Another issue in that case was whether the addition of SOCCER in the applied-for mark was sufficient to distinguish it from the registered marks. It was not.
The court said, “When one incorporates the entire arbitrary mark of another into a composite mark, . . . inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.â€Â
How was SOCCER word was descriptive of the applicant’s T-shirt goods? The applicant Copeland-Smith was a soccer coach. And he had been training soccer players under his mark BEAST MODE SOCCER, which was registered under another applciation for â€œcoaching services in the field of soccer; providing group coaching and learning forums in the field of soccer.â€Â
The overlapping elements, BEAST MODE, were strong and the SOCCER element was weak as descriptive. Therefore, the addition of SOCCER to BEAST MODE was not sufficient to distinguish it from BEAST MODE and avoid a likelihood of confusion.
When discovering a solution to a problem, it is not uncommon to think, “Why didn’t I think of this earlier?” The question arises with inventions in general: “Why didn’t someone invent this earlier?”
Jason Crawford attempts to answer that question for bicycles in an post titled, “Why did we wait so long for the bicycle?” He considers a number of possibilities, such as technology factors, design iteration, the quality of roads, competition from horses, and economic factors.
Crawford dates early references to human powered four wheel vehicles to the 1400s. He says it wasn’t until 1817 that that a two wheel ancestor to the modern bicycle was invented by Karl von Drais, which he called Laufmaschine, or “running machine. ” It had a wood frame, no peddles, and was powered by pushing off the grounds with one’s feet. Drais was an aristocrat with free time to tinker.
But the key advance over the Laufmaschine was the addition of peddles, which didn’t arrive for decades (maybe between 1839 and 1860).
And chains and gearing reportedly didn’t arrive until still later in the 1880s.
Crawford, considers whether the technology had not yet advanced sufficiently to allow the modern bicycle to become an adjacent possible. In other words, maybe “advanced metalworking was needed to make small, lightweight chains and gears of high and consistent quality, at an acceptable priceâ€”and that no other design, such as a belt or lever, would have worked instead.” Further, maybe inflatable (pneumatic) tires, which arrived around 1888, were important.
However, Crawford discounts the technology cause, at least somewhat, after considering other inventions, such as the cotton gin, and the flying shuttle, that took a long time to arrive and their prior invention didn’t appear to be limited by the state of technology.
Crawford concludes the need for economic surplus was one of the main contributors to the delay in the arrival of the bicycle. Nassim Talab has also noted this when he said, “Knowledge formation, even when theoretical, takes time, some boredom, and the freedom that comes from having another occupation.” Talab notes that many inventions originated from the English clergy, whom had extra time on their hands.
Crawford says, “it seems that there needs to be a certain level of surplus to support the culture-wide research and development effort that creates inventions.” He also notes that “Maybe GDP per capita just has to hit a certain point before people even have time, attention and energy to think about new inventions that arenâ€™t literally putting food on the table, a roof over your head, or a shirt on your back.”
This fits with Nicola Tesla’s explanation of the importance of having time to both develop ideas and let them incubate, when he said, “After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head.”
Inventing is probably facilitated by (1) sufficient technology advancement to support the invention and adoption of the invention (i.e. the invention and its adoption is within the adjacent possible) and (2) sufficient economic surplus so that persons have time for thinking and tinkering.
History provides numerous examples of what could be called “accidental” inventions– inventions that were discovered or developed for one problem or purpose while the inventor was working on something else. Examples include penicillin and the slinky, among reported others.
An article at the Smithsonian explains the origins of Play-Doh. The creation of the Play-Doh material was not an accident. Instead the product owner found a new use for an existing product.
The existing product was a compound originally used for wiping and removing soot from wallpaper. Demand was falling for this product as fuel sources for heating moved from dirtier coal to cleaner oil, gas, and electricity. Joseph McVicker’s company selling the wallpaper cleaner was struggling when his sister-in-law Kay Zufall, a nursery school teacher, found children liked molding the pliable compound into various shapes. Play-Doh as a childern’s product was born.
David Copeland-Smith filed a trademark application on BEAST MODE SOCCER for T-shirts, which the USPTO refused based on two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch. The registered marks covered the goods of “Menâ€™s, womenâ€™s and childrenâ€™s clothing, namely, shirts, sweatshirts; [and] headwear, namely hats, caps.”
Copeland-Smith argued the BEAST MODE mark was weak due to third party trademark registrations, applications, and uses of Beast Mode. The appeals court disagreed.
The seven third party registrations did not identify articles of closing, but rather pertained to “â€œcomputer software, dietary and nutritional supplements, beer, advertising and marketing consultancy, and entertainment in the nature of competitions in the field of fitness…â€ In other words, the goods/services of the third party registrations were not close enough to clothing to narrow Lynch’s rights in BEAST MODE.
Regarding uses, the Foreign websites identified by Copeland-Smith where of no probative value in determining likelihood of confusion in the US.
Further, many of the US websites with uses of Beast Mode were directed to goods and services other than clothing. The appeals court noted its prior decision where it said “T]he present analysis only involves goods like those being offered by the parties to the â€˜relevant public,â€™ while third-party use outside of that relevant market is meaningless.”
Therefore, third party use of marks should be in connection with goods/services like those offered by the parties to have a good chance a narrowing trademark rights.
Every part of this wrench is shown in broken lines except the U-shaped mouth working portion that is for engaging with another part, such as a nut, bold head, or the like. Therefore, the U-shaped part, shown in solid lines, is the only claimed part of the wrench.
I wonder whether the curvy design of the U-shaped part is functional. Design patents are to be directed to ornamental designs. So, if a design patent is directed to a design that is primarily functional, the patent can be invalid.
However, the standard for invalidating a design patent as directed to primarily functional matter is stringent. See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). The Federal Circuit Court of Appeals has said that “[w]hen there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.” It also said, “[I]f other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional.”
Here, I don’t know whether the curvy design of the U-shaped part imparts a functional benefit, or, if so, whether other designs could also achieve that function. However, it is interesting that the only claimed portion of this wrench is the working mouth portion that is for engaging with another part, such as a nut, bolt head, or the like.
Apple recently was granted US Design Patent D861,014 for an electronic device with graphical user interface. The patent is directed to the user interface for a smart watch. Below is figure 1.
Apple kept the time and date in solid lines claiming them rather than making the time and date in broken lines. Providing the date and time in broken lines would have made those elements unclaimed and would not have limited the claimed design.
However, including the date and time might not be much of a limitation in terms of the actual date and time displayed. First, any competitor device with the same vertical stripe pattern and time in the upper right location would show 10:09 twice a day. The old adage applies that a broken clock is correct twice a day. Further, it is likely that Wednesday will fall on the 23rd of the month every now and then.
Presenting the date and time in solid lines does limit the claimed design here. But maybe not greatly in terms of the actual time of 10:09 or the date of Wednesday the 23rd. Instead, the limitation probably is more in terms of the location and presentation of the date and time.
The original application that resulted in the above patent contained drawings showing the date and time in broken lines as well as solid lines. But, Apple amended the application to focus on the non-broken line version. There is a continuation patent application filed where Apple might be pursing the broken line version, which is shown below. If Apple obtains a patent on the broken line version below, it will have hedged its risk that the solid line version is too limiting.
SportFuel sued Pepico and The Gatorade Company asserting that Gatorade’s use of Sports Fuel infringed its SportFuel trademark. The Seventh Circuit found Gatorade’s use of Sports Fuel was not infringing because Gatorade’s use was a descriptive use.
It appears that Gatorade used Sports Fuel in “GATORADE THE SPORTS FUEL COMPANY.” The court’s opinion provided this image of Gatorade’s use of Sports Fuel.
In finding Gatorade’s use of Sports Fuel descriptive, the court said “It requires no imaginative leap to understand that a company selling ‘Sports Fuel’ is selling a variety of food products designed for athletes.”
Is “fuel” so directly and immediately descriptive of food? I’m not so sure. Without considering market use, I think that fuel could be suggestive rather that descriptive of food or drinks. Other factors such as the alleged third party use and the manner of use in the slogan probably played a larger roll in the court’s conclusion that the use was descriptive.
A recent study, reported in HBR, found that in certain circumstances, what the authors call “descriptive logos” positively influence brand evaluations, purchase intentions, and brand performance.
The study defines a descriptive logo as one that includes textual or visual design elements that communicate the type of product or service offered under the logo. For example, Burger King’s logo shown below is “descriptive” in that it contains burger bun where as the McDonald’s “M” logo is not.
The study found that as compared to non-descriptive logos, “descriptive” logos: (1) make brands appear more authentic in consumersâ€™ eyes, (2) more favorably impact consumersâ€™ evaluations of brands, and (3) more strongly increase consumersâ€™ willingness to buy from brands.
What the authors call “descriptive logos,” I think could be better labeled as suggestive logos because admitting that your (word) mark is descriptive is generally not good. Further, on the spectrum of trademark strength, it may be more appropriate to call these logos suggestive than descriptive, at least in some cases.
Descriptive/suggestive logos may not be appropriate when a company sells goods or services in unrelated fields, such that a descriptive/suggestive logo for one line of products would not be appropriate or make sense for the companies’ other unrelated lines.
A recent study, reported by HBR, found that companies with a CEO who was named as an inventor on at least one patent, were awarded more patents and those patents were more commercially valuable and scientifically influential than patents granted to companies led by non-inventors. Further the study found that the patents of inventor CEO led companies were more likely to be radical and breakthrough in nature.
The study found evidence that the CEO Inventor connection to quality innovation could be causal:
“We found that, relative to the control group of transitions, the output and impact of patents significantly declined after the departure of an Inventor CEO. This decline in innovation activity occurred mainly in the technology classes where the outgoing Inventor CEOs had their experience, again pointing to the direct influence of an Inventor CEO on their firmâ€™s innovation success.”
The authors of the study suggest that the better innovation results of Inventor CEO led companies “can be explained by an Inventor CEO’s superior ability to evaluate, select, and execute innovative investment projects related to their own hands-on experience.”
During the Revolutionary War, Washington’s army was positioned outside of Boston, which was occupied by the British. As explained in David McCullough’s book 1776, George Washington was facing troubles in terms of money, gun powder, guns, and troop readiness and numbers. Winter was coming, and some of the soldiers’ enlistments were ending, leaving the need to convince soldiers to reenlist or to be replaced by new recruits.
Washington, lamenting that he did not attack Boston earlier, at one point, recounted that if he had known what he was getting into he would not have accepted the command. He said:
“I have often thought how much happier I should have been if, instead of accepting of a command under such circumstances, I had taken my musket upon my shoulders and entered the ranks, or, if I could have justified the measure to posterity, and my own conscience, had retired to the back country, and lived in a wigwam.”
Ultimately, Washington secured Dorchester Heights which gave him a superior position over Boston and the British. This resulted in the British withdrawing from Boston.
Many undertakings do not rise to the level that war entails. However, doubts are common when facing issues not for seen at the beginning, no matter the endeavor.