Friday, November 14, 2008

Of Trademarks and Bling-Blings

My mail yesterday contained a catalogue from an upscale retailer, featuring very expensive jewelry, eye glass frames, and other fashion accessories. I was reviewing the catalogue with the TV set playing in the background, turned to the nightly news. The news spoke of another 100,000 + American workers who lost their jobs during October.

Trademarks of several very well known merchandisers were prominently featured in the catalogue. Each trademark appeared on a product adjacent to an extremely high price tag.

The nightly news explained that about one million American jobs have been lost so far this year. I personally know lawyers who are losing their legal jobs.

The prominent display of trademarks in the catalogue adjacent to the extremely high prices immediatley created a shock in light of the ongoing economic news. Just as quickly, I wondered how the perceived value of the prominently displayed trademarks adjacent to the extremely high prices would be viewed by the readers of the catalogue. Would they be off put as I was? Would they react negatively to future sightings of these well known brands in other venues?

If the purpose of a trademark is to act as a source identifier, so as to sum up in one convenient symbol a specific message to a consumer, then negative consumer reaction to these bling-bling marks may well prove, once again, that trademarks do work. They are powerful. Hence, be careful of the message, direct or subtle, on which they are used.

~ Mike Ratoza

Thursday, November 13, 2008

A Proposal For Protection Of Useful Design

Isn’t design interesting? It is incorporated into everything we wear, ride in, work in, live in, watch, look through, look into, look over, smell, latch onto, grasp, sip from, dine in, hold up our pants with, wear under our pants, wear over our pants, walk on, walk by, catch a fly ball with, and a few things more.

Design can be simple, it can be complex, it can be subtle, and it can be blunt. Design can be so intertwined with the use and function of a product as to be functional and protectable as an invention. Or, it can be so intertwined with the use and function of a product as to be non-functional and protectable as a copyright; unless it is a source identifier, in which case it is protectable as a trademark. It can be a part of an empty bottle or a filled bottle. It can be an element of a mini-bike or a Harley growl. It can be physically nonexistent as color, overpowering as sexually stimulating scent, or overwhelming and sturdy as a building. It can be playful, hidden, mysterious, interesting, and confounding.

The many aspects of design are, separately or jointly, protecable by several distinct elements of law. Just as design can be confusing in its many iterations and elements, the law can be confounding in its multi-layered approach to protecting design [note, I am referring solely to U.S. IP law, the topic of this blog]. Patent law protects the design of a product and package provided that the design is new, inventive, non-obvious, and unpublished more than a year prior to application. Copyright law protects the design of a product and package provided the design is not a part of the product function or, if it is, the design is conceptually separable from the function, notwithstanding when the design was first published. Trademark law protects the design of a product and package whether or not the design is useful, functional, inventive, obvious, or published more than a year, so long as the design signals to the consumer the source, origin, affiliation, or characteristics of the product, and has been so used for at least five years (or has otherwise acquired “secondary meaning”).

So many rules. So much design. Can these rules dovetail into a more comprehensive and adoptive approach to protect design? I believe so. Let me suggest one possibility.

First, there is the recognition that design is important for its own purposes. A car without design (e.g., Yugo) or a car with poor design (e.g., Edsel) is not the same as a car with great design (e.g., a screaming black Porche Carrera). It’s not just the car’s transportation or mechanical function that causes a consumer to make a purchase of one model over another. It’s not just the car’s transportation or mechanical function that influences consumer demand and establishes value. It’s the design. The DeLorian my have had mechanical faults, but it had great design.

Second, there should be recognition that the subtlety of patent design to protect inventiveness, of trademark design to protect source, and of copyright design to protect creativity may no longer be practically meaningful. Indeed, if a design cannot be patented, then perhaps it can be copyrighted, or trademarked. In the end, design may be protected today under one, all, or none, of the IP theories.

Here is a suggestion dealing with new design protection in the U.S. First, a design owner can continue to avail itself of current patent, trademark or copyright law. Nothing changes. Second, and as an alternative to present law, the owner can acquire product and package design protection under a new design mechanism, consisting of the following proposed parts:

The owner may file notice with a new design agency of the U.S. Dept. of Commerce prior to publishing any aspect of the claimed design. The design notice designates in detail the specific aspects of product and package design that the owner claims is new, creative and original. Exclusive right over the designated design endures for twelve months following filing of notice. The owner is free to seek patent, trademark and/or copyright protection separately during the twelve-month period. Any person can file a notice of dispute as to a portion or all of the claimed design designated in the design notice. Following a notice of dispute, a summary determination is made as to the creativity and originality of the design by an administrative law judge in the Dept. of Commerce. If the design is upheld in the summary proceeding, then protection continues for the balance of the twelve months and this decision creates a favorable inference in any pending patent, trademark or copyright prosecution. Alternatively, if the design is overturned, then protection terminates ab initio and this decision creates a negative inference in any patent, trademark or copyright prosecution. This process would apply to all issues of design associated with physical goods and things containing a useful component, including architectural design, industrial products, mask works, vessel hulls and clothing. But this proposal would not apply to traditional artistic items that are not used for a purpose beyond enjoyment of the items themselves.

The forgoing proposal perhaps may be most useful for new, highly popular designs that have a short shelf life. In such instances, perhaps protection of limited scope and duration is all that is required to allow the creator a commercial head start. Allowing protection to drop off of the new design after twelve months may promote development of art, science and new creative design.

This proposal has its flaws, but it has advantages. It will not solve all problems associated with design protection across the board. This proposal is offered for discussion of an alternative approach to useful design protection that is simple and short term.

~ Mike Ratoza

Wednesday, November 12, 2008

A Proposal To President-Elect Obama on U.S. IP Improvements

There are several blogs that are making suggestions for improving the U.S. IP system during the coming administration. I am throwing my two cents out for comment. Let me know what you think and feel free to provide your own suggestions.

First cent, I propose that any future modifications to the patent, trademark and copyright laws must be clearly supported by the Constitutional goal of advancing art and science. Art. I, sect. 8, cl. 8 of the U.S. Constitution provides that Congress has the power "to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." The central focus of IP law is the improvement of art and science for the benefit of society. It is not the central focus to create monopolies that extend three generations into the future. It is not the central focus to provide exclusive benefits to distributors of work independent of creators and the public.

While society is benefitted by a mechanism that rewards a distributor's risk in funding, promoting and publishing new work, perhaps the present structure encourages too many "one hit wonders" and does not create practical encouragement for individual creators to continue making new work.

Future modifications to the IP laws should not lose sight of the need to economically encourage the creation of new work. New IP legislation should be required to establish that its focus and effect preponderates the promotion of art and science. In doing so, new IP laws must explain their intended goals and identify the intended winners and losers. Perhaps in this way, more upfront focus will be directed toward the Constitutional manifest of promotion of art and science, with less emphasis on how distributors can acquire greater monoply rights (for an example of what not to do, see the new Pro-IP Law).

Second cent, I strongly encourage a top down examination of the structure and administration of the PTO, primarily the technical patent side. There has been considerable criticism of this agency from many quarters, including recent public comments by members of the federal bench. From all indications, including the well-publicized 30% turnover rate in the patent examination corps, the criticism may be understated. The PTO may simply be too complex for the good of its mission.

I propose that the PTO be divided into separate agencies; one for non-design patents, and one for trademarks and design patents. The trademark side and the design patent side of the PTO do not have anywhere near the same functional troubles as its technical patent sibling. The patent side needs a thorough thrashing, cleaning and restructuring by an administrator with less patent legal skills but more practical large-entity management skills. The loud criticisms heard from many quarters suggest that the present PTO management lacks the basic skills to run the complexity that the patent side has become.

~ Mike Ratoza

Tuesday, November 11, 2008


With a new administration comes a new blog devoted to U.S. IP issues. So, welcome to the first posting of this new blog focusing on the exploration, discussion and consideration of all aspects of U.S. intellectual property law.

I seek to invite discussion of IP law as it applies to U.S. work, and to foreign work that may have a potential impact in the United States. Feel free to provide substantive comment on all relevant topics.

I will note the obvious: the U.S. economy is in the midst of challenging times. During good times, with money flowing freely, it may not be as important to protect intellectual property from misuse. With money flowing about, there may not be too great of concern with a little infringing use here and there. But in tough times, with little money available, every dollar must be protected. Every IP asset must be guarded.

Join me in a common and exciting discussion of how IP creation can be encouraged, of how IP can be protected, and of how IP can continue to be an effective mechanism to encourage economic growth and prosperity.

All the best and I look forward to hearing from one and all.

~ Mike Ratoza