I don't understand the round hole trademark

[hardheart]

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.



Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

I do not understand how Spyderco was able to both patent and trademark the opening hole. It is certainly a mechanism for one hand opening of folding knives, so I can easily see it being a patentable device. What I do not understand is how this carried over into a trademark. I look simply at the term itself 'trade mark'. the hole is not a mark. You cannot simply put a hole in the handle, pocket clip, packaging, or even on the blade itself at some point other than an area near the pivot and still refer to it as the trademarked round opening hole. It has to be functional in placement, which means it's more than a design or symbol. Mr. Glesser speaks of the Benchmade butterfly or the Nike Swoosh. Those appear on t-shirts, shoes, hats, boxes, anywhere and everywhere. You can't do that with an opening hole, that appears one place, on the blade. Benchmade has a name, it also has a butterly. Microtech has a name and symbol, so does Buck, MOD, Kershaw, William Henry, Emerson, CRKT, etc., etc., etc. Spyderco has a name, a bug, AND the opening hole. I don't understand this. The hole was patented, to allow for the inventor to profit from his creation. Patents run out, they're supposed to. It prevents the monopolization of ideas, and encourages improvements to these inventions. Custom makers are allowed to use the Spyderco trademark, yet none of these makers claims to be selling a Spyderco. No one is trying to deceive the public. If I make shoes by hand, but put a swoosh on the side of them, what would my intentions be? Do you think it possible that I could send Pepsico a check every year for the right to bottle my own carbonated soft drink and put a red, white, and blue circular logo on it? No, of course not. The brand name and the trademarks are there to identify the products and the manufacturer/distributor. Why would Spyderco allow this trademark to be placed on a non Spyderco knife? Better yet, why would a custom maker trying to make a name for themself use someone else's trademark, especially if they could only do it on 50 pieces per year? Because it's a mechanism, not just a logo. They don't want a knife that looks like a Spyderco, they want a knife that has an opening hole instead of a stud, disk, nail nick, whatever. I would be interested to see any other examples of where a functional part of a device was trademarked, as this is something I do not understand.

Also, this talk of the Blackwood/BM 630 looking like a Vesuvius ripoff. It's a recurve blade, titanium framelock knife with a BM logo. I say it's a ripoff of a BM 750. Someone else may say a folding knife with a recurve blade is a Commander ripoff. Recurves are not trademarked.

 

[Gollnick]

Spyderco successfully argued that the round hole in the blade was broadly associated with their brand name. This wasn't hard to do since they had it under patent for 17 years. They licensed it a little bit, but not much. So, it became associated with them.

You can trademark any distinguishing characteristic of your product that is definable and which you can show is associated uniquely with your brand in your market. Harley Davidson tried to trademark the sound of a Harley, but they couldn't get it well enough defined. Owens Corning, on the other hand, has a trademark on the color pink when used for insulation materials. And 3M has one on red and black plaid. Perfume makers trademark their fregrances. AT+T has a trademark on that that tone peal that you hear before "Thank you for using AT+T." AOL has one on the distinctive "You've got mail" announcement. And United Airlines trademarked an entire piece of music (their variation on the Rhapsody in Blue).

You can trademark a word, a symbol, a shape, a fragrance, a sound, music, a color, maybe even a tactile texture. If a characteristic can be used to distinguish one brand from another, well that's the definition of trademark so you can trademark it.

 

[Joe Talmadge]

I think this will be a very interesting case. I admitedly don't know anything about trademark law. But my layman's understanding was that a trademark is not supposed to cover a functional feature, but a feature that's used to visually or otherwise identify a particular maker's product. Functional features are covered by patents, not trademarks, or so I thought. So I was surprised Spyderco could trademark the big round hole, because it really is functional, no other shaped hole works nearly as well. Spyderco is generous enough to let custom makers use the round hole, which I always thought was a wonderful gesture, but that also confirms the point that the round hole is functional -- if any other shaped hole worked, makers wouldn't need to ask Spyderco to use the Spyderco trademark.

I'm confused when people keep pointing out that the biggest hole on the Blackwood knife is used for opening, and therefore a violation of Spyderco's rights. I didn't think that was the case -- this is a functional issue, and the patent is expired. So this isn't really pertinent, is it?

Where I believe the question lies is, is the three-hole pattern a violation of Spyderco's trademark, because it contains within it Spyderco's trademark? Again, just taking a common-sense approach, I first figured that the Blackwood knife didn't look like a Spyderco to me, so it shouldn't be a trademark violation. On the other hand, if I made a sneaker and put three ever-decreasing swooshes on it, could I really claim I'm not violating Nike's trademark since there's three of them instead of just one? That last question now makes me suspect Sal is right, contrary to my previous postings.

In any case, nothing but idle speculation by someone who knows nothing, and who likes both Sal and Les. Negotiation or legal decisions will sort it out.


Joe

 

[kevtan]

Joe, If you put 3 decreasing swoosh on the side of the shoe and also label the shoe as Nite or Nife or something similar, then you got a clear case. But in this case the three decreasing holes and the trade mark on the blade is NOT intended to deceive and swindle the public. You look at the knife with the butterfly and you know that the knife is a Benchmade.

hardheart:
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

Look at the similarity of the coke and the pepsi.

 

[hardheart]

Originally posted by Gollnick
Spyderco successfully argued that the round hole in the blade was broadly associated with their brand name. This wasn't hard to do since they had it under patent for 17 years. They licensed it a little bit, but not much. So, it became associated with them.

You can trademark any distinguishing characteristic of your product that is definable and which you can show is associated uniquely with your brand in your market. Harley Davidson tried to trademark the sound of a Harley, but they couldn't get it well enough defined. Owens Corning, on the other hand, has a trademark on the color pink when used for insulation materials. And 3M has one on red and black plaid. Perfume makers trademark their fregrances. AT+T has a trademark on that that tone peal that you hear before "Thank you for using AT+T." AOL has one on the distinctive "You've got mail" announcement. And United Airlines trademarked an entire piece of music (their variation on the Rhapsody in Blue).

You can trademark a word, a symbol, a shape, a fragrance, a sound, music, a color, maybe even a tactile texture. If a characteristic can be used to distinguish one brand from another, well that's the definition of trademark so you can trademark it.

Yes, but I, and apparently Mr. Talmadge, are under the impression that the functional hole is different than colors, smells, patterns, sounds, etc. The patent issue is very interesting. That was my thought- 'Who isn't going to associate the hole with Spyderco, they had the patent on it?' Really, it almost seems that anyone could argue to move from a patent to a trademark for any visible component, thereby circumventing the time limit of a patent.

 

[calyth]

Their trademark appears on every single folding knive, the mark is simply a circular void on the blade, and used as an opening device. The trademark is used on the item just as the Nike swoosh would be on a t-shirt/shoes/whatever, or McD's Golden Arches on their signs, cups, wrappers, and doorways.
The trademark distinction allows you very quickly to tell a knockoff from the real thing. I have yet to seen a spyderco knockoff using the round hole.
As to the references to the blade looks very much like that of the vesuvius, look at some pictures that I try to show.

That's very rough work, and most definately porportions aren't exactly the same, but the general shape is quite similar. So before you get yourself tied in a knot trying to defend benchmade, look at what people are talking about. I'm not saying that Benchmade/Blackwood is at fault here. I suspect this is much rather like a coincidence, but I rather find your argument lacks reasoning.
From the actual Blackwood piece that it's based on, it looks less similar than the vesuvius

But from the BM version, either the perspective or the slight modification makes it looks similar. We need to get both knives on the same perspective to be conclusive.

 

[dePaul]

Here is Sal's answer when I asked him to explain the legal issue in this case at the Spydie forum:

I've been posting on the Spyderco forum and not the bladeforums general forum because I feel that I must answer to our customers. It is not my place to publicly argue the issues, but we are obligated to try to explain to our customers, what our position is.

A registered trademark requires much time, effort and expense. It must be proved to the Trademark commission that the mark truly is associated with the company. Surveys are required, experts are questioned, it is not so simple as just making the product.

When we see custom makers designs with our trademark, we generally contact them and inform them that it is a registered trademark and it is not legal to duplicate the mark in their commerical effort. We will license custom makers to use our mark (50 knives per year) to which most have agreed. We do this because we feel it is good for the custom knife industry.

I don't know how long Mr. Blackwood has been making and showing his custom folders, but I doubt that it is as long as the 23 years that we have been using our mark. We have not seen the design before in industry magazines through articles or ads or we would have followed up. We do not actively search for custom makers designs as we would production pieces.

IMO, putting a circle around the Nike "Swoosh", or making three "swooshes" does not constitute a new tradmark. When Kershaw/ Ken Onion were making their knives with three holes in decreasing sizes on the blade, they agreed to reduce the size of the largest hole to avoid brand confusion. Kershaw is to be commended for their Industry cooperation.

Of course there are also many cases where legal action is necessary to protect our marks, which we do.

When Spyderco designed a butterfly knife, we were very careful to avoid making anything that looked like any other company's designs. Industry cooperation.

When we found "loopholes" in existing patents (Axis, Rolling lock, etc.), we informed Lester & Mel, we shared that information with Bob Taylor, we didn't run out and copy their ideas because we could "get away with it".

Columbia River's "Kiss" design was blasted over a "loophole" in their patents and now look at the proliferation of what was an original design.

We lost our "Dyad" design to Smith & Wesson. We had three patents and a trademarked name, yet they found a "loophole" and had lotsa bucks and a cheap Chinese copy and they sucessfully and legally, IMO, "stole" our design. It happens. I would hope that one "Spyderhole" and two "loopholes" do not constitute a new trademark.

But we still in the end must defend our our marks

I can appreciate that Mr. Blackwood's design is a very attractive. Had we seen the design, we would have probably discussed production when we discussed trademarks. It appears to be a natural Spyderco design.

I can also appreciate the many comments saying that our mark is not our mark, primarily because they like the design or they like Benchmade. This type of loyalty is very good.

Please also consider that Spyderco was developing their round opening hole trademark back when Pacific Cutlery Corp (Benchmade) was developing their butterfly logo.

IMO, a round opening hole is probably more unique than using a butterfly logo to trademark the making of a butterfly knife, but is still a mark.

I'm sure that Benchmade would defend their butterfly logo if it was challenged. But Spyderco would have no reason to attack their mark, we're competitors, not enemies.

Though I'm sure the intent was well meaning, perhaps all of this could have been avoided it Benchmade's German distributor, Acma (also one of Spyderco's German disributors) had held off on publicly posting the pic until Benchmade had finalized and was ready to introduce the new design?

I hope that all of this works out well for everyone's benefit in the end.

sal
------------------------

~Paul~

 

[Alpha Knife Supply]

As to the references to the blade looks very much like that of the Vesuvius, look at some pictures that I try to show.

I can tell you from personal experience your pictures are way off.

That's very rough work, and most definitely proportions aren't exactly the same, but the general shape is quite similar.

Not even close. But I suppose you could say most knives have the same “general shape”.

I've held the new knife and I used to have a Vesuvius. The new blade is almost twice as wide. The new knife is a recurve. The new handle is almost twice as wide as the handle on the .Vesuvius. The Vesuvius is a spear point vs a drop point on the new knife.

There are other differences but the point has been made. I’d wait until the knife is released before making other comparisons.

 

[wolfmann601]

The only thing similar is that they both have an edge.

Beyond that, you are FISHING!!!

 

[fishbulb]

Originally posted by wolfmann601
The only thing similar is that they both have an edge.

Beyond that, you are FISHING!!!

Not true. They both have a handle, too.

Actually; I'm starting to think that the Sebenza is a ripoff of the Buck 110, as they clearly have the same general shape.

 

[Ken C.]

Just my 2 cents....

The Spyderco Spyder = Trademark

The Hole in the Blade = Patent

How in the hell can you trademark a hole? Patent it, yes. Trademark it? I can't see it. I can see patenting the hole and licensing it out to other knife companies for a fee. The SpyderHole is not something I consider their trademark, the Spyder is. If I see a knife with a hole in the blade for one-hand opening I don't see it as a rip off of Spyderco. I see a patented design that was licensed for use by that company.

Hell, Scagel was one of the first to put a hole in one of his folders, right?

 

[Ken C.]

Edited because I am a dumbass.

 

[shootist16]

This is interesting as well. I believe that ultimately, coming to a head will be a good thing. This issue needs to be cleared up.

In my research I found some interesting facts, that I believe could effect the case.

Here is the legal definition of a trademark:

trademark - a trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a certain entity or person. The trademark is protected for a period of 20 years, indefinitely renewable.

Now, check this out. I got it directly from the U.S. Code Title 15, Chapter 22

Sec. 1052. - Trademarks registrable on principal register; concurrent registration
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it -
(e)
Consists of a mark which
(5)
comprises any matter that, as a whole, is functional.


What is your interpretation of the above?

 

[Knife11]

I don't think that spyderco does or should have exclusive rights to the hole opening method and as long as the hole isn't the exact size with nothing else around it I don't see the problem.

The three holes doesn't make me think spyderco... if it were only one hole then I'd see the problem. As others have said the blade design and the size of this beast make it completly different.

This hole thing is sooo stupid (read-> bad pun)! I don't think you can trademark a functional thing...In Golnicks examples none of those things were functional. What spyderco is really doing is hindering the growth of the hole as an opening device...There might be many new veriations and designs based on the hole if spyderco wasn't hoging it.

Here's another angle... Since spydercos knives (espeacially in the begining) were mainly zytel with a blade... It would have been really easy for anyone to make a cheap charle version but just exclude the spyder in the zytel. would have been hard to tell the difference if not for the hole. If not for the hole spyderoc would have to have put there name on the blade like eveyone else.

Hmmmm!

 

[shootist16]

Think of the implications this case could have on the knife industry. If Spyderco were to lose this, then the door would be opened for other companies to use the hole as an opening feature. I don't think anyone at benchmade is trying to decieve people into thinking it is a Spyderco. I don't think anyone would argue that the hole is functional in nature, which could effect whether a trademark should have been issued in the first place.

I am not a huge fan of the legal system. I think it is often abused. But this is a case that I hope does go forward. I believe the issue needs legal clarification from the courts once and for all. It would be an interesting case to argue for sure.

 

[glockman99]

Originally posted by shootist16
...I am not a huge fan of the legal system. I think it is often abused. But this is a case that I hope does go forward. I believe the issue needs legal clarification from the courts once and for all. It would be an interesting case to argue for sure.

I can see it now, in a court of law...
Bailiff: Do you promise to tell the truth, the hole truth, and nothing but the truth, so help you Sal?..

 

[Gollnick]

How in the hell can you trademark a hole? Patent it, yes. Trademark it? I can't see it. I can see patenting the hole...

How can you trademark the color pink? But Owens Corning did. There's another company that has a trademark on the color gold. Owen's Corning's trademarks on the color pink only extends to their market, builing insulation material. You can make a pink knife with no problem. The company with the trademark on the color gold makes ironing boards, fancy ironing boards used in commercial laundries. Again, the trademark only applies to that specific market. Among other things, that company successfully argued that laundry workers are often illiterate and depend on color to recognize the company's superior products. A binder of academic books probably couldn't make that same arguement. So, what is and is not and can and can not be trademarked is situational. The Patents and Trademarks Office considers each case individually.

Oh, and it is the Patents and Trademarks Office, the PTO. The fact that both patents and trademarks are handled by the same agency should tell you that there's considerable overlap between them.

By the way, Spyderco is certainly not the first company to transition a patent into a trademark. It's not an uncommon practice.

You can trademark a fregrance. The fregrance of a perfume is both its function and its trademark. So, a functional element of a product can certainly also be trademarked. In this respect, there is overlap between patents and trademarks. The same aspect of a product certainly can be patented and trademarked at the same time.

There's actually a third kind of intellectual property protection in the US, Trade Secret. Among other things, trade secret can protect the chemical forumula of a product such as a perfume. So, a perfume can be protected all three ways at once.

The SpyderHole is not something I consider their trademark, the Spyder is.

A company may have more than one trademark.

And what is or is not a trademark is something that the company has to prove to the PTO. As Sal's reply explained, they consulted experts, they did market research, and they were able to convince the PTO that the hole was, in fact, associated with their company in their market.

Finally, trademarks can be legally challenged. Anyone who doesn't like Spyderco's trademark, who thinks it shouldn't have been granted, is welcome to mount a legal challenge to it. Bitching about it here on this forum doesn't do any good. Basically: Put up or shut up.

 

[CKE2]

Lets not forget that Sal invented the opening hole. A long time ago he took the time to patent/trademark his design. If BM or Mr. Blackwood would like to use that then they should pay. I think it is crap what BM has done here, I thought they were way more reputable than this. I will not ever buy another BM again. Just my thoughts. Take Care!!!

 

[Joe Talmadge]

Originally posted by shootist16
Now, check this out. I got it directly from the U.S. Code Title 15, Chapter 22

Sec. 1052. - Trademarks registrable on principal register; concurrent registration
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it -
(e)
Consists of a mark which
(5)
comprises any matter that, as a whole, is functional.


What is your interpretation of the above?

Okay, this is the crux of the matter, and exactly what I thought. Personally, I think the round hole is functional, which is why I've been confused as to how Spyderco could trademark it. Want to prove it to a judge? Hand him a bunch of drone knives with different shaped holes and ask him to open them all as quickly as he can, by using his thumb in the hole. Case closed, right?

As I said above, I've come to think that based on my probably-wrong layman's understanding, the Blackwood 3 holes could be in violation of Spyderco's trademark. But I also feel that the round hole is functional and easily prove-able as such, which could mean (based on my probably-wrong layman's interpretation of the statute above) that the trademark validity could be challenged.

Joe

 

[shootist16]

Here is some more food for thought guys:


15 USC 1115, Registration on principal register as evidence of exclusive right to use mark; defenses

(b) Incontestability; defenses. To the extent that the right to use the registered mark has become incontestable under section 15 [15 USC §1065], the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 15 [15 USC §1065], or in the renewal application filed under the provisions of section 9 [15 USC §1059] if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 32 [15 USC §1114], and shall be subject to the following defenses or defects:


(1)
That the registration or the incontestable right to use the mark was obtained fraudulently; or


(2)
That the mark has been abandoned by the registrant; or


(3)
That the registered mark is being used, by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or


(4)
That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or


(5)
That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been

continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 7(c) [15 USC §1057(c)], (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 12 of this Act [15 USC §1062(c)]: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or


(6)
That the mark whose use is charged as an infringement was registered and used prior to the registration under this Act or publication under subsection (c) of section 12 of this Act [15 USC §1062(c)] of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant's mark; or


(7)
That the mark has been or is being used to violate the antitrust laws of the United States; or


(8)
That the mark is functional; or


(9)
That equitable principles, including laches, estoppel, and acquiescence, are applicable.





here is a qoute from the International Trademark Association:

Functionality is presently both a cancellation ground for and a defense to charges of infringement of trademarks prior to incontestability.

**edited to bold subsection 8