge of the defendant’s infringement, amounted to a fatal case of laches.

Glenn MillerThe lessons of these cases for advising celebrities are obvious: Lawyers must ensure that a star’s brand does not die with him — or with his playing career. An athlete’s planning for post-career continuation of the brand should begin early. Few athletic careers extend past age 40, and most end far earlier. Absent proper brand management, a sports star’s trademark rights may wither and die well before he does.

This need not be the case. Endorsement power can live and grow well past the active playing life of a professional athlete. There is no better example than the extraordinary post-play branding career of golfing legend Arnold Palmer, who unlike Miller and Goodman didn’t lead the perfect band but arguably developed, and exploited, the perfect brand.

Arnie is very much alive, but his competitive golfing days are well behind him.  Yet he has made far more after the peak of his glory days than he ever did on the green.

The Arnold Palmer brand is built on a fame and stature that few people under 60 can appreciate.  It came into being during Arnie’s playing days, and far outstripped mere sports, as this 1967 Sports Illustrated article recounts:

The country produces superb athletes regularly, of course, and the 1960s have seen many of them—Jim Brown, John Unitas, Willie Mays, Sandy Koufax, Mickey Mantle—but none can rival Palmer. Not only has he reached a celebrity status enjoyed by few individuals in any field, he is the first athlete to become a walking million-dollar corporation in his prime. . . .

Arnold Palmer in his fashion primeBy Tuesday afternoon the filming is done. Arnold hurries to La Guardia and flies in his jet to Shawnee, Pa. to participate in the grand opening of a food-processing plant built by his father-in-law, Martin Walzer. He spends the night in Shawnee. The next morning he flies back to New York City, where he picks up four top business executives as part of his association with the U.S. Banknote Corporation. He flies them to Latrobe for a VIP day of golf, meals and drinks at Laurel Valley Golf Club. On Thursday he poses for photographs again, this time for the Bolens Division of FMC, for whom he endorses lawn equipment and snowplows. Two days in Latrobe follow, but on Sunday he is off once more, this time to Winchester, Ky., where he is made a Kentucky Colonel and an Admiral of the Kentucky Waterways. He plays an exhibition there and is back in Latrobe by nightfall. Monday and Tuesday are Arnold Palmer Enterprises days in Latrobe, as 14 executives from his various corporations fly in to consult, dine and play golf with the boss.

Meanwhile Tuesday has brought an unexpected problem. The State Department called both Arnold and me on a matter of some importance.
Read More…

Arnold Palmer and the Perfect Brand

This post is based in part on part of my contribution on trademark law and the right of publicity in the New York State Bar Association publication, In the Arena.  As with other posts on the blog where I have recycled revisited such material, it may sound a little bit less like a LIKELIHOOD OF CONFUSION® blog post and a little bit more book-like.  In this case, however, the post is a significant expansion upon what appeared in the book.

As seen in the Benny Goodman case in the TTAB, celebrity, brand power and trademark rights may outlive a celebrity’s peak performing years, but will bear fruit only as long as the roots of the “brand” itself—the image, sensibility or other association the celebrity name elicits—remains alive.  How does a brand stay alive after the celebrity’s career (much less his life) are over?

BG in Hi FiFor insight into the answer, consider the management of the BENNY GOODMAN trademark, where one significant basis for the TTAB’s ruling against the seemingly bona fide applicant was the finding that a corporate successor in interest was actively exploiting the late King of Swing’s fame.

In contrast, the custodian of the intellectual property rights bequeathed by Goodman’s contemporary and colleague, the great band leader Glenn Miller, managed to completely squander those rights. Miller died tragically in 1944, and decades of internecine squabbles among his heirs followed. Finally, in 2006 the Ninth Circuit essentially declared the “Glenn Miller” and “Glenn Miller Orchestra” trademarks dead as well, affirming the district court’s ruling that decades of inaction by the plaintiff, despite knowledge of the defendant’s infringement, amounted to a fatal case of laches.

Glenn MillerThe lessons of these cases for advising celebrities are obvious: Lawyers must ensure that a star’s brand does not die with him — or with his playing career. An athlete’s planning for post-career continuation of the brand should begin early. Few athletic careers extend past age 40, and most end far earlier. Absent proper brand management, a sports star’s trademark rights may wither and die well before he does.

This need not be the case. Endorsement power can live and grow well past the active playing life of a professional athlete. There is no better example than the extraordinary post-play branding career of golfing legend Arnold Palmer, who unlike Miller and Goodman didn’t lead the perfect band but arguably developed, and exploited, the perfect brand.

Arnie is very much alive, but his competitive golfing days are well behind him.  Yet he has made far more after the peak of his glory days than he ever did on the green.

The Arnold Palmer brand is built on a fame and stature that few people under 60 can appreciate.  It came into being during Arnie’s playing days, and far outstripped mere sports, as this 1967 Sports Illustrated article recounts:

The country produces superb athletes regularly, of course, and the 1960s have seen many of them—Jim Brown, John Unitas, Willie Mays, Sandy Koufax, Mickey Mantle—but none can rival Palmer. Not only has he reached a celebrity status enjoyed by few individuals in any field, he is the first athlete to become a walking million-dollar corporation in his prime. . . .

Arnold Palmer in his fashion primeBy Tuesday afternoon the filming is done. Arnold hurries to La Guardia and flies in his jet to Shawnee, Pa. to participate in the grand opening of a food-processing plant built by his father-in-law, Martin Walzer. He spends the night in Shawnee. The next morning he flies back to New York City, where he picks up four top business executives as part of his association with the U.S. Banknote Corporation. He flies them to Latrobe for a VIP day of golf, meals and drinks at Laurel Valley Golf Club. On Thursday he poses for photographs again, this time for the Bolens Division of FMC, for whom he endorses lawn equipment and snowplows. Two days in Latrobe follow, but on Sunday he is off once more, this time to Winchester, Ky., where he is made a Kentucky Colonel and an Admiral of the Kentucky Waterways. He plays an exhibition there and is back in Latrobe by nightfall. Monday and Tuesday are Arnold Palmer Enterprises days in Latrobe, as 14 executives from his various corporations fly in to consult, dine and play golf with the boss.

Meanwhile Tuesday has brought an unexpected problem. The State Department called both Arnold and me on a matter of some importance.
Read More…

Best of 2012: Sing, sing, sing!

Benny Goodman website thumbnail

The King of Swing

First published August 1, 2012.

John Welch suggests the musical question, “How is Section 2(a) false association like 43(c) dilution protection?”

Great question.  In other words, are the famous — even dead — different from the rest of us?

It came up in the context of this post on the TTABlog:

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (July 11, 2012) [precedential].

. . .

The Board applied the four-part test of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), to determine whether Section 2(a) applied:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant’s goods with the “well-known bandleader, composer and clarinetist.”

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans “galore” on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO’s evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant’s business.

And as to factor (4), the Board concluded that “Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection.”

The King of Bling

“Significant segment” means fuddy-duddies (like John) and people with the cultural memories of fuddy-duddies (like your blogger, who in fact saw Benny Goodman perform live).  Seems neat and clean, yeah?

So a commenter on the post asked as follows:

Perhaps my biggest objection to this opinion is the statement that “it is commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods….” This opinion nearly states that names of famous people essentially is entitled to all the benefits of 43(c) famous mark protection. Despite the relative obscurity of Benny Goodman, whom I never heard of even though I am over 40, he is given dilution protection.

Now, I can’t help if Anonymous doesn’t know who Benny Goodman is — indeed the description of the King of Swing as “obscure” raises questions as to the validity of anything he or she might say.  But John  responds, restraining himself with his legendary gentility, as follows:

Interesting point. Maybe you should write an article: How is Section 2(a) false association like 43(c) dilution protection?

Maybe.  Who would read an article by someone who thinks Benny Goodman is obscure?  But maybe the answer is not only that the Board is not granting these rights to the “names of famous people,” but rather to the present Goodman estate, in the corporate person of CMG Worldwide, which is actively working to exploit the rights; and that it is granting far narrower rights than would be available under dilution. Read More…

Sing, sing, sing!

Benny Goodman website thumbnail

The King of Swing

John Welch suggests the musical question, “How is Section 2(a) false association like 43(c) dilution protection?”

Great question.  In other words, are the famous — even dead — different from the rest of us?

It came up in the context of this post on the TTABlog:

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (July 11, 2012) [precedential].

. . .

The Board applied the four-part test of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), to determine whether Section 2(a) applied:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant’s goods with the “well-known bandleader, composer and clarinetist.”

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans “galore” on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO’s evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant’s business.

And as to factor (4), the Board concluded that “Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection.”

The King of Bling

“Significant segment” means fuddy-duddies (like John) and people with the cultural memories of fuddy-duddies (like your blogger, who in fact saw Benny Goodman perform live).  Seems neat and clean, yeah?

So a commenter on the post asked as follows:

Perhaps my biggest objection to this opinion is the statement that “it is commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods….” This opinion nearly states that names of famous people essentially is entitled to all the benefits of 43(c) famous mark protection. Despite the relative obscurity of Benny Goodman, whom I never heard of even though I am over 40, he is given dilution protection.

Now, I can’t help if Anonymous doesn’t know who Benny Goodman is — indeed the description of the King of Swing as “obscure” raises questions as to the validity of anything he or she might say.  But John  responds, restraining himself with his legendary gentility, as follows:

Interesting point. Maybe you should write an article: How is Section 2(a) false association like 43(c) dilution protection?

Maybe.  Who would read an article by someone who thinks Benny Goodman is obscure?  But maybe the answer is not only that the Board is not granting these rights to the “names of famous people,” but rather to the present Goodman estate, in the corporate person of CMG Worldwide, which is actively working to exploit the rights; and that it is granting far narrower rights than would be available under dilution. Read More…