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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

Barbara all the beers are

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 um 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 bucks a piece typically uh typically 25 to 30 how much have you sold in the last year sales last year $936,000 which was an anomaly for us we had a down year the PRI year to that was 1.3 million and 1 million also maybe it means it’s slowing it could Santa doesn’t like

that so um we he mentioned patents there right he he had some competition early on I want to touch on that uh 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 it’s overall utility is actually entertainment okay it does have an underlying of course warmth Factor if you’re out in the elements you will be you will gain the benefit of having a head covering and be protected from um you know the cold but it also has that additional sort of novelty aspect where it’s really its Marketplace movement is entertainment yeah it’s right it’s sort of a costume and so that does it can provide enough to get a Pat but you’ve got to be able to provide evidence that it’s novel and nonobvious so it’s novelty even though it is a novelty item likely was not novel enough to get a general Utility Patent on that benefit okay headscarves head wearing clothing is really challenging to get a Utility Patent on it have to be quite narrow and might not be worth the while in getting that application through the process so what is predictable do 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 so 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 so 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 okay the assign is beardo incorporated different of course from the company we just looked at which is beardface incorporated uh 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 hook and loop or velcro attachments to a hoodie uh that have different types of um fabric perhaps 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 threedimensional shape this could have any type of a color or look okay 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 [Music] beardo that’s exactly what they’ve got right they’ve got different you know beard hats where the knit knitting is there right they’ve got long now the this one here 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 you know heavy knit uh 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 stat LTD versus 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

owner so let’s take a peek here um I want to showcase one of our other clients that we have in the beard space um this is cut buddy and Joshua is a client of ours proud we’ve had him on our show before um he’s got a different type of a product you can see the cut buddy who actually was on Shark Tank several times got funded by Damon John and it’s a very simple product I mean a lot of our inventors you know prospective inventors some people that I speak with when I’m at networking events they’re like oh I’m not an inventor I just I have these cool ideas here and there it doesn’t have to be you know this wild software Electronics or detailed involved groundbreaking invention it can be Hardware right simple piece of plastic while certainly Innovative is enough right can be Market shaking and can make quite a bit of Revenue over the time so this is available on their own website and it’s on Amazon as well and I know for a fact that Joshua and his team have uh got into a licensing deal with Andis who you’ve probably seen on the shelves at Walmart and some of those other big box stores so congrats to Joshua and his company for solving some problems for uh people with beards and so what this product does as you can probably see helps you line it up and and cut your beard appropriately so gives you that perfect shape so we can trim your beard and have it not be so bushy like like mine is getting to um so congrats to Joshua on that um so we’ll 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 um and then we’ll look to wrap up soon uh again I was uh 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 more a deeper dive into that that case because there were some interesting issues that came up I wasn’t able to get to them before we went live today but what they did is when they when um beardo right sued for design patent infringement um wisely okay beardface counter suit 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 of L like what a design patent can um one a good example for a trade dress is cocacola right they’re distinctive shape of bottle okay that shape is covered under trade dress and how similar right it’s very similar in terms of what it’s 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 a a design patent uh sorry a trade dress protection really is more generic and covers more about the brand and what the trademark has been able to um be distinctive in the marketplace so Matt K and I will talk more about that case trademark and trade daress next week so on behalf of bold patents and myself here JD Houvenor I wish you guys a great rest of your week we’ll see you here next week Wednesday at 1:30 Pacific have a good day everybody go big go bowl

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