By Ben Langlotz | June 1, 2015 | Business, Firearms, Firearms Industry Advice, Intellectual Property Advice, Trademark | 0 Comments
Every month, I personally review every trademark filing made in the firearms industry. In this post I’m going to share some of the secrets I learn from such a snoop, in this case, one from a little over a year ago.
In April 2014, there were 121 trademark applications filed in the international class that includes firearms and fireworks. Incidentally, fireworks trademark can be fun. Because trademarks apply only to your goods and services and not to unrelated goods, you might get some good ideas from fireworks trademarks. (I also think that historic military equipment names can be a good source for firearms trademark).
In my normal search, I exclude all the fireworks trademarks, and end up mostly with our industry’s trademark filings. Of course, the firearms class doesn’t include things like riflescopes and gun safes, which might be legally related to firearms when considering trademark legal issues, but aren’t in the firearms classification we’ll look at here.
Here’s what jumps out at me about this application to cover gun cleaning pads: This was first used in 1977, and they’re finally getting around to securing it decades later. With trademark filings, two things are true: It’s never too soon, but it’s never too late. I don’t want to imagine the potential legal problems that might have cropped up over 37 years that could have been avoided by filing this early on. A small investment in trademark registration can save a bundle in legal fees by avoiding disputes and putting yourself in the strongest possible position.
One other thing about this filing I don’t like: They include the “generic” (meaning, what it is: metal cleaner) in the brand name. This usually creates weaker rights. I’d have advised that they make the brand “BIG 45 FRONTIER” then use the TM symbol, then the words “metal cleaner.” I often have clients who have started using a brand and put the TM after the whole phrase. I can help them correct this by encouraging them to rework their packaging and put the “TM” symbol in the right spot. We do this before filing the trademark application, so that the examiner sees the trademark being used properly. It’s much cheaper to get it right the first time!
The next listing is NITEPIPE TECHNOLOGY, for firearms sights. I presume this is some kind of “lightpipe” fluorescent technology to provide low light visibility. I like the NITEPIPE name. I don’t like the “TECHNOLOGY” that follows. It clutters the brand, and makes it harder to enforce trademark rights against an infringer who isn’t using “technology” in their brand. They would have a harder time going after someone using “LITEPIPETM sights” with the two-word phrase as their brand than the one word alone.
Incidentally, the misspelling of “NITE” has essentially no legal effect on a trademark’s validity of enforceability. A slight misspelling doesn’t avoid infringement, but misspelled trademarks might be eye-catching to the consumer (or not). If there’s a reason to misspell your brand, it’s not for trademark legal reasons. The same potential mistake of including the “generic” as part of the brand is made this month by TEMPEST GUN CLEANING SUPPLIES, TITAN AMMUNITION and Q-SERIES.
There are a bunch of filings for brands that begin with DYNA-, for explosives like shaped charges (these aren’t really related to firearms, but it raises an interesting topic). DYNASLOT, DYNASELECT and DYNASTAGE may be fine brands. But I see an opportunity for protecting a whole family of DYNA- brands. Sometimes, one can even protect a whole family of trademarks with a single filing. But the more important thing is to protect that prefix. If you have enough registrations with your prefix, you can be presumed to have rights to that prefix even for different suffixes. If you doubt this, try offering food or restaurant services with a brand starting with “Mc- “! The law presumes that even if McDonalds never sold McSquid, they have the right to expand into that use of their prefix.
Besides using and registering a ton of brands with the DYNA- prefix, I’d advise that that company start using “DYNA” alone as a trademark. Like: “…part of our DYNATM family of reliable blasting products.” This way, even before they’ve built up enough of a brand family to own “DYNA” outright, they can grab the rights early on. The lesson: your trademark attorney shouldn’t just file papers to help you secure your existing rights, he can advise you of strategies that can expand and strengthen your rights by changing how you use your trademarks.
Rock River Arms started using this brand for rifles late in 2013. If they get it, they’ll have a good brand. I won’t do their homework and conduct a full trademark search, but I wonder if there are others who have used this strong brand that makes one think of “Delta Force” and the concept of “change” as symbolized by the Greek letter (if “Delta House” makes you smile, we’re of the same generation!)
A 10-second Google search for “delta firearms” gave some potentially bad news to Rock River Arms: “Delta Arsenal” has been selling ammunition since 2006. If they’ve been selling nationwide (presumably so, as they say they sell to the military) then Rock River might be up a creek on this.
I checked, and there are five registrations including the word “Delta” in the firearms class. They cover airsoft (another concern), rockets (Boeing – not a concern), ammunition (another company), and firearms (owned by a little company called Colt). I wonder if Rock River’s attorney searched before filing, or whether maybe their client just told them to file anyway and see if they could get it registered.
When there’s a bunch of companies who own the same brand for different goods, then the field is said to be “crowded” and no one can expect to claim rights for a broad range of goods. In this case, some of the brands include words other than “delta” like the “Delta Elite” brand owned by Colt. But RRA risks rejection of their application when they adopt the most distinctive part of a competitor’s trademark. And when you file a trademark application, you raise a lightning rod that can make you more likely to get zapped with an infringement lawsuit.
When a client comes to me wanting to protect a brand that might infringe the rights of others, I first advise picking a brand that can keep them out of court, and that they can protect as a valuable business asset. But if they’ve already been using it for a long time, I tell them that they should be prepared to receive a letter from another lawyer telling them they must drop that old trademark. My advice is to make a transition to a safe, protectable brand on their own timetable, not based on the demands of their competitors’ lawyer.
You can learn a lot by trademark snooping, I mean searching! ORBITAL ATK, INC. was filed after a recent merger of ammo maker ATK, and Orbital, an aerospace company. If you want to go beyond their press releases and find out what they plan to apply the new brand to, it’s all right there in the public trademark records:
Ceramic matrix composite materials (CMC) for use in the manufacture of satellites, rockets, missiles, aerospace vehicles, aircraft engines and brakes; Metal rocket launching platforms; Rocket launching platforms of metal; Rocket engines not for land vehicles; Gun scopes; Observation rockets; Rifle scopes; Apparatus for locomotion by air and space, namely, airborne platforms for serving spacecrafts and conducting space applications, and structural parts and structural fittings for all of the aforementioned goods; Gun shields as a structural part of a vehicle; Space vehicles; Space vehicles, namely, rockets;Adjusting knobs for gun sights; Ammunition; Ammunition bags; Ammunition casings; Ammunition for firearms; Ammunition hoists; Ammunition magazines and component parts for ammunition magazines; Anti‐aircraft guns; Artillery guns; Automatic firearm ammunition belts; Automatic guns; Automatic pistols; Automatic revolvers; Automatic rifles; Bandoliers for holding cartridges or ammunition cases; Belts adapted for ammunition; Butt plates for pistols, rifles, and shotguns; Cannons; Cases for large size ammunition; Cases or shells for large size ammunition; Combination pistols and rifles; Component parts for guns; Component parts for pistols; Component parts for rifles; Field guns; Firearm attachments, namely, mounts for attaching gun sights to a firearm; Fortress guns; Gun and rifle cases; Gun barrels; Gun belts; Gun carriages; Gun cartridges; Gun cases; Gun chokes; Gun limbers; Gun locks; Gun mounts; Gun scabbards; Gun stocks; Guns; Hand gun accessories, namely, belt clips for securing a gun without the use of a holster; Handles for pistols; Handles for pistols and revolvers; Handles for revolvers; Heavy guns; Load bearing vests adapted primarily for holding guns, grenades and ammunition; Loading clips for pistols; Machine gun cartridges; Machine gun chargers; Machine gun turrets; Machine guns; Machine guns and parts thereof; Military rifles; Mobile gun mounts; Muzzle breaks that screw onto a rifle barrel; Muzzle‐loading firearms; Muzzle‐loading rifles; Naval guns; Noise suppressors for guns; Non‐telescopic gun sights for firearms; Pistol caps; Pistol cases; Pistol grips; Pistol holsters; Pistol pellets; Pistols; Pistols and parts thereof; Propelling pyrotechnic mixtures for ammunition and rocket engines; Protective lens covers for non‐telescopic gun sights. Recoilless guns; Revolvers; Revolvers and parts thereof; Rifle ammunition; Rifle barrels; Rifle cartridges; Rifle cases; Rifle covers; Rifle fore arms; Rifle fore ends; Rifle hand grips; Rifle hand guards; Rifle magazine clamps; Rifle mounts; Rifle rails; Rifle rings; Rifle scope rings; Rifle sheaths; Rifle slings; Rifle stocks; Rifle straps; Rifles; Rifles and parts thereof; Rocket launchers; Rockets; Shells for large size ammunition; Shields for gun carriages; Shooting accessories, namely, gun rests; Shotshell ammunition; Siege guns; Small arms ammunition; Submachine guns; Trench guns; Trigger guards for guns and rifles Muzzles; Non‐metal rocket launching platforms; Rocket launching platforms, not of metal
That might be good for some competitor to know. But I’m suspicious that they threw everything but the kitchen sink into that big paragraph of firearms goods. I honestly doubt that the aerospace arm of ATK is going to be selling muzzle-loading rifles or gun chokes. This smells like the lawyer is simply putting everything he could find into the application. The dangerous thing here is that the filing was made under oath that the applicant had a bona-fide intention to actually use this brand on each and every one of these goods in commerce. I doubt that the witness would hold up under cross examination.
A wiser strategy is to include only what you actually intend to use your trademark on. If they legitimately were going to sell ATK ORBITAL, INC.TM firearms, that would cover all the parts, cases, and other components they likely won’t be selling anyway.
And I usually advise against making your “INC.” part of your trademark. That’s the legal name of your company, not the brand your customers will recognize. People shop for a “FORD® Mustang®” not a Ford Motor Company, Inc. TM Mustang®. Or heaven forbid an “Acme Successor Operating Company LLC” product! This crops up when a client comes to me after years of selling firearms marked “Trailblazer Arms, Inc.” with the roll stamp on the receiver. Sometimes, the trademark examiner rejects the application because identifying the business isn’t the same as a trademark. I can usually nip this in the bud by advising my client to (before we file the application) add a label to their packaging that says “TrailblazerTM Arms”. This is what we submit as evidence of trademark use, and avoid the risk of rejection entirely.
And if you think all the good brands are taken, I have one client who just registered Trailblazer for a backpackable takedown rifle. It’s a great brand that tells the whole story in one word. Much better than “22TDR” for the 22 caliber Take Down Rifle! Which brings me to…
Sage filed EBR for rifles. I checked their website, (as the trademark examiner will probably do) and confirmed from their marketing that EBR stands for “Enhanced Battle Rifle.” Maybe the examiner will reject this one outright as descriptive, because an abbreviation of a descriptive term can still be descriptive. Or maybe she’ll be gentler, and send a rejection that asks: “Does the EBR have any meaning or significance relating to firearms?”
If they admit that EBR means “enhanced battle rifle”, they’ll likely be rejected. If they deny it then they’ll have a trademark that has essentially no value because it is unenforceable (if they tried to enforce it against one of my clients, this is the first thing I’d look for).
Not only is it boring to name your products with acronyms, and it misses the chance to distinguish them in the market, but it also risks creating brands that can’t be enforced, and nor add any value to your company. As a minimum, invest $10 in a six-pack of good beer for an end-of day “brandstorming” session with a couple of your most creative team members. You can surely do better than another TLA (Three-Letter Acronym).
Without passing judgment on whether they’re well-suited to the goods, or likely to be allowed, here are some new brands I like:
MONARCH –a strong positive name. PHAZZER – goofy and memorable. DREADNOUGHT – A great example of using an historic military term for a firearms brand. WAR ON SQUIRRELS – Hip and fun from stodgy Remington for air guns. WARHORSE FIREARMS – Good, but drop the “firearms” for the reasons discussed above. BEAST – Great brand idea, but I’d search to be sure it hasn’t been used (sorry RRA). RAPTOR – I didn’t search this good brand, but I’ll bet it’s already taken. DEVASTATOR – RRA has some great (but questionable) brand ideas, and if they end up registering 1/3 of them, they’ll be ahead of the acronym branders in creating real asset value.