We have some razor sharp readers and guest bloggers. We’re deeply thankful and especially grateful when our readers and guest bloggers send us real life illustrations of marketing pitfalls we’ve identified, sliced and diced here on DuetsBlog. They provide more great teaching tools.
Hat tip to our own James Mahoney of Razor’s Edge Communications for reading and passing on to us the fine print appearing on the package insert for a Spyderco Dragonfly 2 pocket knife, appearing to provide a large opening to probe the validity of a federally-registered, non-traditional trademark, namely the prominent round hole depicted on a Spyderco knife blade:
The nearly twenty-year-old incontestable federal trademark registration describes the design trademark this way: “The mark consists of the configuration of a portion of the goods, namely a circular through hole formed in the body of a knife blade.”
The package insert for the Spyderco Dragonfly 2 is reported to describe the round opening on the blade feature this way: “The Trademark Round Hole(TM) in the blade proudly proclaims it as a Spyderco product and ensures swift, positive one-handed opening with either hand.”
Let’s just say, it’s kind of an odd combination of highly beneficial look-for advertising (without using the clunky word “look-for”) in the first part of the sentence (“proudly proclaims”), but then after the word “and” the dreaded functional touting appears, linking function to the round hole trademark design feature (without using the “F-word”).
The website information for the Spyderco Dragonfly 2 reads similarly: “The position of the enlarged Spyderco Round Opening Hole in relation to the pivot leads to smooth opening and the FRN (fiberglass reinforce nylon) handle fits the hand ergonomically with a series of grip angles and leveraging spots.”
The Spyderco Manix product information adds additional cuts: “Improved jimping on the thumb ramp and forefinger choil provide enhanced control and a large 14mm Trademark Spyderco Hole makes one-handed deployment a breeze, even while wearing gloves.”
The Spyderco Dragonfly Foliage Green knife is described this way: “Even the positioning of the Spyderco Round Opening Hole in relation to the pivot is tweaked for smooth opening and hitting all the correct pressure points in the hand. Blade and handle geometry create a series of grip angles with a purposeful flat shelf at the base where the pinkie finger rides as a leverage point.”
Spyderco’s 2014 Product Guide contains additional functionality blade cuts, and in one place, actually uses the dreaded F-word:
- “All CLIPITs have a pocket clip, a Spyderco Round Hole™ for single-hand operation, and an exceptionally sharp cutting edge.”
- “and Trademark Round Hole™ provide fully ambidextrous carrying and high speed operation.”
- “A reversible pocket clip Spyderco Round Hole and sturdy lock mechanism offer convenient carry one-handed access and serious functionality.” (emphasis added)
- “and has a 14 mm Spyderco Round Hole for quick, one-handed opening — even while wearing gloves.”
- “with a 14 mm Trademark Round Hole for infallible one-hand opening.”
- “features a Trademark Round Hole for easy opening.”
- “have Spyderco’s Trademark Round Hole for one-hand opening.”
The federally-registered round hole design feature is presumed valid as a non-traditional trademark, but given the prevalent language touting function, one must wonder how many cuts with the functionality knife will it take to render the claimed trademark design feature functional and unprotectable as a trademark?
Keep in mind that marketing statements linking form to function can be considered self-inflicted fatal wounds, used against the brand owner when trying to assert exclusive rights in a non-traditional trademark, when the product feature being claimed as a trademark is functional.
Here’s to starting 2016 the right way, by encouraging effective collaboration between trademark and marketing types, and resisting the temptation to tout function when there is the potential for owning and/or maintaining a product design feature as a trademark.