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By J.D. Houvener
Patent Attorney and Founder

First, I have a very important question I must ask you – which one of you Sharks will join me and take Beard Head to create the perfect storm of success? Sample time now, all right, here we go. Thank you David. This one is going to be for you. Get that one. How do you…

Are all the beards detachable? No cash flow for you. Very nice David, I love it.

I think it’s a great idea, but let me ask you this – haven’t I seen this before?

We do have competitors, yeah, okay. So why are you different than the other ones? Well, for one, I want to just point out we came out January 2009. We didn’t start seeing copycats and imitators until about 12 or 18 months after that. [We were] first to do this. Yes, but there’s no way to protect it. It is not utility patentable.

Tell us about your numbers, David.

Absolutely. We’ve sold to date $250,000 Beard Heads. $5 million in sales this year…

No, no, no – total?

They sell for $20 a piece typically…Uh, typically $25 to $30.

How much have you sold in the last year?

Sales last year were $936,000, which was an anomaly for us. We had a down year. The prior year to that was $1.3 million and $1 million also. Maybe it means it’s slowing…

Santa doesn’t like that.

So he mentioned patents there, right? He he had some competition early on. I want to touch on that. He said actually very specifically that he didn’t think that the the Beard Head itself was Utility Patent protectable. Let’s take a timeout right there. There is a difference between utility and design patents, and there is a reason I’m going to get to later as to why this founder knows so much about patent law.

So a Utility Patent protects what something does and in this case, this Beard Head, its overall utility is actually entertainment. It does have an underlying of course warmth factor – if you’re out in the elements, you will gain the benefit of having a head covering and be protected from, you know, the cold. But it also has that additional sort of novelty aspect where it’s really its marketplace movement is entertainment. It’s sort of a costume. And so that does – it can provide enough to get a patent, but you’ve got to be able to provide evidence that it’s novel and nonobvious.

So its novelty, even though it is a novelty item, likely was not novel enough to get a general Utility Patent on that benefit. Headscarves, head wearing clothing is really challenging to get a Utility Patent on. It’d have to be quite narrow and might not be worth the while in getting that application through the process.

So what is predictable to design patents right? He said specifically utility patents.

So there are design patents out there and guess what – Beard Head was not the first to protect it. Beard Head got in some trouble in about 2014. They were sued by a company called Beardo – they owned a patent that was issued in 2013 on a very similar product.

Let’s have a peek at that patent. All right, we’ll share the whole window here… And I’ll make this a little larger. In 2013, they called it a Combined Ski Ski Face Mask and Hat, and it was originally filed in 2011 and took until October 2013 to get granted. But it’s a design patent, you know, because it’s a D right there. The assign is Beardo Incorporated, different of course from the company we just looked at which is Beardface Incorporated.

So the owner of this patent filed their one claim for a design patent – it’s just a single claim. The ornamental design for Combined Ski Face Mask and Hat, as you can see they’ve got looks like maybe Velcro attachments to a hoodie that have different types of, perhaps, fabric. But what’s interesting about designs is it doesn’t lock you in to a specific type of fabric. It’s just the ornamental appearance. So it’s a three-dimensional shape. This could have any type of color or look on this type of material but as long as it has this shape they’re going to be protected.

And so if we look at the website over at Beardo, that’s exactly what they’ve got right? They’ve got different, you know, beard hats where the knitting is there. They’ve got long… Now the, this one particular, the Viking Beard Hat, this likely would not be protected under that one design pattern but one like this would, right? It’s got the overall shape even though it’s got heavy knit, that is going to be irrelevant. They’re still going to be protected on that front.

So what they do in 2013 they brought a lawsuit in 2014 – Stad Ltd vs. Beard Head and without dragging you through the entirety of this case, what happened was Beard Head got in trouble and now they have to pay a license to Beardo in order to sell every product that they are. Every single one has to get a certain percentage sent back over to that design patent holder – huge win for Beardo, right? Now, they weren’t necessarily the first to market but they were the first to file the patent application and they had a unique enough idea that they were able to get it through to the examination and get the patent granted.

So very interesting case here and that’s probably why Beardo – sorry Beard Face, the one that pitched to the Sharks – didn’t get a deal because their margins were additionally cut by that original design.

So we’ll take a few more minutes here and we’ll open it up for additional questions from anyone from our audience, from the live audience, and then we’ll look to wrap up soon…again I was hoping that my co-host Matt K would be here to join me. He’s tied up today so we’ll have to catch with him next week and we might do a follow-up to see a deeper dive into that case because there were some interesting issues that came up I wasn’t able to get to before we went live today but what they did is when they, Beardo, sued for design patent infringement, wisely, Beardface countersued for trademark and trade dress infringement.

Now that’s going to be something we’ll talk about next week if we want to keep on going on the theme of Movember, which I think we should. So trade dress is really a form of trademark protection but it covers a lot like what a design patent can. A good example for trade dress is Coca-Cola. Their distinctive shape of bottle, that shape is covered under trade dress. And how similar, right? It’s very similar in terms of what it protects as a design patent.

A design patent comes with, you know, more rigor with respect to it having to be novel, first of its kind in the world, and non-obvious. But trade dress protection really is more generic and covers more about the brand and what the trademark has been able to be distinctive in the marketplace.

So Matt K and I will talk more about that case – trademark and trade dress – next week. On behalf of Bold Patents and myself here, JD Houvener, I wish you guys a great rest of your week. We’ll see you here next Wednesday at 1:30 Pacific. Have a good day everybody. Go big, go bold!

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at