Ok, everyone, lets all take a deep breath and calm down.
First off, my disclaimer, I am not going to comment on a particular legal scenario involving specific facts and I am specifically disclaiming that I am in any way entering into an attorney-client relationship with any person with respect to what I am posting.
First, it has been correctly explained that patents are issued for useful, non-obvious devices- basically an invention that can be used for a purpose. A trademark is registered to provide a mark that generally denotes the origin of a product, but can not be for a functional item- more on that later. But they are two entirely different things. A patent is a monopoly granted by the government to an inventor to exclude anyone else from making, selling, using a specific invention for a limited and nonrenewable amount of time (currently 20 years). Once that time frame is ended, anyone else can use that invention. During the patent term, the invention can be licensed to other people to use.
A trademark can be registered and used indefinitely, provided that the fees and paperwork are filed and the company continues to use the mark in commerce. The mark generally needs to be marked as such by using the or the ® symbols. Trademarks are used to show the origin of a product- what company it comes from. This is to prevent consumer confusion. Marks can be words, drawings, etc
Now, with the main purposes being to prevent consumer confusion, generally they can not be licensed out to totally unrelated company because that creates consumer confusion. Ok, but think about the fast food franchises- they license out the trademarked names and the trade dress out to franchisees but the parent company strictly controls almost all aspects of the business to assure equal quality. So that is an example of licensing.
However, generally you can not trademark a functional item, and here I will quote the Trademark Manual of Examination Procedures, 4th Ed., which anyone can read at the PTO website.
1202.02(a) Functionality
1202.02(a)(i) Statutory Basis for Functionality Refusal
Effective October 30, 1998, the Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069, amended the Trademark Act to expressly prohibit registration on either the Principal or Supplemental Register of matter that is functional:
Section 2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5), prohibits registration on the Principal Register of "matter that, as a whole, is functional."
Section 2(f) of the Act, 15 U.S.C. §1052(f), provides that matter that, as a whole, is functional may not be registered even on a showing that it has become distinctive.
Section 23(c) of the Act, 15 U.S.C. §1091(c), provides that a mark that, as a whole, is functional may not be registered on the Supplemental Register.
Section 14(3) of the Act, 15 U.S.C. §1064(3), lists functionality as a ground that can be raised in a cancellation proceeding more than five years after the date of registration.
Section 33(b)(8) of the Act, 15 U.S.C. §1115(b)(8), lists functionality as a statutory defense to infringement in a suit involving an incontestable registration.
1202.02(a)(ii) Purpose of Functionality Doctrine
The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law. As the Supreme Court explained, in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164, 34 USPQ2d 1161, 1163 (1995):
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).
In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others - thus encouraging advances in product design and manufacture. In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the Supreme Court reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness:
The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller.
Thus, even where the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons just stated. Id.
Now, there are several cases cited above that anyone can look at where companies in the past have tried and failed to register trademarks and trade dress based upon expired utility patents.
So, everyone just calm down, let the lawyers sort it out, and dont jump to judgments about any companys morals and ethics until everything is sorted out.
FYI- Spydercos patent on the hole is number 4,347,665 and the trademark serial number is 78620166 if anyone wants to look at them.
