By Ben Langlotz
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December 11, 2023
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Business, Firearms, Firearms Industry Advice, Intellectual Property Advice, Patent, Trademark
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0 Comments
SHOT Show Legal Prep Checklist
As we approach the SHOT Show, it’s important to get your legal ducks in a row, to be sure you aren’t losing valuable rights, or weakening the rights you already have. Time is short so action may be urgent, but the action needed may be simpler, faster, and cheaper than you think.
Pre-SHOT Patent Advice
Preserve your patent rights. The best NDA is a pending patent application. It lets you talk about (or sell) your invention without worrying that someone who hears you will file their own. You don’t need to file a formal patent application on every possible invention before the SHOT Show (although that’s often a smart idea for certain inventions). This is especially true as we celebrate the 10th anniversary of the “First-to-File” patent system is in effect.
For minimal cost, you can have us file a “Caveman Patent” (a.k.a. a provisional application for patent) that gets your foot in the door, and secures potential patent rights against those who might file a similar patent after you do.
The good news is that it’s fast and cheap. The bad news is that you get to do most of the work, but you probably already have most of the technical drawings that it requires.
We then review your submission and evaluate its suitability as a foundation for future legal protection, giving you feedback as needed (if we want another drawing section view or a paragraph explaining a feature). We then format and file.
It buys you a year to make the investment decision in a full patent application, and the low flat fee cost is credited to that application. So it’s “almost free”.
Here’s all it takes to prepare what I need to do a Caveman filing for you:
- Title
- Background (what closest technology it improves upon)
- Description (what it is, how it works, how it’s made)
- Drawing (at least a little sketch, but a pile of pdfs from your CAD system is great)
- Concept – optional (what makes it unique)
Better still, email us for a copy of our multi-page Provisional Drafting Guide that includes all the details you’ll want to know.
This is especially important when you’re promoting your new invention at an industry venue like the SHOT Show. Your competition and who knows else will know all about it on the first day. It’s possible that they’ll have a fast patent process that will let them steal the idea and file before you do. It’s even possible that they’re honestly working on something similar already, and seeing your new product might inspire then to file fast, perhaps with a few “improvements” you inspired.
That’s why filing something before you reveal your new product is so important.
The Killer Deadline
All of the above is about insurance against the risk that someone else takes action to file a competing patent application before you do (or publishes something on AR15.com and creates obviousness rejection prior art you could have avoided). It’s possible (probably likely) that they won’t. So if you blow it and skip that step, you may (or may not) dodge that bullet.
But there is one mistake you could make that will kill potential patent rights, even if you decide to invest in the process. If it’s more than a year after the invention was first offered for sale, it’s too late to file a patent application (provisional or non-provisional). You might actually invest in filing one, but it will have no legal value or enforceability.
So this killer issue isn’t about the upcoming SHOT Show, it’s about the long-past 2023 SHOT Show.
What new products did you introduce last January? Whether or not competitors are filing patent applications, you’re now coming up to the final, last-chance, no-extension, unforgiving deadline to file a patent application (provisional is OK but you should file you “best” patent application within one year to maximize legal quality) or let your invention be unprotected in the public domain.
It’s now or never (especially with my office’s pre-SHOT holiday crunch period upon us), so contact us immediately if you need advice about whether to pursue protection for last year’s new products.
The International Exception
Handouts and samples can mean international disaster. The United States may be generous about giving you a one-year grace period, but most other countries aren’t. If you hand out something
at the SHOT Show (or put it on your website), you instantly lose the chance to ever secure rights to your invention in other countries (you’re OK in the US). If you have a new product being released that might be important enough to justify protection in overseas markets, then you need advice SOON, well before the SHOT Show.
The Only Patent Rule You Really Need to Know
If you have new products coming out this year, last year, or any time in the future, and have any doubts about the appropriate strategy to protect them, call us, and we’ll advise how to secure your rights, avoid needless risk, and minimize and defer legal fees without jeopardizing your rights.
Trademarks
There’s one more critical issue that can sometimes be overlooked on the pre-SHOT Show rush: the new brand names for those new products.
In a way, trademarks are more forgiving than patents. Even if you have neglected to secure your brands, and have gotten lucky and avoided any conflicts, you can always secure them now. There’s no “one year or it’s too late” rule like with patents.
But introducing a new product brand name without doing it right can be a painful and expensive experience.
I’ve been attending the SHOT Show for decades, and have enjoyed seeing clients and making friends. A few years ago, I saw one old friend with a new company set up in a 20-foot booth, with a grand display banner showing his new company’s brand. My gut told me that something was wrong. I later searched the brand, and found out that my old pal (not a client) had picked a brand already owned by a major international firearms company. My years of conducting monthly searches of every trademark application filed in this industry has given me a pretty good sense for what’s out there, and my instinct was right.
My friend had clearly failed the most basic step of picking a brand name: Make sure it’s safe to use before you start using it. That means a quick email to your attorney, so they can conduct a trademark search. For my clients (including new ones making a first inquiry) the search can be done in a few days – or even hours or minutes when necessary. We can sometimes even do it on the phone while you wait. Even though I have staff that is qualified to conduct trademark searches, I enjoy doing it myself when I have time, because it’s a fun sort of treasure hunt for someone with a mind that works like mine. So, I’m likely to take a break from another project to see if your new brand idea is safe to use.
I enjoy giving good news (“all clear”) but also find satisfaction in sleuthing out a conflicting trademark, and helping my client to avoid expensive legal headaches down the road. I also value being able to give bad news early before its gets too painful.
Imagine the costs my friend incurred in legal fees to respond to correspondence from the prior trademark owner, and in new booth materials and wasted advertising dollars. I like to be sure my clients don’t waste that kind of money, and my regular clients don’t pay a penny extra for most trademark searches, which are included in the cost of registering them.
Trademark Usage
Use your trademarks properly. Make sure you aren’t undermining your own trademarks. Too many companies invest a fortune in catalogs and brochures that misuse their trademarks. They are unknowingly sabotaging the value of some of their most valuable business assets. They may be using the wrong TM or ® symbol, or they may be treating a trademark as if it’s a generic term, giving a powerful defense to future trademark infringers they want to stop. The quick solution is to have your materials reviewed before they are printed. We can look over a thick client catalog in less than an hour (and have been known to spend some pleasurable relaxation time browsing gun industry catalogs, just for our own pleasure).
How Trademark Registration Prevents Legal Headaches
Don’t let predators steal your new brands. It’s common for a new company to unveil a new product at the SHOT Show, even if they aren’t yet filling orders. They might not even be taking orders. The new product brand name is up for grabs if they haven’t taken action to register their trademark. ANYONE who sees a new brand for a product that hasn’t yet been sold can apply to register it, and be sitting in the driver’s seat. If you don’t want to wake up a few months later and find that your competitor or a predator has applied to register your new brand (and so you can’t use it after all) then YOU need to secure your rights before revealing the brand by applying to register it. If you are going to be unveiling a new product at the SHOT Show, please contact us to protect your new brand.
Domain Names
And don’t forget to grab all the related Internet domains for your new brands. We can often help you recover domains from the predators who registered domains related to your registered trademarks, but it’s much cheaper to grab them all yourself, and pay the $10 per year to keep them for yourself. This includes new product names (e.g. acmeannihilator.com” “johnsonmodel99.com”) as well as variants on your core brand (e.g. ”mckintoshrifles.com” “mckintosharms.com” “mckintoshfirearms.com.”) You might be happy with the domain that is your main one, but those other domains will attract web search traffic that could divert customers away from you if you don’t control them.
Conclusion
I’m always at the show, on the floor every hour for all four days. But if you really want to be prepared for SHOT, call me first to discuss your new products, innovations and brand names, as well as last year’s new products to consider the final chance to protect your inventions.
See you in Las Vegas!
