By Ben Langlotz | February 1, 2016 | Firearms, Intellectual Property Advice, Legal News, Opinion Pieces, Trademark | 0 Comments
The “V” is a friendly jab at a prominent SHOT Show exhibitor. Not a client of mine, Daniel Defense had their first SHOT Show about the same time as mine, and I’ve often expressed my admiration for their marketing prowess at the show. They sponsor the SHOT Show planner map on my iPad, they’ve sponsored hotel keycards, and even the tops of lunch tables.
So I’m unsurprised by creative and aggressive strategies coming from those smart guys. Still, I was surprised last year to see that they had applied to register federal trademark rights in the letter “V”. When conducting one of my monthly searches in which I personally review every trademark filing in the industry, I saw that they had applied to register V1, V2, V3, and V4.
That surprised me. After all, a little internet research confirmed my common sense assumption that those are common terms for “versions” of products, to reflect updates. As I write in my book, you can’t expect to protect a descriptive term as a trademark unless it means something more. I won’t joke about how I’m sipping on a V8, and my car has one under the hood, because trademarks apply only to related goods and services. So this is really just an issue of what is used in the firearms industry.
The real problem is when a firearms industry company wishes to follow the old, established, and clear practice of indicating succinctly that a new product is an updated version of an old one, especially if both are offered in the current catalog. Calling it the Model XYZ V1 and Model XYZ V2 was a popular way of addressing that need. But now, the DD lawyers will be sending you a nastygram and threating to sue you for using this common abbreviation to describe the version number.
Like last month’s story of a presumed Smith and Wesson exec who went after customers who were buying their products, modifying them, and selling them, this could be a story about how taking a too-aggressive legal stance might end up backfiring in the sphere of public opinion. Daniel Defense’s reputation as industry good guys could be squandered over a needlessly aggressive legal stance.
And I’m a fan of creative, sometimes aggressive legal strategies, when they can pay off. But what’s the big win for Danial Defense if they are able to stop everyone from using V1, V2, V3? More profits? I doubt it. Frankly, I’d advise their leadership and legal team to read my newsletter article last year on picking good brand names. Instead of faceless brands like V1, V2, I suggest they get creative and find ways to set themselves apart.
Meanwhile, imagine you were faced with a letter from Daniel Defense’s capable and professional legal team demanding that you drop your “V3” on your latest product, and offering that you’re OK if you call it “Ver.3” instead. Would you spend hundreds of thousands in legal fees knowing that you would likely prevail, or would you just “Let the Wookie win”? “Letting the Wookie Win” is a common sense approach for many companies, but it leads to a snowballing effect as an unjustified legal position gains strength not by its legitimacy but by the threat of ruinous litigation.
Thankfully, there are even bigger “Wookies” out there who are willing to stand up to the brash notion that one company can own V1, V2, V3, V4 as trademarks. And thankfully there is a legal process to oppose a trademark registration that you believe is unjustified. So while the trademark examiner allowed the Daniel Defense applications, Remington’s attorneys filed to oppose them. That holds up the applications until evidence can be gathered, and Remington can present evidence that these terms are descriptive, and have long been in use in the industry.
I hate to make predictions about legal outcomes, but I’m comfortable here saying that it’s unlikely Daniel Defense will get all these V-trademarks registered. They might still be sending you a letter demanding you cease and desist from using a V-mark even as part of a model number, but after the Trademark Trial and Appeal Board rules on their case, my gut sense says that it will be V-for-Victory for those who want to use old-time V-numbers for their products.
Many of my readers have attended more than 14 SHOT Shows — some a lot more — but the thing that made this SHOT Show truly special was the newbies. I’m taking about the first time exhibitors that the Show organizers brilliantly handled.
After years of hearing complaints from new companies who couldn’t get a booth at the SHOT Show, those voices must finally have been heard. The old exhibitors were still there, and booth sizes were as large as ever. But this time, a whole new floor was opened up for the next generation of firearms industry companies.
I called it “Virgin Alley”, up on the third floor by the press area and member lounge. What I presume was formerly a quiet area with little traffic (I wouldn’t know, as I never had reason to explore up there) was now one of the busiest spots in the show. Show planners made sure it wouldn’t be a ghost town by promoting the “Next” generation in every possible way.
The setup seemed to be a success: each exhibitor got a four-foot wide bar-height table for their wares, and stood in front with the attendees. The tables were end to end, giving the right crowd density to add energy. I heard that the initial plan was for only 2 feet per exhibitor, which would have been absurdly cramped. The show provided each booth with a neat 3×2 sign overhead printed with exhibitor artwork, and 100 new exhibitors enjoyed their first real expose, and a chance to be in line for a full booth in the future. The $2700 per booth fee may have made it the most expensive real estate of the show (I figure 16 square feet), but I trust that few if any regretted the investment of $1.17 per square inch of real estate.
They may have been first time exhibitors, but they certainly weren’t newbies. Many had been prior attendees, and other were companies run by industry stalwarts who left a prior position to start their own dreams.
The arrangement was a dream come true for a gregarious patent and trademark attorney who enjoys chatting up newcomers, and helping them get their legal ducks in a row. I had done my homework. My team had already analyzed the intellectual property (or lack thereof) of each exhibitor, and I was able to greet them with a copy of my book, and an offer to help them get their patents and trademarks squared away. I learned that the newbies are sophisticated about patents and trademarks, know what they need, but just need a reminder to take care of the mundane in the midst of their storm of product development and marketing activity.
The dozens of new friends I made were among the top highlights of all SHOT Shows. I hope the “first–time exhibitor” zone continues each year.
The worst thing was the flip-side of the best thing. I had spent nearly the whole first day up in the newbie zone, and was already running out of time to see all my clients and friends. I cringe at the important clients and dear friends I simply couldn’t visit.
To make amends for this, I’m happy to offer “Virtual SHOT Show Booth Visits” during the month of February. Even though I’m as swamped as anyone after the show, I’ll be happy to take calls from anyone who missed a booth visit, and provide a consultation at no charge about your legal questions for the year ahead – or simply to catch up on gossip.
I’ve heard over and over from clients and other friends that they always know I’ll stop by at SHOT because I do every year. I mean to keep that reputation. So pop me an email or give a call, and we can have the conversation we missed at SHOT. No charge.
My post-SHOT edition usually brags about the swag I picked up. This year was different, and the swag I handed out was surprisingly well-received. The idea swag is light, durable, TSA-legal, compact, frequently used, kept at hand, carried one’s brand and contact info, and is never discarded.
Last year when fishing through my desk drawer, I encountered a familiar item I’ve had on my desk since before I was an engineer more than 30 years ago. It had a neon stick on one end to keep my fellow engineers from swiping it from my pencil jar, and a company name I’ve never had reason to do business. But I realized that if I was going to keep it for over 30 years, I might have my friends in the firearms industry keeping my “other business card” at their desk for the next few decades.
Email me if you have a preference for the scale of next year’s edition. Decimal inches and hundredths for machinists?
I had one or two meetings with clients to discuss whether to turn their provisional patent applications into full patent applications. That’s a big investment, and it’s a disappointment when we just can’t find the “hook” for patentability. Sometimes, a great new product is all about good engineering and market choices as opposed to patentable innovation.
In one meeting, we ended up with a strategy to stretch out the provisional process as long as possible, just in case we changed our minds about patentability (or the market made it clear that even a long-shot was a good investment). I’ll detail it in a later issue, but the gist is this: You can keep patent pending status and preserve the right to invest in the full patent application for nearly two years after your product is first offered for sale. You can have provisional applications pending earlier, but the last-minute twist involves filing one more provisional a little less than a year after the product hits the market, and you have another year to decide about the full patent application.
Sure, it’s great to file your provisional before you release the product, so you can enjoy First-to-File status, but if you’re not worried about competing patent applications, then you can have two years after product release before having to decide about investing in a full patent application. Call me if you’d like to calendar a strategy for your protecting your innovation.
NDA? Don’t Forget to Be Sure You Own Your Invention!
Another conversation I had a few times was with friends worried that a vendor, contractor, or employee might steal an invention. They know to ask for an NDA (Non-disclosure Agreement). That’s smart and easy, though only gives you the right to sue someone who reveals your invention. The greater problem is that someone you hire to work on your invention think s they become an inventor, and own part of it! This may be an engineer, draftsman, prototype, or outside manufacturer. When you have a hot invention, everyone wants a piece of it. It’s great to have your team feel a sense of ownership, but you don’t want to give them the right to claim ownership for the little improvements and variations that occur as your invention is refined for manufacturing.
That’s why everyone who may be working on your invention should sign an agreement that says something to the effect of: “I’m paying you to do certain work on my invention, and to develop improvements and refinements. You agree that I will be the sole owner of these improvements and refinements, and you agree to help me protect my rights, including signing any documents to transfer any rights you may have as an inventor to me.” If they won’t sign that, then hire someone whose business plan doesn’t involve taking over your invention. Let me know if you’d like some help developing a contract for your particular circumstances.
Finally, welcome to all my new readers. Let me know if there are any questions or issues you’d like to see covered in future issues, and how I can help your business protect its most valuable assets.