Trademarkology

February 11, 2015

Art Imitates Life. Life Imitates….Trademarks?

What's your favorite trademark? Would you name your child after it?

Naming children after favorite brands was spotted as a trend over a decade ago in the U.S.: https://www.techdirt.com/articles/20030929/0037233.shtml. But apparently the practice is not so popular everywhere.

Last month, a French court barred parents from naming their daughter "Nutella" after the delicious chocolate/hazelnut spread. While I think such a name would ensure her everlasting popularity the court reasoned that the name was not in the best interests of the child. So, the parents have modified their selection by shortening it. (Fortunately, they have opted for "Ella.")

If you are a fan, but don't have kids, you can show your affection for the Nutella brand in other ways. For example, last week, on February 5, 2015, the world celebrated "World Nutella Day" by sharing recipes, eating Nutella spread, blogging about Nutella, and otherwise celebrating the sweet product. Did you participate?

A fan started the holiday eight years ago. As is often the case when consumers let their affection and creativity inspire a project centered around a profitable trademark, this likely created some difficulty for the NUTELLA owner, Ferrero, S.p.A.

Mark owners want to cultivate the enthusiasm of their loyal customers. At the same time, they know they have to control the use of their marks if they want to continue to own them. When a fan commences a use that is generally positive, consistent with fair use rights, free from efforts to generate revenue or commercial publicity for the fan, and otherwise consistent with the mark owner's desired brand attributes, the mark owner may do well by extending a hand and bringing the fan into the fold. For example, the mark owner may providing the fan with special information and otherwise empower the fan to become a brand ambassador in a way that is consistent with the mark owner's marketing strategy and policy. Of course, if the fan tries to sell products on the site, tries to use the mark to promote something other than the products, or begins associating the mark with concepts that the brand owner finds offensive or inconsistent with the desired brand attributes, the mark owner may have to use less friendly measures. Deciding when, whether, and how to intervene in a fan's use of a mark is tricky and very fact-dependent.

Fortunately, the parties in this case found a way for everyone to win. Just a couple weeks before this year's "World Nutella Day," a transfer of the World Nutella Day community to Ferrero was announced: http://www.nutelladay.com/transfer/. The original founders and hosts of the holiday will continue to be involved, but Ferrero will take over most of the care of the community that developed around the holiday.

If you missed the opportunity to participate in this fine holiday, I am sure that Ferrero would not mind if you raised a toast to Nutella a few days lateâ¦. especially if the toast bears a smear of Nutella. Enjoy!

Check out how some celebrated World Nutella Day:

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