Regional Report Triad May 2011
Lorillard treasures its measure of ‘pleasure’
Miller Brewing Co. tried in the ’80s and lost. So did developer-turned-reality television star Donald Trump in 2004. Now Greensboro-based Lorillard Inc. is sparring with Winston-Salem competitor R.J. Reynolds Tobacco Co. over whether a company can commandeer an everyday word or phrase for its exclusive use in advertising. The word is “pleasure.” Resolving the issue likely will mean lots of pain for the North Carolina Business Court in Greensboro, where Lorillard’s trademark-infringement lawsuit and Reynolds’ countersuit await hearings.
“It’s going to be a tough one,” says Charles Lankau, a professor of business law, communication and negotiation in Wake Forest University’s business school. Lorillard registered “Pleasure!” in 2005 as a trademark for its Newport cigarette brand, and Reynolds registered the word two years later as part of several phrases, including “Revolution in Pleasure,” to promote its snuff. In 2009, after an initial litigation skirmish, the companies agreed that Reynolds could use “pleasure” as part of a sentence in its advertising but couldn’t highlight it.
Lorillard contends Reynolds is violating the agreement by, among other things, using the word in some of its Internet domain names. A Lorillard spokesman declined comment. Reynolds spokesman David Howard says Lorillard is, simply put, full of snuff. “We will vigorously defend against Lorillard’s claim and prosecute Reynolds’ claim because we believe Reynolds’ use of ‘pleasure’ has always been lawful.”
The tiff illustrates how zealously companies protect brand identities, even hijacking common words. After the success of Miller Lite, Miller Brewing — now MillerCoors LLC — tried in 1985 to stop others from calling their beers “light.” No deal, the U.S. Supreme Court ruled. Upon the popularity of The Apprentice, Trump tried to copyright “you’re fired” to block T-shirt hawkers and others from using it. “Unfortunately, that’s something people are told every day at work, so the court determined it was simply two common words,” Lankau says. “You can’t own it.”
The flip side is that companies can see their brands slip away. Kleenex, a Kimberly-Clark Corp. brand, is so widely used in place of “tissue” that some dictionaries include it in the definition of that word. Aspirin once was a brand name. “You can have a trademark that’s so good that you lose it,” says Roger Beahm, a marketing professor at Wake. A key decision for the court, he says, is whether Lorillard’s use of the word is so tied to the brand that it suggests the brand. Folgers coffee, for example, used “mountain grown” so much it suggested the brand and was given a trademark.
Trademark lawsuits can serve a purpose other than settling legal questions — even if they don’t succeed, Lankau says. “You might make the other company more careful next time.”