WHEN TRADEMARK ATTORNEYS GO OVERBOARD
Just a mock-up, but getting real.
Finally, I can now reveal how a trademark attorney picks brands, and even goes a bit overboard to maximize the potential value of the venture. It’s all about my hex key tool invention concept I wrote about in August.
To recap, I used to get irritated with needing two Allen wrench sets and never knowing whether a socket head screw was metric or standard. Even with both sets in hand, I not only had to test each set to find the biggest tool that fit, but then had to assess which best fit was better. My forehead-slapping solution was to intermix both sets and arrange them by size, and I’m thrilled to announce that I’ve just learned that I persuaded the patent examiner and will be getting a patent. A good one that covers the concept nicely not just for hex wrenches (Did you know that Allen is a registered trademark – possibly of dubious validity?) but also for socket sets, hex bits, and any other tool sets that are sized in two different formats like Metric and Standard.
Is “Standard” the Right Standard?
Incidentally, one challenge for my marketing and packaging is how to define the “formats”. Actually, do people really think of Metric as a “format”? Or is it more of a “standard.” Which raises the bigger challenge with the other type: Is it “Fractional”? “Inch”? “Non-metric”? “US”? “S.A.E.”? I wrestled with these a few years ago in the first draft of the patent application, where I could toss them all in. The allowed patent claims use “standard”.
I wanted to avoid “Inch” as the counterpart of Metric for legal reasons I’ll explain below. “Fractional” was my choice for a while, but no one really uses that. S.A.E. is technically correct but not in common usage. “US” might be good for sales in regions in which metric is the true norm. So, I settled on “Standard” as the standard to intermix with Metric. As long as I’m using it together with Metric, everyone should get it (“Includes BOTH Standard and Metric, arranged by size.”) Unlike great branding decisions, I know this one will be a point of “feedback” (which I eagerly welcome from readers, as I’m always flexible to do better on the next product, or production batch.) And to cover myself, on the back of the product packaging, I make it clear: “…includes both Metric and Standard fractional inch (S.A.E.) hex keys…” so a confused but literate customer can get unconfused.
Also, every product and its brand need a good “generic”, which is simply the “thing” that follows the trademark. In this case, It’s a “hex key set” (folding, specifically). But when you see my trademark usage, you see that I employ a bunch of different generics following the marks, including “set”, “sequence”, “convenience”, “compactness”, and “concept”. Sometimes it seems hard to follow the trademark “rules” but there are ways to make them work without your copy sounding like a legal document. The most important lesson
with trademark use is to always treat the trademark like an adjective, and follow it with a noun.
Color as a Trademark?
I envision a third rack at Home Depot (generating patent royalties while I sleep), next to the Metric and Standard hex key racks. Those might normally be red or yellow (Torx being green), so I settled on blue. Right alongside Bosch, Makita, Channellock, and Park Tool (for bikes). I note that Park tool has several registered trademarks for blue for tools that I discovered by Googling “Blue Tool Trademarks”, and I was happy to see that they protect only the product shape in the blue color – nothing shaped like a hex wrench.
I checked that no other major hex wrench seller used the blue color as a brand. And I know my color. When setting colors in MS word, it’s the “light blue” basic color in the rainbow of 10 colors that opens when you right click on text and select font color. Red:0, Green:176, Blue:240. Which converts to Pantone 216. I hope that the product color is close enough – fingers crossed with a first order from an overseas supplier!
Why So Many Brands, and So Soon?
More than a year ago, I knew I’d need some brands. The trick is that I applied for more than I needed, because I was picking strong brands of the type that sometimes face rejection or dispute. The odds were pretty good for each of them, but there were no guarantees.
InchMetric. This is a decent brand with some weaknesses, but it’s justified for one important reason: I could get the InchMetric.com domain name for nothing. This brand was picked to be my “company name.” The one that is on the products I will produce and sell as the presumably-essential prerequisite to be taken seriously by major tool sellers who would license the patent and make and sell their own products, sending me my figurative “nickel” each time. It’s the biggest brand on the mock up picture on the cover, and is intended to be used on future products I’ll arrange production and sale of, with all products presumably having the patented “arranged by size regardless of standard” feature.
I like the InchMetric brand because it just feels like a solid, snappy tool brand (don’t tell Snap-On I said that!) It suggests the dual standard feature, even if it doesn’t suggest the special benefits of the arrangement by size. It’s enough to anchor things, and is easy to say, hear, and spell for entry into a website or Amazon search. The imagined mention on radio or TV makes it easy for listeners to find. If the Home Shopping Network offered it, they need to have a better deal than Amazon. Lesson: A mediocre brand that’s a solid domain name can still be valuable – the value might be more in the domain than the brand.
What’s not so great about this one is that the trademark examiner rejected it for being merely descriptive of tools having both metric and standard components. I disagree, because there are plenty of ways for competitors to offer and describe sets with both tool types (not arranged my patented way) without that exact combination of words. A Google search for ‘inch metric tool set’ finds that the phrase isn’t used by anyone on the first page. I’ll use this in future arguments or appeal.
The result is that the examiner did approve the application, and no trademark owners objected, but only for the “Supplemental Register”, which doesn’t carry the same presumptions of validity and enforceability as a normal registration. After a number of years, I’d apply again based on the evidence of reputation gained. I might apply sooner to fight the same battle if circumstances justify it. Incidentally, my dilemma about what to call the non-Metric tools avoided “inch” because that would bolster the examiner’s rejection when we submitted evidence.
An Heir, and a Spare?
For the brand name that signified the patented concept of both types arranged in sequence, I wanted a brand that all the big-box licensees would want to use, and would become as familiar as “Metric”. A patent license would include a trademark license of what is hoped to become a household name. Then in 20 years when the patent expires, there’s still something to license, even if only for a few pennies, because trademarks are forever – even as patents expire.
The main point is that if you have a feature that’s valuable enough to justify the investment in patent protection, you probably ought to brand the feature.
So, as I worked on how the brand the concept, my ideas drifted to the musical, with the tools being like black and white keys arranged by pitch on the piano keyboard. Even as I type this, the connection between piano key and hex key jumps out as an opportunity – but one I passed on as “chromatic” might not quite be in tune with tool buyers. That’s a great principle of branding: look for connections that interconnect seemingly unrelated concepts embodied by your product. “Hex keys arranged like piano keys” might be a lame starting point, but it’s a starting point. (Actually, it’s growing on me potentially as the product progresses from the more serious tool users to a broader householder market – maybe a special Chromatic™ edition with black and white wrenches and piano key and musical motifs would work in a future year for sales in museum and musical specialty catalogs, but not for now. And probably not for your customers.)
The “Concept” Brand
I picked two brands, neither of which was a sure thing, and both of which had minor doubts. I wanted a backup in the event of rejection or a dispute, and wasn’t even sure which one was better.
Integrated. The tools aren’t segregated by type, they’re… integrated. Now we’re talking “ebony and ivory” again, but recalling old political disputes about bussing kids to achieve a racial objective. But I liked this brand the best because it felt like a solid one that could be imagined on packaging alongside the S.A.E. and Metric products, and with any tool maker’s own branding.
Frustratingly, the trademark examiner didn’t like this one, and is stubbornly sticking to a legal error. They say that this is confusingly similar to “Steiner Integrated Supply”, which is registered for something pertaining to tools. That’s enough of an error because their mark doesn’t give them the right to that one word. But when you learn that Steiner got their registration only by disclaiming “integrated”, you see the strength of our appeal. Disclaiming means: “we have no intention of limiting anyone from using this term, which we are using admittedly descriptively.” So, I think I have a good chance on appeal when a couple of senior examiners will look at the case.
Hybrid. Meanwhile, my second choice may have become my first. In a recent conversation with a professional helping on the project, I found that “Hybrid” flowed off the lips better. Two syllables instead of four. I always liked how it suggests a synergistic blending whether in horticulture or advanced motor vehicle technology – all leading to a superior result. There’s something more nimble and convenient about it, too. Best of both worlds.
This one also faced a rejection based on a registration of the same brand for saw blades, but we found that the registrant had not been using their trademark properly, and had questionable rights. These could have justified our applying to cancel their registration, but instead of that “stick” they preferred the “carrot” of our agreeing to cheerfully coexist and not expand into competing goods, in exchange for their written consent to our registration. That one is now approved and awaiting our first use to finalize the registration.
The Kitchen Sink?
It might have gotten a little silly, but when I was making up the packaging, I ended up with some more slogans.
Packaging is a platform for future brands.
These haven’t yet been applied for, and any reader who wishes might beat me either by applying before I apply or by selling product before I do. But I’ll take the risk to make the point: you can have as many brands as you wish.
Always the Right Size is a slogan that is a real benefit of the product. I violated the rule about having a noun following, but this felt tolerable. Grab One Set is another slogan that conveys another benefit. If it catches on or gets used in advertising, this will be good to have established use of, if not yet a registration. A Tool Box In Your Pocket is a shameless (but non-infringing) rip-off of the old slogan for the new iPod: “A Thousand Songs In Your Pocket.” This borders on a speculative asset to offer to a competitor of Leatherman someday. But all I have to do is keep using it and I own the rights.
Duplicate-Free is actually a brand that turns an arguable disadvantage into a product benefit. Especially for the first folding tool, eliminating the 2mm and 4mm sizes means we can include one or two more at the large end. The standard fractional alternatives are 99.2% of the size, and within a fraction of a thousandth, so essentially not a different size. I know I should be careful not to introduce too many innovations and generate confusion, but this is an option that the sequential Hybrid™ concept enables, and most users won’t even be aware of the concept. For normal professional L wrench sets in the usual plastic block, I’ll probably leave in the metric wrenches, and offer a jumbo product of the larger sizes to go with the more normal household sizes.
Production Progress
After August’s newsletter about this project, my friend Dan Goetz at my client Warne Scope Mounts tipped me off to a supplier I’ve now placed an order with. It’s actually Warne’s Range Tool on the cover, photoshopped to look like my product. Theirs has different tools to handle all their scope ring and mount customer’s’ needs, including screwdrivers, pin pushers, and Torx tools. They and I both are searching for domestic manufactures (even at a substantial but realistic premium – please contact me if you have suggestions), and what’s best about this for mine is that it’s simply an assembly of off-the-shelf parts arranged in my (soon-to-be) patented sequence.
I’ll share now as an insider offer to my friends who read this, if you think you should be offering a tool like this to your customers (either with or without my patented concept or brands – just send me an email and I’ll get you connected).
Meanwhile, I’ll keep you updated as things progress and lessons are learned, and invite you to let me know if there are any topics you’d like to see covered in future issues.
