Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[scott k]

Hello I am new to this forum and hope some one can help me.
I have designed and built a new tool and that tool is in the shape of a
companys logo and I would like to submit it to that company... But before I do I would like have some kind of protection and I know that
most companys wont sign a discloser aggreement. What I am wondering is can I do a design patent on the tool itself without infringing on the logo trademark? I am only interested in marketing it to the company that
has the logo so I wont be selling it to anybody else. I appreciate any
help or info on this subject.

Scott

[Dazed-n-confused]

...designed and built a new tool and that tool is in the shape of a company's logo and I would like to submit it to that company... ... can I do a design patent on the tool itself without infringing on the logo trademark?

I'm not a trademark guru so hang out to see if others chime in tomorrow and contradict what I'm about to say, but here goes.  I don't think filing a design patent application would be viewed as a "trademark" use of the logo.  And what you one in hot water with trademarks is, generally, trademark type usage - providing goods or services under a name that may confuse the consuming public into thinking the goods come from owner of the trademark.

Couple of other points, though - I do wonder about copyright protection.  If the company's logo is sufficiently stylized such that it's rendition can be viewed as an original artistic expression, it may be protected by copyright. 

Also - if you've invented a "new tool", is it sufficiently new/inventive that the tool itself (what it is/does) could be the subject of a utility patent application? 

[JimIvey]

I don't think filing a design patent application would be viewed as a "trademark" use of the logo. 

I agree.  Same caveat: I'm not well versed in trademark law. 

Regards.

[Zonath]

So let's say you've gotten the idea for a shoehorn based on the Nike Swoosh (Just as an example.)

As far as the trademark goes, I don't believe the filing of a design patent has ever been held to be a 'use in commerce', but I do tend to think that Nike might be able to obtain an injunction under 15 USC § 1116, as the courts are authorized by that section to:

grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.

(Emphasis is mine). 

So, even prior to any infringement actually occurring, the court can, on principles of equity, issue an injunction against a party who appears to be preparing to infringe upon the exclusive rights secured by a trademark.  I just wonder if the filing of a design patent might be seen as an enough of an indicator of such potential infringement that it could be enjoined by the courts.  I have to admit it's not something I've encountered myself; I'm just throwing it out there as one way in which you could possibly be running up against an obstacle thrown up by trademark law.

[Dazed-n-confused]

As far as the trademark goes, I don't believe the filing of a design patent has ever been held to be a 'use in commerce', but I do tend to think that Nike might be able to obtain an injunction under 15 USC § 1116, as the courts are authorized by that section to:

grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.

(Emphasis is mine). 

I think I see what you're saying, that is a good analogy; but to grant an injunction he'd still have to be violating one of the listed rights available under that section.

Arguably, a shoe horn in the shape of a Nike Swoosh could indeed be viewed as close enough to Nike's routine footwear business line.

But a Swoosh-shaped monkey wrench would not be.

So, here, if he uses the tool manufacturer's own logo shape in a tool similar to what they themselves might sell, they could argue likelihood of confusion for the tool itself.

But I'd still think the chance of getting a design patent app enjoined is pretty slim...

Still wondering about copyright of an "artistic enough" mark/logo, though.  Any copying (even for purposes of drawing the tool out for a design patent application) could be viewed as an infringement, assuming of course the underlying logo is entitled to copyright.

[Zonath]

Well, Nike is also a famous-enough mark that the dilution provisions of 15 USC § 1125(c) would kick in to possibly prohibit even a wrench being made in the shape of a Nike Swoosh, since it could be argued that the shape of the wrench should be considered 'dilution by blurring' under the definition provided in § 1125(c)(2)(B).  (I realize the example of Nike is only illustrative, and the mark that scott k is asking about may not in fact be famous, but dilution should also be considered in his analysis of his particular issue.)

And our original question involved something the questioner would like to market to the company in question, so I would guess that scott k's product idea might at least be somewhat related to one of their existing lines of business.

[scott k]

Hi all thanks for all your replies! I guess what I am really trying to do is protect my design so I can market it to the company and yes the company is well known and the logo is pretty well known also. That being said the tool I designed is very unique and im fairly sure nobody has thought of doing what I did with it. The tool would fit in nicely with the products they manufacture and sell and would be something they could include with the product or as a promotional item or sell it by itself. Again I am not trying to sell it to anybody else but that company.
I know that when they see the tool they are going to want it and see the value in it that is why I am trying to protect myself from them just taking it!! Thanks for all your valuable help!

Scott

[JSonnabend]

So let's say you've gotten the idea for a shoehorn based on the Nike Swoosh (Just as an example.)

As far as the trademark goes, I don't believe the filing of a design patent has ever been held to be a 'use in commerce', but I do tend to think that Nike might be able to obtain an injunction under 15 USC § 1116, as the courts are authorized by that section to:

grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.

(Emphasis is mine). 

So, even prior to any infringement actually occurring, the court can, on principles of equity, issue an injunction against a party who appears to be preparing to infringe upon the exclusive rights secured by a trademark.  I just wonder if the filing of a design patent might be seen as an enough of an indicator of such potential infringement that it could be enjoined by the courts.  I have to admit it's not something I've encountered myself; I'm just throwing it out there as one way in which you could possibly be running up against an obstacle thrown up by trademark law.

That's a stretch, I think.  Filing a design patent does not mean that one is "preparing to infringe" anything.  In fact, having a patent does not grant anyone any rights to make, use or sell anything, only to stop others from doing so.

The bigger question is this: if the design is in the shape of a previously known logo, would it still be patentable under 102/103?

- Jeff

[scott k]

If I were to file a patent on the design would that be of any value to the company or at least be more willing to work with me considering I have already put the idea out there. If they started making them without cosideration to me would I have any right to legal action against them?

Scott

[JSonnabend]

The issue is moot.  You will not be able to get a design patent on the design because you copied it, you did not create it.

- Jeff

[Dazed-n-confused]

The issue is moot.  You will not be able to get a design patent on the design because you copied it, you did not create it.

Think I'm going to disagree on this point.  Correct or not, people get design patents all the time for shapes they did not design, but rather adapted.  Mickey Mouse shaped mount-on-pencil erasers for "inventors" who did not create Mickey Mouse design, bullet-shaped beverage containers for people who certainly did not design the bullet, even pretzel-shaped sausages (generic pretzel shape) for people who did not design the generic pretzel shape, etc.  Here, he's "created" a tool incorporating or using a known design (the company's logo).  Right or wrong, at least by what I see prevailing in the PTO, he could get a design patent.

[JSonnabend]

Disagree all you want.  An applicant can't properly sign the inventor's declaration for a design he did not create.  What is more, seeking to enforce a design patent on a copied design could lead to serious blow back for the patentee (including possible antitrust counterclaims).

What is more, your discussion of "creating a tool" appears to reflect a fundamental lack of understanding of what a design patent covers.  The "ornamental aspect" of the "tool" is precisely what the OP said he copied.

Finally, just because the PTO issues dead-on-arrival patents doesn't mean anyone should be advised to seek patent protection based solely on the rationale that "the PTO will issue anything".

- Jeff

[Dazed-n-confused]

...can't properly sign the inventor's declaration for a design he did not create. ...

But the PTO at least appears to find some novelty and invention in a person's having taken a known shape and adapted it for some other object, then claiming the shape for that object. 

In the OP's case, given the very low bar the PTO seems to set, why isn't taking a 2D logo and then adapting it into a 3D tool's shape enough to be able to say he did create that design, the design of the tool, even if it is based on the logo? 

[JSonnabend]

The ornamental aspects of the device are neither novel nor non-obvious.  Maybe there's some case law to the contrary, but I wouldn't bet on it.

- Jeff

[Dazed-n-confused]

Maybe there's some case law to the contrary, but I wouldn't bet on it.

Well, neither would I.  But there's certainly a whopper disconnect between theory and law [edit: I mean, together on the one hand],  vs. the PTO's application when it comes to ODs.  Yes, we see arguably obvious or even anticipated utility patents more often than we should.  But my gosh, before one of my earlier posts I spent ~20 mins flipping through a bunch of this year's granted ODs and it seemed every 3rd one was highly suspect just based on other products I've known for years....