New knife with spyderhole in sight?

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From what I understand, trademarks must be vigorously defended. Moreso than patents.
 
hm.. blade shape looks like a Vesuvius, but handle doesn't quite look like it.
I still missed the good ol' Vesuvius, and probably will end up getting the Centofante III
It looks like a nice piece, and I dunno, even though the largest of the 3 can be argued to infringe on a trademark, there's also room for them to argue another way.
If Sal sees that it should be settled, I think he much rather sit down with BM and Mr. Blackwood to talk things out more than anything else. I just don't think it's worth the hassle, and why let the lawyers earn money on this?
 
I've been posting on the Spyderco forum and not the 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
 
as usual ,Sal shwoed that its firm's motto is real.
INTEGRITY.

i feel this story embarassing (guess for who..).
we can go on all year long to make subtle distictions " ..but are 3 holes, the ole is bigger/smaller/whatever.." the fact ,and this is a real fact, is that the round opening hole is a trademark of spyderco since 23 years.
and exactly used as an opening device.
and the knife blade is too similar to a well known spydie..-family test: my wife passing looked at the screen saying " ..will not buy that new spyderco ? dont you ?! is the same of the one you bought this summer (Vesuvius).."

is possible that a well known maker and a well known factory cannot put out somethin really new and personal ? why mess with this kind of things ? no ideas ?

if you are asking yourself " but what the hell this guy is so irritated from this story ?" the answer is :

-i love spyderco designs and i fight to protect what i love, and since a long time i never met people honest and fair as they are -no , i'm not a friend of them, only a customer who got a GREAT service several times-

- as a graphic designer, i had a big problem -in a real smaller scale- for the same attitude of someone else.

- this "tendence" ,if not stopped, could bring A LOT of confusion in the market, and create problems to everybody, collectors and factories..." ..uhu, no ,this isnt a butterfly, is a flying insect.." or "..noo, the word is Emersson, you see the two S..."
p l e a s e.

for me this is an inutile, useless threat against Spyderco.and those people really doesnt deserve it.

regards.
 
This is an interesting debate for sure. I can see arguing it both ways. I have the utmost respect for Mr. Glesser. He has been a pioneer, an innovator, and a gentleman. I also believe that Benchmade has no ill intentions.

I believe the mark, in this case hole, goes beyond appearance and is indeed functional in nature. It is used to open the knife.

I got this 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 effect, if any, does this have on the trademark?
 
As I understand it, the patent on the hole as opener has expired, butt the round hole, as opener, is trademarked by Spyderco. A square or oblong or teardrop or even a butterfly shaped hole could then be used on the knife without infrigement. The round hole as opener is clearly, to me, an infringement on Spyderco's trademark.
 
More food for thought guys. Specifically look at subsection 8


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.
Click to expand...
 
Some more info to digest:


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.
Click to expand...

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.
Click to expand...

This one from The Intellectual Property Strategist, which may be seen here:

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



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?
 
An argument on the other side would be that the round hole does not limit competition because there are other alternatives.

Man all this legalese can give one a headache. All I know is that I would not want to be the one to decide this.
 
Seems the whole(pardon) basis of the trademark issued to Spyderco was the round hole used as opener. No trademark could/would be issued for a round hole anywhere on a knife used as a decorative element. Too many others have and do use holes as their signature marks on the blade and handle. Spyderco's unique claim is for the hole as an opening aid further defined and limited to round in shape. No prior use of any shape hole as opener can be claimed and excluding the round hole does not preclude or harm anyone else using a different shaped hole as an opening aid. The only harm would be to Spyderco in its hard won product identification with the round opening hole if its trademark was abridged simply by adding additional nonfunctional holes.

The only way I could see the "functional" arguement as applying would be if an additional hole was added to provide added function as in different handle grip(longer radius?) or left/right access or some other function other than opener. Maybe bottle opener? :)
 
Just wanted to thank Sal for sharing his opinion on this matter with his customers. Sal manages to remain a true gentleman in this increasingly competitive world, and he is indeed a class act - I'm sure it would have been much easier for him not to reply to this thread.
 
Originally posted by Coho
Seems the whole(pardon) basis of the trademark issued to Spyderco was the round hole used as opener. No trademark could/would be issued for a round hole anywhere on a knife used as a decorative element. Too many others have and do use holes as their signature marks on the blade and handle. Spyderco's unique claim is for the hole as an opening aid further defined and limited to round in shape. No prior use of any shape hole as opener can be claimed and excluding the round hole does not preclude or harm anyone else using a different shaped hole as an opening aid. The only harm would be to Spyderco in its hard won product identification with the round opening hole if its trademark was abridged simply by adding additional nonfunctional holes.

The only way I could see the "functional" arguement as applying would be if an additional hole was added to provide added function as in different handle grip(longer radius?) or left/right access or some other function other than opener. Maybe bottle opener? :)
Click to expand...

I think you may be missing out on the point of the functionality argument. The round opening hole is functional, any shape opening hole is functional. According to law, if it is functional, then the trademark can be lost. Spyderco can trademark a hole of any shape. They cannot trademark a functional hole, no matter the shape, if I am reading correctly. Obviously, Spyderco has already received the trademark, but I am curious as to how the functionality of the hole factors in.
 
Another question is how this might all apply when looked at other Blackwood designs....

Many of Neil's fixed blades were also decorated with the three-hole pattern, and in these instances, yes, the third hole was larger as well.

It's obvious that Blackwood-Benchmade set out on the 630 project to take after the Blackwood Skirmish custom folder instead of the Curr, which is Neil's thumb-stud opener.

Certainly, as a Spyderco fan, I can see where the opening hole can come under contestation on the Spyderco front, but as a Blackwood devotee, I definitely also see where the design aspect of the 630 -- as well as the original Skirmish -- take after some of Neil's custom fixed-blade designs (i.e. his various Ninjas, etc.), and which preserves the overall proportionality of the holes (in that the third one is slightly larger than the progression) as is evident on those designs.

Allen
aka DumboRAT
 
I think you may be missing out on the point of the functionality argument.
Click to expand...

I think your argument would have more validity IF the trademark had not been issued.
 
Sal, while I am glad that my post over in the General Forum brought this to your attention, if indeed it did, but I also regret opening this whole damned can of worms. I had no idea that it would turn into the nasty sort of thing that it has. Despite the denials over in the General Forum, there are guys over there who do seem to be trying to "lynch" Spyderco and you for reasons that escape me. I am really at a loss to understand that.
 
I guess it's kinda like Coca Cola trademarking the shape of their bottle. Of course it's functional, it's a bottle. all bottles are functional. Does the shape make it more funtional? Perhaps one could argue that, but they'd really have to have a good "reason" to want to spend the time and money to try to invalidate an existing trademark that had already been issued.

Pepsi just created their own bottle, their own identity, without trying to attack Coca Cola or copy their mark.

Jeep trademarked the shape of their automobile grill. I think that we would all argue that a automobile grill is funtional. Toyota created their own grill, their own identity, without attacking Jeep or trying to imitate their mark.

The functionality issue of our trademark has already been through the scrutiny of the PTO.

Why would anyone want to drag this up and argue it again? What is to be gained and by whom?

sal
 
I, for one, have no ill intentions toward Spyderco. Mr. Glesser did only what he felt was right for himself and his company. I am not questioning their pursuit of the trademark, just trying to understand why the gov't issued it for something that is functional. A round hole is not necessarily functional, you can put a hole in anything and it might not do anything other than reduce weight. An opening hole is obviously functional, it is used to open things.

The argument on whether or not Spyderco should have received the trademark is just one I am interested in to better my understanding of the process only. I don't feel a particular desire for every manufacturer to replace studs on all their models. The hole has it's place on knives of distinctive profiles, IMO, I'm pretty selective in what Spyders I buy because of the aesthetic.

I do feel that the Blackwood folder does not violate the trademark, though. It does include a round opening hole, but it does not look like a Spyderco Round Opening Hole. A couple examples of my reasoning. One from shoes, the other from our beloved knives. Adidas and K Swiss both put stripes on their shoes. Not of any particular shape or color, but the simple fact that a shoe or other piece of apparel has 3 spaced stripes of matching colors on it says it's an Adidas product. K Swiss puts 5 stripes on their shoes. Other than the 2 extra stripes, many styles from these 2 manufacturers look near identical, yet they coexist in the market. You can't make a K Swiss 5 stripe shoe without the Adidas 3 stripe appearing within, 5 is greater than 3, quite simply. Wenger and Victorinox- 2 other knife brands would have a hard time trying to mirror each other as closely as these 2. Their logos are also very similar. They both share the feature of an enclosed cross. Even though they both have the same cross, the surrounding design is different, and both brands are seemingly none the worse for it. Now, for the Blackwood holes. On a fixed blade, it is literally impossible to violate the Spyderco trademark. A fixed blade does not open, so there cannot be a Round Opening Hole. Transfer this 3 hole pattern to a folder, and a hole can be used to open the knife-especially since the placement even on the fixed version is in the proper area for thumbing (in the ricasso area, if that would be an acceptable description) One hole in this area is clearly a Spyderco opening hole, just like 3 stripes on a shoe is the Adidas mark. Two more holes in descending shape moving from right to left is the mark of Neil Blackwood, just as 2 more stripes turns a shoe from an Adidas to a K Swiss. Putting a cross on a swiss army knife does not make it a Wenger or Victorinox, the shape surrounding the cross does; and I feel that a round opening hole does not make a Spyderco if it is part of a group of holes of specific pattern and ratio.
 
I neither know nor care enough about high-priced athletic shoes to offer comment.

But the fact that both Wenger and Victorinox also sell their products as "Swiss Army" Knives or Watches, as the case may be, tells me that there is more to the question than their both using the cross in the shield logo. The Cross is the national emblem of Switzerland and my guess is that using it in a shield is some sort of a symbol of recognition by the Swiss military, sort of a "Milspec" approval, perhaps. I don't believe that the situation is analogous to BenchMade and Spyderco and the opening hole.

The fact that one look at the knife when I saw its picture in the General Forum screamed "Spyderco" to me is what triggered my first post and, thus, this whole series of posts. I cannot gainsay that initial reaction, no matter how much I may like certain BenchMade knives. (In this regard, please see my comments made in numerous postings about the 921 Switchback, the 940 Osborne and the 770 Gentleman's Pocketknife. The 921 is now equal in preference to my much-beloved Terzuola/Spyderco StarMate as a non-office carry.) I have no bones to pick with BenchMade, only that I saw the Blackwood folder and it immediately said "Spyderco" to me and that is why I posted as I did. It seems to me that this is pretty strong support for the position that Sal makes about the trademark issue.
 
Originally posted by Sal Glesser

Jeep trademarked the shape of their automobile grill. I think that we would all argue that a automobile grill is funtional. Toyota created their own grill, their own identity, without attacking Jeep or trying to imitate their mark.
Click to expand...

If the trademarked Jeep grill design lent some functional advantage over the Toyota design then their trademark should be considered invalid. Fortunately it does not.

The question is not whether the part itself is functional, it is whether the particular trademarked design is functionally superior to alternatives.

Rephrased in this light, the statement would read:
Jeep developed and patented a functionally superior grill that lent the company a competitive advantage. When this patent expired the grill design was then trademarked, thereby keeping that increased functionality from becoming public domain (and defeating the purpose of patents entirely). Toyota (and everybody else) was forced to make due with a functionally inferior grill because of Jeep's trademark, to the detriment of automobile buyers in general.

It seems as though the real question is whether a round hole is superior to any other shape of hole. Personally I don't prefer one over the other, but there appears to be a significant number of intelligent consumers who believe that it is a functionally superior design. A simple search reveals that there are many posts on the forums in which somebody makes a statement to the effect of "I find a round hole to work better than an oval hole."

Edited to fix a typo
 
I hope all this will end amicably. I like Spyderco and I like the new blackwood/benchmade the way it is, maybe a little smaller would be good.

Just food for thought, do you think then, that the SPOT will its holes (diminishing size) looks like the holes on Neil's fixed blades?

If only we could all step away from the legalities and look for a simple solution - Spyderco and Benchmade can come to an agreement of sorts (I'm sure it'll involve financial obligations, but better that than lawyers' fees right?) that'll acknowledge:

(1) that the round opening hole (which is contained within the 3 diminishing size holes) is and continues to be Spyderco's trademark
(2) the 3 diminishing size holes is Neil's design (so what if it isn't trademarked? we're men of honour right?)
(3) the production model is Neil/Benchmade's baby
(4) this is a one time model which is done with Spyderco's consent and by paying a nominal fee per knife - $1 per knife?

The way I see it, no one will think that the round opening hole is benchmade or neil's original idea/trademark, or, will confuse that knife for a spyderco, especially if you have literature that states clearly point (1) supplied with the knife. Spyderco gets the benefit of a branding exercise, and information on the trademarked round opening hole being made clear to the public. Benchmade makes the knife and thus gets profits. Neil keeps his very nice design and gets profits.

We get the knife the way it is and pay for it. The way I see it, we're the only ones out-of-pocket.:rolleyes: :confused:

Ok, let's think of another way of settling this issue and getting the knife into my pocket for free....

Sal, if you think that the above suggestion works for you, how about sending me a free Spyderco paramilitary and speeding up the ti lum tanto I've sent in for repairs hehehe ;)

Wow, the more I think of it, the more I'm in awe of how Spyderco has revolutionised the knife industry...kudos!
 
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