Trademarks on Shapes : How to close the vulnerability gap

• Report rights infringement
• published: 13 Jun 2016
• views: 0

Now, you already have a trademark on your company or your product. But the product, itself, or the interface for the product could itself be a trademark. And there is a secret problem that we need to solve called "the vulnerability problem." And I'll show you a technique to how to get around that. Here are a bunch of examples of products that are shapes. The Coca Cola bottle, the iPhone. This one you may not know, which is Kitchenaid's mixer, Tide Pods. And the three by four squares on a Hershey bar is a trademark, not just the name Hershey. And, of course, the Honeywell thermostat, which I know quite a bit about because it was involved in that one. Here's the vulnerability problem which comes with that. First of all, let's talk about general vulnerability. When you launch a product or before you launch a product, there's no risk. Nobody knows about your product. But the day you launch, the risk will rise because the product is now visible in the world. Sometimes that risk will continue to rise, but more often than not, it'll actually fall a bit. And that's because your competitors are going to wait to see whether your product is going to be successful or not. And if you fail, they're happy to let you do it. If you succeed, they'll be back and there's going to point at which they want to copy your concept the shape of the concept, for example and you need to own it. But you're going to be vulnerable in this period. So let me show you how that works. Take an example of Beats. These little earbuds are really good, but beats decided that they could convince the market that you really want to wear really heavy ones instead of these really light ones. When they came out on the market, everybody says, "You are going to fail." And that was when that vulnerability dipped a little bit. And then when they didn't fail, it rose up and everybody wants to copy them. So what to do? You cannot get a trademark on the shape of a product until you prove that the public recognizes the product, which is the legal words for "it has acquired distinctiveness." In other words, when I see an iPhone, I know it's an iPhone. And when I see a Samsung, I think it's an iPhone. That doesn't happen overnight. It happens over a long period of time. In that period of time, your shape, your brand is vulnerable. What to do? The solution is one you wouldn't expect. To protect in that gap zone, which can be several years depending on how rapidly you market, you need another tool. And that tool is a design patent. A patent, not a trademark, the fill that gap because design patents can be issued within 12 to 18 months of filing, which is way earlier than most trademark can acquire sufficient distinctiveness to be registerable and ownable. So we can fill that gap. Now, what is a design patent? It is a patent, not like a utility patent, a patent that covers the way things look, not the way things work. There's the design patent on the iPhone 3. There's the design patent on the iPhone 3 interface, so two dimensional interfaces are also patentable as designs. So, let's go back to our vulnerability chart. Same as before, but here we do have acquired distinctiveness until long after we filed. Launched, buyer acceptance, buyer demand. Now we're ubiquitous. We're really there with acquired distinctiveness, and we can file our trademark. But what about this gap? And by the way, it isn't enforceable until you've registered. So that takes even longer. So, this whole window is vulnerability. If your competitors copy you in this window, you will never get to acquired distinctiveness because you won't be distinctive. Everyone will have copied you. You need something to fill the gap. Now, let's overlay a design patent. Because it's a patent, you have to file it within a certain amount of time. So, we'll file right away. And we'll get our grant maybe in that dip in the vulnerability curve. Now we have a very small window of vulnerability while we are building up for the registration of our shape trademark. You see how we can use the two together to take care of the vulnerability problem….