Ylvis, the Norwegian music/comedy duo, recently revealed the secret of the fox to more than a hundred and twenty-three million viewers on YouTube (as of this posting), answering the vexing question: What does the fox say?
Not surprisingly, given this wide-spread attention, an individual apparently unconnected to Ylvis already has filed an intent-to-use trademark application for ”What the Fox Say” for t-shirts.
No doubt, what makes a video go viral is yet another vexing question to ponder, but today, we thought we’d leave that one to our capable marketing friends, and instead tackle a slightly different question that we know something more about, by asking: What does the suffix say?
A frequently asked question by those who create brand names and trademarks is, how sacrosanct is another’s suffix, and must it be avoided to dodge a serious trademark conflict? While some trademark types appear to put little stock in the power of a suffix from a trademark enforcement perspective, search tools do exist to consider them, so it’s safe to say, it depends.
A lot will depend on the prior enforcement success of the trademark owner. And if the trademark owner has a family of marks sharing a common suffix, it would be wise to beware and prepare for a likely conflict. For example, Geoffrey LLC, owner of the TOYS “R” US and BABIES “R” US brands, puts enormous stock in the communicative power of its “R” US suffix, and one might also ask, at what financial cost? As it appears that just about anything close to the “R” US suffix crosses Geoffrey’s line for just about any goods or services, including LIGHTS R US for vehicle lights, STUDS “R” US for fitness education services; BINGO R US for gambling; HAIR ARE US for hair care preparations, THEY ARE US for customer service mananagement, and LABELSRUS.COM for inkjet printing services.
Remember my prior post called Trolls-R-Us? It appears the online retailer referenced there now goes by the name Trolls Trolls Trolls, so chalk up another “W” for the likely famous ”R” US trademark suffix owner. In Geoffrey’s case then, it appears the mere presence of this suffix says “exclusivity” or, at least advises, ”prepare for a fight.”
On the other hand, notwithstanding the early and likely famous GODZILLA brand dating back to the 1950s, nowadays when it comes to brands incorporating ZILLA as a suffix, even when inspired by the Godzilla name and/or character, the suffix appears to not say “exclusivity,” but instead it simply says, implies, or suggests some sort of excess in what precedes it.
Indeed, Toho, owner of the GODZILLA brand for toys, comic books, motion picture entertainment services, clothing, gaming machines, video games, and board games, among other goods, appears to have all but relinguished the ZILLA suffix to a multitude of third parties selling a wide variety of goods and services, including the DOGZILLA brand that John Welch recently wrote about over at the TTABlog.
Years ago, Toho, the owner of the Godzilla trademark appeared far more determined for a trademark fight and sought to enforce its rights against Davezilla.com (but for the straight scoop, check out Marty Schwimmer’s post at the Trademark Blog, from back in the day, circa 2002), and it even succeeded against Bagzilla for excessively large garbage bags sold by Sears. But current ZILLA enforcement by Toho appears more sporadic, with only six trademark oppositions filed at the TTAB since 2006, despite the proliferation of multiple third party marks incorporating the ZILLA suffix.
A recent trip to Iowa City revealed that the GOLFZILLA brand appears to be going strong. In addition, federally-registered trademarks such as PRETZILLA for pretzels, BACONZILLA for hamburgers, HOGZILLA for barbecue sauce, SHRIMPZILLA for sandwiches, NOMZILLA for restaurant services, GLUZILLA for adhesives, PLUMBZILLA for online retail stores featuring plumbing supplies and fixtures, GUARDZILLA for athletic mouth gaurds, and BITZILLA for power operated drill bits, all appear to peacefully coexist with the GODZILLA brand and mark, opening the door to yet more who want their own piece of the ZILLA suffix action.
Although our focus today has been on the suffix, prefixes are often said to be more important from a trademark perspective (think McDonald’s MC prefix and family of marks), because they are the first element seen and presumably remembered by consumers. But I’ve always understood that, in general, people will remember the first thing and the last thing, most likely forgetting the in between parts (please let me know if that rule applied to your reading of this post, assuming you’ve come this far). This blurb from across the pond discussing likelihood of confusion in connection with pharmaceutical brands and marks tends to reinforce the perspective that both prefixes and suffixes are important in multi-syllable brand names and marks, especially when both appear together in the same trademark enforcement target.
In the end, if a brand owner wants to enjoy broad trademark rights and prevent others from incorporating its unique suffix in other’s marks, two tactics and a reminder might help. First, consider creating and promoting a family of marks where each shares the same suffix, as Geoffrey has done. Second, consider making separable use of the suffix as an additional standalone trademark, so that third party enforcement targets will have incorporated the entirety of at least one trademark. Last, it would be important to recognize too, that once the first identical suffix is tolerated, more are guaranteed to follow in full ZILLA form.