When a Trademark Mistake Can Land You in Prison

And My Idea for a “Get-Out-of-Jail-Free” Card

I tell people that I enjoy my patent and trademark work because at least no one can end up in jail. Then I saw a news story that made me realize otherwise.

It involved a Mesa, Arizona police shooting. Never mind whether the shooting was justified, but lawyers for the “victim” are raising the issue of an inscription on a part of the officer’s AR-15 duty rifle.

Those AR-15 dust covers seem to be a clean slate begging for expression in the minds of many gun owners, so customized versions are popular. I’ve seen plenty of my own clients’ trademarks infringed by entrepreneurs with a laser-marking machine put our trademarks on parts for Ebay sale. Not just the name brands, but also the valuable logos my clients might have secured, like the biohazard logo popular among zombie hunters.

In this case, the police officer’s right displayed the message “YOU’RE F***ED”. Which is unthinkably poor judgment to display on a duty rifle that may end up in evidence in the State’s case against an accused criminal. In every self-defense and concealed carry class, we are taught not to do anything that makes us seem like a bloodthirsty animal looking to shoot somebody. No “Flesh-Ripper™” ammo, no hot handloads, and for God’s sake, no badass messages on the item in the post-shooting evidence bag.

So besides the obvious admonition that law enforcements officers run bone stock guns with the only modifications approved (or preferably mandated) in writing by the brass, I have another thought:

Help your defense lawyer sell your case to the jury. My first idea was: “GOD BLESS JURORS”. You might come up with other slogans relating to the right to self-defense, or appealing to prosecutorial discretion or the sympathy of law enforcement officers. It’s the same idea as a chronic speeder sporting a pro-LEO bumper sticker.

For the entrepreneurial, if you come up with a slogan you think can go viral, you can protect it as a trademark for gun parts and control that market. Mere slogans aren’t necessarily protected as trademarks, but with some smart strategy you can also have your slogan function as a trademark and do double duty. This is why Nike’s “Just Do It” isn’t just seen on the front of shorts as simple decoration, but it’s also found as a trademark on the hangtags and labels of those shirts.

Finally, I have to salute a trademark of one of my oldest and best clients. I have registered over 100 Hornady trademarks, but the one that I carry with me every day is “Critical Defense.” I don’t know if their marketing department realized at the time, but this is a dream trademark in the eyes of a defense attorney responsible for defending a self-defense shooter. They should try their mightiest to get that ammo brand in front of the jury to show the intention of the accused, and the intended use.

This goes back to the idea that your brands should be picked for your customers to relate to, not simply to express yourself or your ego. As seen in the Mesa case, what feels good to display might end up hurting you in the end.

Get it in Writing!

The worst legal nightmares I see have nothing to do with patents or trademarks.

Scenario #1 occurs when my client has a great invention conceived by one of their awesome employees, except that the awesome employee isn’t their employee anymore, and doesn’t feel so awesome about his former employer. If the company has a written and signed employee agreement that passes muster then there’s no trouble getting the former employee to sign patent filing documents, including assignment of his patent rights to the old employer. But many small and start-up companies don’t have employee agreements in place. They rely on good relationships continuing forever, which they don’t always. I’m not an employment lawyer, but I can tell you the one thing to look for in a basic employment agreement:

The employee is hired to invent things, and anything the employee invents in conjunction with their employment is to be owned by the employer. The employee agrees to assist with signing any documents and providing any information needed to help the employer secure rights in the employee’s inventions, whether during or after the period of employment.

This also applies to copyrighted material. If you have an employee or outside contractor who is creating images, text, artwork, or CAD drawings, they might just own what you pay them to create unless your contract says that it’s a “work for hire” relationship.

Here’s a free sample of the clause from the contract I use to hire contractors – you may use this, but consult an employment lawyer to be sure it’s right for you:

Work for Hire. Contractor agrees that all items delivered by Contractor to Company and all fruits of Contractor’s work for Company conceived, made or developed by Contractor, whether alone or together with others, in connection with the Work, shall become, and shall be, the exclusive property of Company, including but not limited to all (i) inventions, concepts, discoveries, developments, improvements and innovations, whether or not patentable or reduced to practice; (ii) copyrightable works, such as designs, artwork, websites, computer programs, digitized or other computer files containing data, databases, software (source, object and executable code) and documentation (collectively, “Creative Work”). All of the rights and things described in the foregoing sentence, and all intellectual property, trade secret or other proprietary rights relating thereto (such as copyrights, copyright registrations, renewals, and applications, patents, patent applications, substitutions for and divisions, continuations, extensions, continuations in part, renewals, reissues, and reexaminations of patents and patent applications) shall be defined collectively as the “Work Product”. Contractor agrees that all Creative Work is work made for hire for Company under the copyright laws of the United States. Contractor hereby gives, transfers and assigns to Company all rights, title and interests, including all rights in the nature of patent, copyright, trade secret or other intellectual property or proprietary rights, now or hereafter arising in and to the Work Product not otherwise owned by Company as a work made for hire, and hereby assigns to Company or waives any so-called “moral rights” in the Work Product, to the extent permitted by law. Contractor agrees to execute and deliver, and to cause its employees to execute and deliver, such additional documents and to take such additional reasonable actions as Company deems necessary or convenient to perfect or evidence Company’s ownership of the Work Product or to enable Company to record this Agreement and/or secure rights of copyright and/or letters patent in its name, or otherwise to enforce its rights in the Work Product in any country throughout the world or otherwise carry out the provisions of this Section, provided that preparation of such additional documentations be at Company’s sole cost and expense.

The other potential landmine is when “partnerships” are formed. Everyone’s excited, and work begins on a handshake. Different people make different contributions, but who is the inventor? Who will own the patent? What are the rights and responsibilities of everyone?

I can tell you that I have occasionally shooed away clients with the warning: “You need a lawyer to form your business before you hire a patent lawyer – come back when you’re all set up.” If you don’t believe that the friendship your dream business is founded on could falter if circumstances change (either for the better or the worst), then imagine your partner is hit by a bus, and you’re now partner with his heirs. Without a written partnership agreement (or more likely a corporate entity you each own shares in) you may end up running a business with someone who you can’t agree with on anything. Get it in writing.

Rotary Turns Anti-Gun?

I was a long-time member of a Rotary club and served as club President for a year, so I was alarmed when my old club contacted me to get my take on Rotary International’s new anti-gun policies. I should say that Rotary is made up of about 30,000 different local clubs around the world that normally have a good deal of autonomy, and the organization respects national and regional cultural differences. Or at least it used to.

I’m personally acquainted with Rotary International Director Brad Howard, who posted the following new rules that were motivated by a “lack of clarity” in old policies (which were perfectly clear in that they had no restrictions). My comments are included below. The changes include:

Prohibiting Rotary clubs, districts and other Rotary Entities from transferring ownership of weapons.

• This seems irrelevant because only Federally licensed firearms dealers can transfer guns, which is who my club used when auctioning off a McMillan rifle, a Safety Harbor 50 caliber rifle, and a SIG pistol. I doubt any club has ever encouraged a legal private transfer, or undertaken to “transfer ownership” in any way. If this “clarification” is intended to prohibit a club from accepting a donated firearm, raffling it off, and having it transferred to a qualified winner by a licensed dealer, then it fails.

Prohibiting clubs, districts and Rotary Entities from conducting or sponsoring gun shows.

• I never heard of a Rotary club sponsoring a gun show. They seem to be solving a problem that doesn’t exist.

Prohibiting clubs, districts and Rotary Entities from accepting sponsorships from gun/weapon companies or stores, and preventing use of Rotary’s logo with the name or logo of a gun/weapon company or store.

• Very unclear. We can assume that “accepting sponsorships” means that you can’t include a local gun business on the banner with all the other event sponsors. It’s pretty crappy to say “we don’t want your help” to a local business that wants to support Rotary. As far as the Rotary logo, it has always been strict about this, but this seems to prohibit any banner with a rotary logo and a gun company logo, when other non-gun company logos would be welcome.

Prohibiting clubs, districts and Rotary Entities from using any visual that includes weapons.

• This is poultry-feces. Anti-free speech. It prevents suitable images for gun safety training, and self-defense training.

Prohibiting licensing by RI of guns or weapons.

• This means that gun makers can’t create a special edition gun with the Rotary logo in exchange for paying Rotary a license fee. Big deal.

It’s irritating to see a fine organization that one has contributed to over the years push some kind of internationalist political correctness that stands against the interests and cultures of many of its member clubs.

How to Position Your Product at the Top of the Market

I was reading a 1961 advertisement for a $1000 compact telescope (Questar – I restore and collect them) and smiled when it described anodizing as “sapphire plating.” That’s a nice touch to upgrade the image. What can you do to upscale your product images (without getting laughter from your sophisticated customers)?

Karmen laughs at how Nieman Marcus doesn’t have “free shipping”. They actually offer “complimentary delivery.”

Have you ever considered targeting upscale customers, and charging a premium price? It’s often more about how you market than what you market. I’m amazed at how few (if any – please remind me) gun companies do this.

Welcome New Clients

Speaking of fine optics, I’d like to call attention to two clients. I’m looking forward to helping Leupold protect their many optical innovations as they continue to lead as “America’s Optics Authority.”

Another new client is Grayguns. Led by Bruce Gray, a trigger innovator known for making great guns even better. I knew Bruce back before any of you knew either of us – probably about 20 years ago when he worked on the triggers of this newbie gun nut’s pistols. I was a Silicon Valley patent attorney and Bruce had a hobby business that got him some clients by word of mouth online. If I were now looking to buy a pistol I’d ask Bruce for advice, and if he didn’t think one he designed or improved was right for me he’d tell me.

By Ben Langlotz | April 13, 2017 | Business, Firearms, Firearms Industry Advice, How To, Trademark | 0 Comments