We often ask kids this question: “what do you want to be when you grow up?” While my trajectory towards lawyering is true, my answer wasn’t always immediately “lawyer.” I sought something that satisfied my passion for the creative, my critical eye, and my aptitude for math. For a long time, whenever I answered that question, I said “car designer.” I also wanted to be the inventor of the world’s first car based on renewable energy (watermelons to be exact). Turns out we’re going to try electric, even though studies have shown that it’s actually less environmentally friendly than your gas guzzler (see here and here).
Every year, I make a pit stop at the Twin Cities Auto Show, where even something as seemingly mundane and trivial as the position and curves of a cupholder catches my eye. It’s a look at the good, the bad and the ugly. The good was nothing new (I’ll take the Aston Martin or that R8, thank you). The bad was certainly new:
I’ve called it “the Pontiac Aztek of electric cars” – but it’s from a German automaker. Yes, that is a BMW i3. Absent any source indicia, would you recognize this car’s “unusual form factor” as being from BMW? I suppose given it’s shape, you couldn’t lose it in a parking lot.
As Steve mentioned earlier this week, we have devoted a lot of “digital ink” to non-traditional trademark protection here at DuetsBlog, particularly to product configurations. With a few exceptions (mostly domestic), car manufacturers haven’t devoted much towards non-traditional trademark filings. A quick search for product configuration marks in class 12 reveals grills, a Bugatti, Ford’s shockingly basic coupe shape protection, the Prowler, and little else. Despite its history of elegant design, BMW only owns non-traditional trademark filings for their grills (see for example here and here) and the Mini Cooper (which BMW owns). Nothing for the overall shape of the car, or the back end design. But, BMW is the applicant on over 900 design patent filings.
As a patent and trademark attorney, my opinion is that the ideal strategy to protecting novel design is by first filing a design patent, which has a limited term of 14 years. Then, once the product has been in the market for enough time to acquire distinctiveness (usually five years) that design patent can be supplemented by seeking non-traditional trademark protection as a source-identifying trademark protected for renewable periods of 10 years. Design patents and trademarks offer different enforcement options and remedies, and both should be part of an overall IP strategy.
It’s always seemed a little off the mark to me (pardon the pun) to call these non-traditional trademarks as protecting product configuration, which comes from the Latin term “to fashion after a pattern,” because what you are really protecting is your product differentiation. The BMW i3 is certainly a differentiation — from its competitors and its history.
So, are you differentiating or are you configuring?