By Ben Langlotz
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March 14, 2017
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Business, Firearms Industry Advice, Intellectual Property Advice, Legal News, Trademark
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0 Comments
Snooping Your Competitor’s Secrets
Not a Photo of Donald Trump
Every month, I personally search every trademark filing in the firearms industry. Keeping my ear to the ground like that helps me alert my trademark clients to cases of trademark infringement, usually at a very early stage. This helps us to nip conflicts in the bud, before the infringer becomes heavily invested and entrenched in their position.
Often the infringer or their lawyer is simply naive about the need to search trademarks before adopting them. We send a letter, and they have the painless opportunity to pick another non-infringing brand before making embarrassing public investments in a brand they will be forced to drop. It works out more smoothly and affordably to solve these problems actively when they’re small, instead of waiting until my client happens to notice the infringer’s investment in advertising or marketing. Spotting infringements earlier doesn’t change our legal position, but in borderline cases it makes it much easier for the accused infringer to surrender, instead of fighting harder to avoid the embarrassment and expense of a mid-stream brand change.
That Awkward Situation When Your Competitor’s Secrets are Public
Trademark filings are public, usually posted within a few days as the database is updated. Because smart companies will file trademark applications before announcing their plans, it means that the trademark database is often the first place news appears. Sometimes we will file an Intent-To-Use trademark application months or even more than a year before a product will be released. That lets us verify that the trademark will be registered without opposition, before making any public commitment or advertising investment. A company can build a “bullpen” of vetted, approved trademarks ready to use when new products are released, and they are able to be registered shortly after product debut.
Filing a trademark application before you announce the product is smart because it prevents someone else filing a competing application before your first sale, which legally steals your trademark rights. But your trademark filing might trigger a clever pirate to grab associated domain names, so be sure to register any domains associated with the trademark immediately upon filing. If Outback Arms applies to register Wallaby for rifles, someone might grab wallabyrifles.com and enjoy some traffic or a nice offer to buy the domain. The need to file before you announce means that smart companies end up revealing their plans first by trademark filings.
What your competitions revealed this month:
Did the 800 Pound Gorilla File a Weak Trademark?
Vista Outdoors and the giants with dozens of different companies sometimes have a big advantage in this field, because their filings don’t tell you much. BETTER COMES STANDARD is their proposed trademark for firearms, ammunition and accessories. But which of their many companies will this apply to? Which products? It’s even possible that they won’t end up using the brand on all the wide range of goods listed, and will delete all but solvents – camouflaging their solvent marketing strategy from competitors until much later.
The lesson is that if your plans are secret, there are still strategies we can use to protect your rights and your secrets. The jury is out on the Better Comes Standard brand. It doesn’t immediately make you go: “Aha” and takes a little thinking to understand that better (Quality?) comes standard on their products. It can be confused with an admonition like “You Better Watch Out”. “Better” isn’t a terribly persuasive word – it’s for comparing only with one other item, or for an incremental improvement. We’ll see how their marketing department makes this work.
Amateur Hour?
Sometimes, I can tell at a glance when an application was filed by someone other than an experienced trademark specialist. The “trademark” for this commemorative pistol is (deep breath)
THE POTUS 45 SWAMP PISTOL MADE IN THE USA HOLDS 15 BULLETS… ALL GUARANTEED BULLSEYES! 1. ISIS 2. TERRORISTS 3. ILLEGAL TRESPASSERS 4. ILLEGAL DRUG IMPORTERS 5. OBAMACARE 6. JOB KILLING REGULATIONS 7. HIGH TAXES 8. FAKE NEWS REPORTS 9. SWAMP RATS 10. SWAMP SNAKES 11. TREASON LEAKERS 12. TRAITORS TO THE CONSITTION 13. BAD TRADE AGREEMENTS 14. FEDERAL SPENDING 15. NATIONAL DEBT.
Hmmm…someone doesn’t know how to prepare a trademark application. The advertisement isn’t the trademark. My advice would be to file an application for the word POTUS as the key brand (so you can follow up with a 9 or a 40 and not have to pay for new trademark applications.) Maybe “Swamp Pistol” is a good brand and deserves its own application, too. We’d consider whether the existing trademarks Black Swamp Firearms and Swamp Fox Combat Gear were concerns, but they probably aren’t. In any event, this do-it-yourself trademark applicant wasted every penny of their filing fee, even as they thought they were saving on legal fees.
Good Brand, Questionable Strategy
MAESTRO FIREARMS is a brand I like, but I would have advised the Malaysian applicant to apply for MAESTRO alone as the brand, and certainly not as a logo with specific colors claimed. Trademarks should be as broad as possible, especially when it’s the company name that goes on every product. If the design is worth protecting, then it should be filed in addition to the main word trademark. I hope this company has a range of product names that play off the Maestro brand and the orchestral and classical music theme. That helps to reinforce the brand in the minds of customers.
Don’t Worry, Be Happy
HAPPY MAG (for mag pouches) is a trademark that makes me smile. That is probably the best sign that a trademark works and will provide a nice tailwind for your marketing by sticking in the heads of your customers. It suggests a magazine all happy and cozy inside a pouch, protected against all the things that can make mags unhappy. I can see a marketing campaign with a smiling cartoon magazine character. This is a great example of how going against the grain (contrary to a tough-guy militaristic serious precision tactical image) makes you stand out. Now, doesn’t that make you tempted to find a way to use “happy” in your product line?
A Logo Lesson
I presume that Butler Creek has a new logo. Why else would Bushnell apply on an intent-to-use basis for this trademark? I can guarantee without doing a search that they have the word registered, and simply updated their logo. That means they can’t renew the old one. This is simply routine business being done right.
They Can’t Do That! (Can They?)
1911, LLC has applied for NINETEEN ELEVEN for guns. “They can’t do that” you say? Well, you’d be right. Granted they can apply, but the trademark examiner will surely remind them that they have no right to stop others from describing their pistols as 1911s (or even spelling out the words). Last month, these guys filed for a logo that is nothing more than the shape of a 1911 pistol, and “1911” as a brand name for apparel. Their attorney has some actual trademark experience, so I must assume that the client insisted on a strategy that (I’d advise) had little chance of providing meaningful protection or enforceability in the firearms field. I roll my eyes more than a few times during my monthly firearms industry trademark search.
Has this Brand been in Continuous Use for 16 Years?
CHEYTACUSA has been applied for, alleging that the trademark has been in use since 2001. I remember seeing them at the 2002 SHOT Show (I introduced myself as “the firearms patent attorney” and they cheerfully reminded me that I was merely “A” firearms patent attorney). I’m not sure if I’ve seen much of them in the last 15 years, but it’s an important point that your trademarks must remain in continuous use for you to retain the rights. A long hiatus during which nothing is being marketed (as opposed to a dry spell in sales) can break trademark rights and let a newcomer step in and use a venerable but abandoned trademark. Maybe it’s a clever strategy (for someone who doesn’t mind making enemies) to apply to register for recognized trademarks that are not being used by companies who have just failed, and marketing those rights back to the prospective new owners. So, if you’re thinking about buying a failed company with a good brand, be sure that the brand stays in use, or file an intent-to-use trademark application to cover your backside in case the trademark is considered not to be in use.
Get Creative!
One applicant has applied for THUMB GRIP, QUICK PINS, and SAFE MAG. I can’t be sure what the products are, but when your trademarks are merely descriptive of the function then your applications will be rejected, and you won’t have enforceable rights. Some of these might get through, but I urge my clients to be more creative and to stand out from the crowd.
When Three Characters Can Make a Good Brand
My venerable stockmaker client McMillan USA filed (with our help) to protect their new trademark MC3. Normally,
I don’t think a Three-Letter Acronym(TLA)makes a good brand. But this one is different. MC3 will cover a new line of stocks that needed to be associated with the good will of the McMillan brand, but differentiated in the marketplace. It’s the third generation of the McMillan family in the business, and “McCubed” will be getting plenty of attention in the years ahead. Just like a certain fast food joint (but much higher quality) when you hear ‘Mc’ in the industry, you should think of one company first.
Good Brand
TORCHLOCK, not a bad brand for flashlights that attach to firearms. A bit of a tongue twister, and it relies on speaking ‘British,’ but it’s above average.
Is Someone Asking for Trouble?
The BLUE CAN (for dummy suppressors) trademark applicant may face some interesting communications from the owners of the BLUE GUN trademark. Do you think a court should rule that the BLUE GUN trademark should extend to other BLUE dummy/training items in the firearms field? Blue Rounds? Blue Rifles?
Catch the Wave
Daniel Defense has applied for WAVE for suppressors. I like that brand (unless it turns out to conflict with the interests of one of my clients) because:
- It’s different
- It suggests waveforms and acoustic research leading to improved designs (whether or not that’s true)
- It has a revolutionary aspect that can be used in ad copy, like “catch the wave” or “a new wave of suppressor technology”
Can We Talk?
MODERN GUN MAINTENANCE for tools and gun cleaning stuff? Really?! Sometimes, I think it’s a lawyer’s job to “talk a client off the ledge.” I call it “telling them their baby is ugly.” It’s like “Dude, your trademark stinks – go think up something decent and don’t waste your money on legal fees until you do because that trademark will never get registered and can’t be enforced.” I’m usually a bit more polite, and try to take a tactful approach of a professional adviser.
OK, So There’s a Trump Reference this Month, too
MAGA FIREARMS. OK, maybe I milked the Trump-topic click-bait phenomenon as long as I could with newsletter topics, but at some point it’s time to move on… just kidding. You never know. If they do it right it could be yuuuge! Their only mistake was not making MAGA the whole brand, so they could sell MAGA(™) firearms, MAGA(™) pistols, MAGA(™) quality, etc.
All for Now
That’s a sampling of the interesting filings last month, out of the 117 filed. It led to several notes to clients alerting them to potential problems that might need to be addressed. This will hopefully mean my clients have more secure and broader rights in what are often the most valuable assets of a business, which is part of how we do business.
If you’d like to discuss whether your trademarks are properly secured, drop a line and we can generate a trademark portfolio report for you at no charge to let you know if your assets are at risk.
The NRA show is coming soon, and if you’re planning any new product releases, be sure to have me search whether those new brand names are safe before you print up all the catalogs, brochures, and signs. And if you have new technology, time is getting short to file a provisional patent application before the show.
