Benchmade steals the spyderhole

[digitalrebelttu]

Fair enough. I'll google it and see what I can find. Thanks for the advice. Anything else.

Go to this link- http://tess2.uspto.gov/tmdb/tmep/1200.htm


This is the Trademark Manual of Examination Procedure, chapter 1200, Read section 1202.02 about functionality. It has the current statutory and case law regarding this area.

The legal profession is about 2 things, knowing (or being able to research) what the current "law" is and applying it to specific fact patterns. I've seen the same half dozen or so people posting on multiple forums about this with widely varying accuracy. The TMEP is the current state of the law so we will have that part down once anyone interested reads that. Then the problem becomes applying that. We simply do not know all the facts here, so that is a problem, but the discussion will be much better informed if the "law" is understood.

 

[ghostrider]

I appreciate the help as looking things up and wading through them can be both frustrating and time consuming.

 

[Rat Finkenstein]

This argument is stupid.

-The hole is a registered trademark.

-until Spyderco weighs in on the matter, everything said about this issue is pure speculation.

-also, Spyderco is not the only knife company using a hole as a trademark.

 

[partridge]

1202.02(a)(v)(C) Ease or Economy of Manufacture in Functionality Determinations

As noted in TMEP §1202.02(a)(iii)(A) , a product feature is functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982). Therefore, a showing that a design results from a comparatively simple or inexpensive method of manufacture will support a finding that the design is functional.

hmmmm

Sounds like the hole might be functional.

 

[orthogonal1]

Yeah, read the whole specification, look at all the drawings, read all the claims, and see if you can find a copy of the prosecution (to see how the "depression" was interpreted - if any clarity was required).

Oh yeah, "Be Happy".

 

[digitalrebelttu]

hmmmm

Sounds like the hole might be functional.

The judge that I clerked for made a point to pound into my head to read the WHOLE thing before drawing a conclusion. Read all the way down through burdens of proof, the effect that a utility patent has, the effect of advertising, etc... Then check the doctrine of equivalents and what the claims are in the patent, check the Spyderco website, etc...

I know that you haven't done all that in 10 minutes.

 

[Boats]

What??? You mean the Pontiac trademark is still valid, even though General Motors doesn't use it on all their products???

Clever, but beside the point. That Spyderco's alleged trademark only appears on their folding knives strongly suggests that a functional feature, properly protectable only under patent law, and not trademark law, is what is being "protected."

 

[digitalrebelttu]

Clever, but beside the point. That Spyderco's alleged trademark only appears on their folding knives strongly suggests that a functional feature, properly protectable only under patent law, and not trademark law, is what is being "protected."

While I may agree with you about the functional feature, your reasoning in getting there is flawed. A TM doesn't need to be on every product and the fact that it is on some products but not others does not really have any bearing on being functional. The link I provided discusses the functionality case law.

 

[Boats]

While I may agree with you about the functional feature, your reasoning in getting there is flawed. A TM doesn't need to be on every product and the fact that it is on some products but not others does not really have any bearing on being functional. The link I provided discusses the functionality case law.

I wouldn't say flawed so much as hasty and incomplete. One of the relevant queries into whether a trademark is distinctive enough to defeat a claim of functionality is the extent to which the questioned trademark is used as trade dress on other products, containers, etcetera of the holder. Aside from recently appearing on the handles of some butterfly knives, the hole has been distinctly absent aside from being a useful feature on all of their folding knives.

 

[digitalrebelttu]

I wouldn't say flawed so much as hasty and incomplete. One of the relevant queries into whether a trademark is distinctive enough to defeat a claim of functionality is the extent to which the questioned trademark is used as trade dress on other products, containers, etcetera of the holder. Aside from recently appearing on the handles of some butterfly knives, the hole has been distinctly absent aside from being a useful feature on all of their folding knives.

The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal Register or the Supplemental Register - regardless of evidence showing that the proposed mark has acquired distinctiveness. TrafFix, 532 U.S. at 29, 58 USPQ2d at 1006. See also Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002); In re Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).

TMEP 1202.02(a)(iii)(A) Functionality

 

[Rat Finkenstein]

What are the few people trying to negate the legitimacy of Spyderco's trademark (at least in their own minds) - hoping to accomplish? Are they playing the devils advocate, or just being obtuse?

 

[Boats]

The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal Register or the Supplemental Register - regardless of evidence showing that the proposed mark has acquired distinctiveness. TrafFix, 532 U.S. at 29, 58 USPQ2d at 1006. See also Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002); In re Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).

TMEP 1202.02(a)(iii)(A) Functionality

Thanks. That is black letter for the concept I was grasping at, and failing to articulate.

Somehow, the hole got trademarked. I suspect that whomever approved it didn't have much of a clue about the functionality of the hole or it would never have been granted a trademark in the first place.

Isn't it true that regardless of the possibility of other designs for holes in blades that could achieve the end that the Spyderhole does in opening a folder, that since the round, bevel-less hole is the easiest and cheapest one to make, that such is another of the hallmarks of functionality, and also should bar a trademark?

 

[digitalrebelttu]

Thanks. That is black letter for the concept I was grasping at, and failing to articulate.

Somehow, the hole got trademarked. I suspect that whomever approved it didn't have much of a clue about the functionality of the hole or it would never have been granted a trademark in the first place.

Isn't it true that regardless of the possibility of other designs for holes in blades that could achieve the end that the Spyderhole does in opening a folder, that since the round, bevel-less hole is the easiest and cheapest one to make, that such is another of the hallmarks of functionality, and also should bar a trademark?

1202.02(a)(v)(B) Availability of Alternative Designs in Functionality Determinations
An applicant attempting to rebut a prima facie case of functionality will often submit evidence of alternative designs to demonstrate that there is no "competitive need" in the industry for the applicant's particular product design. See TMEP §1202.02(a)(iii)(A).

However, in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), the Supreme Court clearly indicated that if the record shows that a design is essential to the use or purpose of a product, or if it affects the cost or quality of the product, it is unnecessary to consider whether there is a competitive need for the product feature. The Court explained:

[W]e have said "in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Expanding upon the meaning of this phrase, we have observed that a functional feature is one the "exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage." The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is "whether the particular product configuration is a competitive necessity." . . . This was incorrect as a comprehensive definition. As explained in Qualitex, supra, and Inwood, supra, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device . . . Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.

* * *

There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI's product; it is the reason the device works. Other designs need not be attempted (emphasis added).

TrafFix, 58 USPQ2d at 1006-1007 (citations and additional internal quotations omitted).

Thus, where the evidence clearly establishes the utilitarian nature of the trade dress at issue in view of a utility patent and/or advertising statements and facts showing a positive effect on the cost or quality of manufacture, it is unnecessary to consider whether alternative designs are available. See Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) discussing the Supreme Court's decision in TrafFix ("once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.").

Evidence of the availability of alternative designs may be helpful where the record is otherwise unclear regarding the utilitarian functionality of the design at issue. Id. Accordingly, examining attorneys may continue to request information about alternative designs in the initial Office action, i.e., inquire whether alternative designs are available for the feature embodied in the proposed mark, and whether the alternatives are more costly to produce. See TMEP §1212.02(a)(v).

In In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001), the Board found that the applicant had not shown that there were alternative guitar shapes that could produce the same sound as applicant's configuration. The Board noted that the record contained an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant's configuration, stating that the shape of the guitar produces a better sound.

In order to be probative, the alternative design evidence must pertain to the same category of goods as the applicant's goods. See, e.g., In re Zippo Mfg. Co., 50 USPQ2d 1852, 1854 (TTAB 1999); In re EBSCO Industries Inc., 41 USPQ2d 1917, 1919 (TTAB 1997).

1202.02(a)(v)(C) Ease or Economy of Manufacture in Functionality Determinations
As noted in TMEP §1202.02(a)(iii)(A) , a product feature is functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982). Therefore, a showing that a design results from a comparatively simple or inexpensive method of manufacture will support a finding that the design is functional.

In most cases, there is little or no evidence pertaining to this factor. However, the examining attorney should still ask the applicant for information as to whether the subject design makes the product simpler or less costly to manufacture, since evidence on this issue weighs strongly in favor of a finding of functionality. See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); In re Virshup, 42 USPQ2d 1403 (TTAB 1997). Statements pertaining to the cost or ease of manufacture may sometimes also be found in informational or advertising materials submitted by the applicant. See M-5 Steel Mfg., Inc. v. O'Hagin's Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant's design results in reduced costs of installation found to be evidence of functionality of applicant's configurations of metal ventilating ducts and vents for tile or concrete roofs).

While evidence showing that the product feature results from a comparatively simple or inexpensive method of manufacture supports a finding that the design is functional, the opposite is not necessarily the case - i.e., assertions by the applicant that its design is more expensive or more difficult to make will not establish that the configuration is not functional.




Yes, you could argue that, but I do not think that it is the best argument that could be made here.

 

[Boats]

What are the few people trying to negate the legitimacy of Spyderco's trademark (at least in their own minds) - hoping to accomplish? Are they playing the devils advocate, or just being obtuse?

Why does it bother you so? No one here is going to, IRL, invalidate anything. However, IP has rules.

The flammatory title of this thread is what has me into it. Benchmade hasn't been proven to have stolen anything, yet the title sits there unmodified through scores of posts.

Such "theft" begs the question of whether that which has been allegedly "stolen" still has any legitimate intrinsic value under the law.

 

[Boats]

Yes, you could argue that, but I do not think that it is the best argument that could be made here.

Well then make it already. I, for one, am curious.

 

[timjmayer]

this post is bull...i agree with boats and said so like 6 pages ago...

if i posted spyderco steals something...i would be labled a troll...

the original post claimed benchmade stole...

i say lets prove it,,,you can't because no one claims they did anything..

the original post is crap and was made to stir the pot,,i have seem the same darn posts for years..

it should be changed or deleted..

if it was the other way around,,,the post would have been long ago locked and changed,,but some people can't accept that benchmade is a good company also,,,

it always has to be spyderco is beter than benchmade crud..

they both have nice products,,,

in business if someone says I stole something they would have to prove it,,or i would sue them for slander,,,

hope the troll gets sued

 

[ghostrider]

Why does it bother you so? No one here is going to, IRL, invalidate anything. However, IP has rules.

The flammatory title of this thread is what has me into it. Benchmade hasn't been proven to have stolen anything, yet the title sits there unmodified through scores of posts.

Such "theft" begs the question of whether that which has been allegedly "stolen" still has any legitimate intrinsic value under the law.

I would agree with that Boats. Since the anouncment by BM I think the title is inappropriate suposition formed as an accusation. I could understand spuring speculation in a thread aksing people opinions of if it's true or not, but an outright accusation of theft on this issue seems wrong to me.

 

[digitalrebelttu]

Well then make it already. I, for one, am curious.

Patience, my friend. If you click on my screen name, you will see some posts that I made in the Knife Patent thread which explains why I will not be very specific. So, I will do some guiding on the law and you may draw your own conclusions.

§14 (15 U.S.C. §1064). Cancellation
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905:

(1) Within five years from the date of the registration of the mark under this Act.

(2) Within five years from the date of publication under section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.

(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for a registration under this Act, or contrary to similar prohibitory provisions of such said prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 12 of this Act.

(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:

Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this Act, and the prescribed fee shall not be required.

Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 Stat. 320; Nov. 8, 1984, 98 Stat. 3335; Nov. 16, 1988, 102 Stat. 3940; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat. 218.)

§15 (15 U.S.C. §1065). Incontestability of right to use mark
Except on a ground for which application to cancel may be filed at anytime under paragraphs (3) and (5) of section 14 of this Act, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this Act of such registered mark, the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable: Provided, That—

(1) there has been no final decision adverse to registrant’s claim of ownership of such mark for such goods or services, or to registrant’s right to register the same or to keep the same on the register; and

(2) there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and

(3) an affidavit is filed with the Director within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and the other matters specified in paragraphs (1) and (2) of this section; and

(4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.

Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this Act shall apply to a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905, upon the filing of the required affidavit with the Director within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 12 of this Act.

The Director shall notify any registrant who files the above-prescribed affidavit of the filing thereof.

(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583.)
http://www.uspto.gov/web/offices/tac/tmlaw2.html#_Toc52344297


Now, who has looked up the doctrine of equivalents?

 

[Boats]

Is the doctine of equivalents a doctine of patent law? If so, how does it interface with trademark law?

 

[bladeprince]

The "innocent until proven guilty" concept does not apply in the minds of many people until they are accused of something, then they argue for its application.

Regards