By Ben Langlotz
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December 7, 2018
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Firearms, Firearms Industry Advice, Intellectual Property Advice, Patent, Trademark
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0 Comments
KNOWLEDGE IS POWER – HOW TO KEEP AN EYE OUT FOR INFRINGERS
When you own property rights like patents or trademarks, you have the right to stop infringers. But only if you know they exist. Often an infringer will be operating below your radar and will come to your attention only late in the game, when the infringer is entrenched and reluctant to back off.
How can we detect infringers as quickly as possible, so that their response is “Oops, sorry!” and not “So sue me!”? We call it “policing.” Or “watching.” And it doesn’t happen automatically.
Imagine you’re selling Redstone® brand pistols. You’re a well-established business, and you’re smart enough to have registered that trademark. All the smart businesses out there that might adopt a similar trademark will have their lawyers do a trademark search, and they’ll be warned off adopting an infringing trademark – your investment in the trademark registration will have paid off by avoiding legal conflicts you’ll never know about. BUT… there’s this gun shop in Redstone Colorado that’s been around for ten years: Redstone Armory. They never came to your attention because they never advertised nationally, and none of your customers encountered them to relay the confusion. A year ago, the shop’s owner partnered with a former special forces officer and they have started producing AR rifles under the Redstone Armory brand.
Redstone Armory has their ATF approval of their roll-stamp nomenclature and has all the paperwork in place to start selling. They have $50,000 in ads contracted in the NRA magazine, have invested tens of thousands in YouTube videos promoting their products, and have a 10×20 SHOT Show booth they’ll be rolling out for their debut next January. (Where I wouldn’t be surprised if a gregarious and good-looking patent and trademark attorney will introduce himself and welcome them to the industry – after the pre-show homework by his crack team has informed him that this exhibitor has not yet registered a single trademark and probably needs some help.)
Now, you’re also exhibiting at SHOT and you’re surprised at how many visitors to your booth complain about the wild goose chase trying to find you. They ask if you’re related to the Redstone booth, they mistakenly went to first. You quickly open the show guide, find Redstone Armory listed, and wonder what happened.
There’s not much you can do at the show, but the next week your attorney will be drafting a letter demanding that these poor folks abandon potentially hundreds of thousands of dollars in marketing investment. (I’ll never need to remind THEM about searching a trademark before you adopt it!)
In this story, they suffer mightily, and you win. But, if there’s any weakness to your position, they’ll be motivated to find and exploit it. It’s worth a fight for a chance to keep that big investment. Suppose you didn’t have a great trademark attorney advising you, and maybe you never even registered your trademark. You’d be relying on common law, which is fine. But, I often find companies, who think they’re trademark owners, aren’t using their trademarks properly. If it’s not on the product or package as it goes out the door, it’s in doubt. Suppose the only place you used Redstone was on a web page banner and in print ads, but it never appeared in your product enclosures? If you have a weak legal position, that entrenched infringer might decide to fight to keep their investment. I’ve seen it many times. (And this weak position is only hypothetical in this case of your registered trademark because we would have corrected it as one of the benefits of applying to register your trademark – your trademark use undergoes our “extreme vetting” before we file anything).
Instead, imagine this much happier scenario: A year before Redstone Armory makes all its major investments in the brand, you get an email from your trademark lawyer telling you that someone has just filed a trademark application that includes the word “redstone” for something relating to firearms. You authorize a quick letter, and the infringers grudgingly abandon their application and pick a new brand for their rifle line. Their lawyer advises them that local trademark use for the old gun shop doesn’t beat your rights, and that there’s no special right to use your actual geographic location. They surrender, and never learn about your hypothetically weak legal position if you weren’t using an unregistered trademark properly.
Policing Options
For trademarks, the gold standard level of policing is for us to conduct a regular trademark search for all the recent trademark applications that might represent an infringement of your rights. Granted, your own registration means that the trademark examiners will eventually (hopefully) reject conflicting applications, but that doesn’t stop those infringement applicants from continuing to infringe. Instead, we conduct our own regular searches, and take action (starting with an alert to you) when we see a conflict. We send a letter demanding that the trademark be dropped and prepare to oppose an application should the examiner approve it. An application is normally at an early stage, often before the use of the infringing trademark has begun, so we can often nip things in the bud before anyone’s entrenched.
As you can imagine, there is a modest annual charge for the policing subscription to receive infringement alerts, and our clients usually make this investment in their most valuable brands, and those most likely to face infringement. Normally this is the main company name that appears on all products, plus any especially notable brands.
There are a number of options that are alternatives or additions to this standard policing.
Option 1: Wait and see. This is the do-nothing option of the first story above. Wait until you notice a problem or until someone calls it to your attention. By the way, if anyone such as a customer calls a problem to your attention, possibly by complaining about your “crappy quality” when they actually bought your infringer’s product and were confused by the trademark infringement, be sure to keep records of the evidence. Evidence of “actual confusion” (as opposed to “likelihood of confusion that we otherwise allege”) is extremely powerful. Be sure your customer service team knows to capture all data involved when such confusion occurs. Wait and see is actually the correct approach for your minor trademarks that simply don’t justify the modest annual cost, because you could tolerate even a disadvantageous settlement or a weakening of your rights without significantly affecting the value of your business.
Option 2: Our Ear to the Ground. Because we specialize in the firearms industry, I personally review every trademark filed each month in the category that includes firearms. That’s only about 100 filings a month, so I can look carefully at each one and spot any that strike me as a potential concern to a client. Generalist trademark attorneys can’t possibly do this, because to look at ALL ~40,000 monthly trademark filings would be impossible. Even the instrumentation category that includes riflescope is an impractical 50 times the size of the tidy little firearms category. I’m fortunate to be able to have such a comprehensive view of the industry’s trademark filings at such a digestible scale, as are my clients that benefit from the service (at no charge unless they wish to take action against an infringer the search uncovered). They say you get what you pay for, and with over 1000 trademarks under my firm’s watchful eye, it’s always possible that my eyeball overlooks a potential infringement – probably not for Hornady or Brownells, but if I filed XQ10 for mounting rails eight years ago, I can’t guarantee that I’ll alert when someone files KQ10 for shoulder stocks. The irony is that memorable trademarks like Hornady and Brownells are the ones most likely also being formally watched with systematic searches.
Option 3: Pay more attention yourself. You don’t need to pay a lawyer to set up a Google Alert. This is simply a Google search you set up with Google to email you all the hits each day. I have a search for “Langlotz”, so I can see if there’s a story published anywhere on the internet about me, a family member, or anyone else with the rare name that originated near Heidelberg Germany. I also have an alert set for “gun patents”, so I can see stories that are probably about clients or their competitors. This way I can employ them in my own social media outreach and education. In our main example, you could set up an alert for “Redstone gun/firearm/arm”. This alert would let you know if a gun shop opens with that name, or if it’s announced in the local newspaper, well before a trademark is filed.
Option 4: International. You know who you are. If your trademark is worth registering internationally then it’s probably worth watching. We coordinate international search efforts with your US strategy to flag foreign trademark filings and other key indicators of an infringer.
Option 5: You aren’t paranoid, if they’re actually out to get you. We can implement a more extreme level of searching when concerns justify it. This can include searching all state trademark records, state business formation records, and more, as well as more formalized web searching. Like every option, it’s simply a matter of determining what the main concerns are, and what measures are justified to insure against the various risks. Every case is different, and we can discuss the costs and benefits of each option.
Patent Policing
Trademarks are easy to search because trademark applications are public, and it’s relatively simple to tell at a glance whether a word or phrase might infringe your trademark. Patents are much trickier. Even if you know about a competing product, it takes detailed analysis costing hundreds or even thousands of dollars to determine whether it infringes your patent. Also, many infringing products aren’t patented or even applied for, so searching the patent database won’t detect them. Even if the infringer is in the patent database, patent applications aren’t published until 18 months after filing, so you’re in the dark for a while even if it’s there.
There are several ways to improve the chance of detecting an infringer beyond waiting until it hits you in the nose. Most of them are common sense.
First, you can do the same type of Google search I advise inventors to conduct as their first-cut patentability search. I tell them: “Pretend you’re shopping for a product just like your invention. Be determined with your Google searching and try every way you can, to find the product for sale or being discussed or wished for in a discussion somewhere on the internet.” So, if your patent is for a hands-free magazine loader, then you’d set up a Google Alert for a suitable search string that would tell you any time that phrase appeared. You might include the word “patent” if you’re interested in that. This search will also tell you when you have new competition, whether or not they infringe.
Second, you (or we) can regularly search to see if your patent is cited in any other patent or published application. Every patent application includes all the “cited references” that are uncovered by the examiner in his search or submitted by the applicant as relevant to the application. If your patent is listed in another application, you’ll be curious why. In most instances it won’t reveal infringement, but it’s a little ego boost to think your patented invention is part of the state-of-the-art, and you just might get some good intel from the find. Just Google your patent number and the word “patent”, and you’ll find your Google patent listing. Click the “cited by” link, and you’ll get a list of all the patents that cite yours. Do that on a regular basis or have your web expert write a script for it, and you’ll be aware any time your patent is cited.
Third, you probably know who your competition is. We can set up a patent search (or provide a simple Google link you can reuse any time you want to run a search) for patents owned by each of your key competitors. There’s no reason you shouldn’t know the moment your competition has an application published or patent granted. It might even be information they aren’t announcing, so you’ll learn something before they want you to. It won’t necessarily lead to detecting infringement, but it still might be useful.
Finally, copyright infringements are detectable and policeable. If you have some text on your website that others are ripping off, then you can set up text searches for your own text. Run these occasionally or make a few key phrases part of a Google Alert search. To the surprise of many, you can also search an image on Google Images. You simply input your image that might be ripped off somewhere on the internet (or input a link), and Google will find all the instances of that image. I use this to detect fraudulent eBay auctions when I suspect a seller is using stock images.
For any kind of policing, we can create a plan for you. Helping you reduce the likelihood, and magnitude, of legal disputes and infringements that reduce the value of your company. Contact us for a consult to establish a policing plan or if you have any other questions.
SHOT Show
Time is short, but we can still help. Your proposed brands can be searched before they’re revealed, and your new products can be patent pending before they’re offered for sale.
