I don't understand the round hole trademark

Originally posted by 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!!!
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If you think spyderco is the first to use the hole you've lost it! :rolleyes:


And once again Golnick give examples that have nothing to do with function!!! With Perfume...the smell is the product...give me a break! :rolleyes:

I think everyone can agree that the hole should never have been made a trademark...well all except those that only love spyderco!
 
More research found this:

Some products, because of popularity, novelty, extensive advertising, or other causes acquire secondary meaning not only for an identifying feature, but also for a useful or “functional” feature. If trademark law protected these features, the original producer would be able to establish a monopoly in “useful” goods. The “functionality” doctrine protects consumers from such monopolies by allowing competitors to copy functional features of a product, even if features have a secondary meaning.
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You can read the entire article at
http://www.idea.piercelaw.edu/articles/40/40_4/16.Audet.pdf

the article is entitled

Functionality Unanimously Trumps Incontestability Afer Trademark Law Treaty Act ...

Another qoute:

Trade dress law is protected under U.S. trademark law if and to the extent that it functions as a trademark, that is to say it identifies the source of products or services and is non functional.
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This one from The Intellectual Property Strategist, which may be seen here:

http://www.akingump.com/docs/publication/549.pdf


You guys are lucky I'm not on the clock. ;)
 
In 1999 the Lanham Act was amended in two ways regarding functionality. First, functionality was added as a basis for canceling “incontestable” registrations. Second, the statute was amended to clarify that the plaintiff has the burden to prove that an unregistered trade dress is nonfunctional. The Lanham Act was clarified to provide that functional matter is not registrable.All registrations, including those that are incontestable or over five years old, can be cancelled on the ground that the mark is functional.

Here is what the U.S. Supreme Court said in TrafFix Devices, Inc. v. Marketing Displays, Inc

"A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device"

The court has also held that a patented product design is strongly presumed to be functional, and indicated that a design may be deemed functional even where alternative designs exist and there is no competitive need for the claimed feature.

On October 30, 1999, the Trademark Law Treaty Implementation Act (“TLTIA”) became effective in the United States. One of the things this act did was clarify The Lanham Act to provide that functional matter is not registrable. The law also amends Section 43(a) of the Lanham Act to clarify that the plaintiff has the burden to prove that an unregistered trade dress is nonfunctional.

Another Supreme Court Case was Qualitex Co. v. Jacobson Products Co. The Court held that the mere color of a product alone can be protected as a trademark, provided that it has acquired secondary meaning and is not functional

Most of this info can be seen here:

http://www.utexas.edu/law/journals/tiplj/volumes/vol9iss2/barber.html

This article is entitled "Recent Developments in Trademark Law: Cybersquatters Run for Cover, while Copycats Breathe a Sigh of Relief"

Look guys, we can go on and on about this, but I believe the evidence shows that function things cannot be trademarked. It seems that the fact that it was originally patented says that it is indeed functional. I believe the evidence also shows that even if the "mark" has gained secondary meaning, its functionality renders it inelligible for trademark protection.

Looking for more opinions here, am I reading this wrong?
 
Come on guys, if you want to lynch me, just lynch me. Why banter so many words? This bullsh*t sucks.

We didn't trademark a hole, we trademarked a "round" hole, because we'd been using it for almost 20 years. The PTO agreed that any shaped hole would be functional and with modern lazers, even the argument of cheaper mfg was gone.

Coke trademarked the shape of their bottle. It was a bottle. Functional, yes. But certainly no more functional than any other bottle. It was "their" shaped bottle, and they protected it from those that would try to "steal" it. Why would anyone try to "steal" it if all bottles were equally funtional?

We did what we believed to be honest, fair proper and legal in our IP. We still do.

Gerber used a bean shaped hole, SOG used a long oval, Outdoor Edge used a trapezoid, Timberline a diamond, Benchmade uses an oval, Blade Tech uses a triangular hole, Tarani uses a wide oval. All are functional.

Would the Blackwood design be less dynamic with three oval holes? CNC lasers and mills don't care about shape.

If Lester has come up with some clever way of piercing our trademark, then so be it. Why is it that "our" marks are in question? Perhaps there is more to this issue than the Blackwood design? I'm here talking to you. In the end, you will believe what you choose to.

sal
 
Not to change the subject, but has anyone trademarked/patented a specific style of thumbstud?

And, isn't this like Nike losing sleep over the design of their laces instead of the sneaker?

Thanks, that's all:D
 
Originally posted by Sal Glesser
Come on guys, if you want to lynch me, just lynch me. Why banter so many words? This bullsh*t sucks.

sal
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I hope you don't think I'm lynching you. I have an immeasurable amount of respect for you. I don't know the correct answer. I am just putting out info for people to make their own decision. I can see arguing both sides. I believe your point is very valid. If I've done anything to piss you off, I sincerely apologize.

Here are the arguments as I see them.

One the one hand the functionality doctrine governs trademark law by allowing for protection for a "shape, configuration, design, or color" only if it is non-functional.

On the other hand there are alternative shapes. The use of alternative shapes does not hinder competition.
 
We can discuss this here ad infinitum but guess what? It's not gonna be settled here.
Neil Blackwood is a friend of mine and did nothing more than design a knife.The problem, if there indeed is one, is between 2 production companies.
Personally I have to look at the track records after personally being into collecting knives since about 1975 and watching both companies.

Spyderco, Sal Glesser have always been an honorable.

Benchmade has not IMO, mentioning respectability and benchmade in the same sentence is a joke. Just 2 quick reasons: Ever wonder why so many makers that have had collaborations with them have stopped doing business with them? Sometimes very abruptly? Ask them. Ever try to make any kind of criticism on their discussion forum?(if they still have one). There's alot more but you get the idea.

If Spyderco has trademarked the round hole successfully and we dont agree with it, the problem is with the PTO, not Spyderco.
 
For me it's about respect.
A company applied for a trade mark and the government agreed that for it's time it was destinctive and exclusive enough to legally be considered a trademark.

Now there are alternatives, both in other form of "holes", studs, discs, nail nicks, waves, slots, or whatever, but forwhat ever reason some would rather go with a round hole. Now you can search to find loopholes or grey areas, but if you go out of your way to do that what you are really saying is "somebody has the legal rights to something I want, so I will go out of my way to get around their legal rights". It does not seem very respectful to me.

Now if Neil Blackwood had paid the nominal sum to use the round hole it wouldn't surprise me as it is well known that Spyderco do licence the hole to custom makers, and believe me it is only a nominal fee, but it is also widely known that Spyderco no longer licence the hole to other production companies.

There is a difference between finding a legal loophole and doing the right thing. I would hope that most people would at least try and do the right thing.
 
I find it hilarious that so many people are saying that you can't trademark a functional design. Spyderco have trademarked the hole. The trademark has been granted, whether you like it or not has nothing to do with this. Will the holes done the way they are be considered a Trademark infringement? I don't know, but the fact is, the Spyderco hole is a Trademark.
 
Originally posted by Sal Glesser
If Lester has come up with some clever way of piercing our trademark, then so be it. Why is it that "our" marks are in question? Perhaps there is more to this issue than the Blackwood design?
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Just one person's opinion, but you asked...
I think you bought into trouble patenting unoriginal concepts.
When the fuss was raised about Benchmade's 520 using bi-directional texturing, I brought up that Glock had been using it on their backstraps for several years before Spyderco ever put it on a knife. For that matter, checkering itself is bi-directional texturing. No telling how long it's been in use. But Spyderco patents it, and then talks about stolen ideas.
The idea of a hole being used as an opening device may have been original in the sense that Spyderco was the first company to use it on a knife, but I've seen the same concept illustrated in other applications, from machine shop equipment to inside porthole covers on a WWII battleship. Spyderco drills a hole in a piece of metal, patents the hole, and talks about stolen ideas.
I feel the same way about Emerson's blade catch. Emerson patents a blade catch, and suddenly noone else can put one on a folder, regardless of the fact they've been in use longer than any of us have been alive, without being accused of stealing Emerson's design. I'm sure there are plenty of others, but these are the ones we see discussed around here, periodically.
I think there's a thin line between protecting an idea, and taking advantage of the system, and that in the case of these examples, that line has been crossed.
 
Originally posted by Keith Montgomery
I find it hilarious that so many people are saying that you can't trademark a functional design. B]
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I'm not saying that you can't. All I did was qoute what the law says.

When was the round hole trademarked? According to the literature I have read the lanham act was modified in 1999 to add functionality as a basis for canceling registrations. That same year the Trademark Law Treaty Implementation Act was passed. I believe this had to do with getting many countries on the same page in regards to trademarks. It states that functional matter isn't registerable.

I would be curious to know if the trademark was granted prior to 1999.

Seems that there would be a loophole in patents if people were allowed to trrademark functional designs. Patents are set up to protect people with functional designs so they can benefit from their design. There is a time limit on that thgough. If they then turn around and trademark that functional design, they are in essence having a permanent patent. I believe that is why the courts and legislature have attempted to differentiate.

I just feel as though the issue isn't cut and dry. I believe it can be argued either way. I would not want to be the person deciding this.

Keep in mind that what is legal and what is right are sometimes the exact opposite.


Anyway, not trying to stir anything here, just trying to distribute information.
 
Originally posted by OwenM
Just one person's opinion, but you asked...
I think you bought into trouble patenting unoriginal concepts.
When the fuss was raised about Benchmade's 520 using bi-directional texturing, I brought up that Glock had been using it on their backstraps for several years before Spyderco ever put it on a knife.
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It's not the same at all.
When Benchmade released the knife with bi-directional texturing, they marked it specifically as a new and unique feature on a knife handle.
All Sal did at the time was to step up to the plate and state that they had been using it for years.
 
Thanks Sal, well worded as always. I feel bad you have to defend yourself against all this. It is ridiculous and I hope this all works out in favour of Spyderco. Sure I collects Spydies, used to collect BM's too. People in the know will know what they are buying. I remember Howard Viele used to use three small holes too, so was it Blackwood or Viele using three holes. Just curious, least Mr. Viele didn't use them to open his folders. As Mr. Montgomery said like it or not it is trademarked...find another way to open it up. Don't steal and idea.
 
Originally posted by Keith Montgomery
I find it hilarious that so many people are saying that you can't trademark a functional design. Spyderco have trademarked the hole. The trademark has been granted, whether you like it or not has nothing to do with this.
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Keith, it has everything to do with this. Dennis just posted something that says the trademark is cancellable if it's based on a functional feature. That is the biggest issue here. Your "like it or not" implies a lack of choice, but there is a big choice here as to whether to challenge the trademark, and it's a choice that could have big repercussions.

Joe
 
OwenM,

Based on your comments I think you have not been involved in intellectual properties. Please correct me if I am wrong.

You would feel different if you had a product in the marketplace and were trying to differentiate yourself and at the same time protect yourself from the competition. Believe me when I tell you the time and money involved is considerable. The laws are in place to allow the people who think of the idea time to use it to their advantage.

Your comments of Spyderco “talks about stolen ideas” is interesting. Do you have a reference for this? I remember when Sal mentioned the bidirectional grip. He did not say the idea was stolen. He did say he and Les could work it out. That is quite a bit different than how you represented his comments.

There is no thin line between protecting an idea, and taking advantage of the system. If you don’t use the laws to your advantage to stay in business, you will go out of business. Using the law to your advantage is honorable and ethical. Going outside the law is crossing the line.

If you don’t like the laws, try to change them.
 
Originally posted by Sal Glesser
Come on guys, if you want to lynch me, just lynch me. Why banter so many words? This bullsh*t sucks.


sal
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Sal, I don't think anyone is lynching you. In fact, I think we'd get agreement across the board that you did the right thing for Spyderco by trademarking the round hole. I don't think anyone has even remotely implied you've done anything less than honest; if they did, I'd be the first to slap them down. Furthermore, I think we'd get agreement that the round hole is identified with Spyderco. The question we're asking isn't aimed at you personally, I've got nothing but respect for you, but the trademarking of a functional attribute is worth discussing.

Actually, I'd go a step further. If there were a trademark jury made up of knife nuts, the verdict would probably be that the round hole works better than any other, and that is functional. But I have absolutely no trouble believing exactly what you said in your reply, that the PTO -- not made up of knife nuts, I gather -- felt that an elliptical hole works just as well as a round one.

If I were a betting man, I'd bet the 3 holes would be found to violate Spyderco's trademark. And I wouldn't bet on the trademark being invalidated until the odds reached at least 20 to 1, specifically because I think most non-knife-nuts won't find a functional difference between a round hole and any other shape.

Joe
 
Ken Onion invented the "assisted opening" with his Speed Safe design and has a patent on it. You all know who the other companies are that have jumped on his creation.
And, I used to think that Tom Mayo owned all the handles that had holes. :p
 
I think Niel Blackwood does great work, personally I know him for his fixed blades, and thought him making folders is relitivly new. I'd have thought Niel would have been pretty sencitive about copying any design parts concidering what he has gone through on this subject. Sal if you think you have a trademark issue with this protect it.
 
Chuck, you are correct, and I meant to finish out my thoughts, but didn't have time. I do realize that this can be a cutthroat business, like any other.
My post makes it look like I view Spyderco in a bad light over this, and I do not.
Yes, my personal opinion is that being able to patent a hole, blade catcher, etc. seems a little ridiculous. My take on that is not likely to change. That's just me.
On the other hand, as you suggest, if I were to come up with an original idea that took a proven concept, and made it useable in a new application, naturally I would be interested in getting credit/compensation for that idea. At the same time, I would be hesitant to claim credit for something that was not, in fact, unique.
Like I said...one guy's opinion. Personally I would never intentionally infringe on another person's patent/trademark/whatever. Whether I agree with how that item came to be patented or trademarked is a separate issue.
I also think there is a lot of sensitivity surrounding this issue because of knockoffs, but that there is a big difference between someone trying to make a product the best they can vs. scouring another manufacturers designs with the intention of copying them.
"Intent" is the key word there, and it's easy to jump to hastily drawn conclusions, and not make that distinction, IMO.
I don't expect it matters much, but the finger pointing gets on my nerves, and since opinions were asked for, I threw mine in.
 
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