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By J.D. Houvener
Patent Attorney and Founder

good afternoon everybody I am JD hoer host of The Bold inventor show and that is what this is um I’m a patent attorney and I own buold patents Law Firm you see behind me we help investors and entrepreneurs move forward with their inventions trademarks and Innovations help them protect that with patents trademarks and trade Seeker protection got my co-host here with me as always Matt coth good afternoon howdy howdy howdy howdy howdy man all right well we’re doing movember we talked about this yesterday on our bold lawyer show but today we’re continuing that in this month um you know a little tip of the hat to Men’s Health and the awareness there movember I was blown away I did a Google search started with a couple guys um you know like a 1997 and now it’s like couple mustache enthusiasts yeah yeah and and now it’s like you know worldwide you know 700,000 members uh so go check it out um you know if you’re if you’re a guy out there listening you know live or after the fact um go get checked out get your uh Health taken care of get your get your screenings and yep doctors are friends doctors are friends yeah yeah I gotta break the stigma um it’s not it’s not cool to be to be sick it is not you know I’m a volunteer firefighter and I see a lot of sick men you know unhealthy lifestyle so get checked out because it’s important because you don’t want to be an 80-year old man who can’t walk yeah dude getting ain’t for sissies or used say it say you’re oneliner oh getting olds for the birds getting olds for the birds any out I my grand used to say that I love it she was from uh she’s from Minnesota here but I I don’t know what it means anybody out there if anybody has any ideas of what that means love to hear from you um hello out there to our live listeners and Watchers we want you guys to participate please we’ll take any questions you’ve got on subject or not bring it on um we want to have you ask away uh we’re not going to be give legal advice to you specifically we’re not your attorneys but we we’ll happily do our best to just give it a good swing and answer the process question things related to intellectual property patents trademarks you name it so um and if it’s your first time watching us give us a like if you like what we’re doing here we’re attorneys here um letting down our guard kind of just sharing in a live fashion um give us a like And subscribe to our YouTube channel too while you’re at so let’s do this this is part two I did last week solo but we’re we’re continuing this month um down this journey of looking at uh a company company called beardface beard face I did a shark tank critique last week um I don’t know if you saw it but they it was pretty quick too but it’s kind of a Christmas theme pitch where that you put on basically a hat like a you know Christmas style you know warm beanie style hat but it’s got this strap that goes underneath and it’s got a costume right you basally get a beard like Santa beard you get a beard you get the chops you get whatever yeah exactly um all pulled up here they they’ve got it they’re still selling um they were looking for investment they didn’t get any takers um go is it beard not beard face beard head beard head May that beard head that’s what it is beard head okay um let’s take a look I’ll show you what looking at sorry podcast listeners you can’t quite check it out but go to you can go to beard hat.com um and it’s it basically is on the the front of our our uh podcast as well so they’ve they’ve got different styles here they’ve got a sale going on this is their collection you got the barbarians collection I mean they’re selling they’re selling seven figures worth of this stuff you know W novelty items for sure yeah this was this was the hot ticket like I don’t know five years ago 10 years ago ago you heard about it okay I mean I’ve seen these you know you seen them I hadn’t seen them before I watched I don’t I don’t think I can pull it off I don’t think I have the personality for you gota be a real hardcore extrovert you know yeah you do yeah you can’t just walk around and and not like have a conversation about it yeah I’m not I don’t think I’m attention seeking enough right yeah these are definitely out there that’s on me that’s my fault a curly Pearl look at that goodness yeah well if anything it’s kind of like a gag gift fun fun gift category uh but it was interesting I was having a discussion on my critique uh one part of the pitch they had asked well hey what’s what makes you unique you know do you have any competitors and he said well yeah we do we were the first ones on the market but about 12 months later competitor popped up um and he stated that you know this is not something you can get a Utility Patent on I had to of course object to that um it is it is and you know utility which is the you know the bar right one of the three criteria entertainment qualifies and so I want to break so I let that I kind of go went through some of those criteria entertainment and of course this is saing the world to file a patent we can be no yeah exactly the utility is so flow you know you have to be able to provide humor is the best medicine really hey I love that hey we’re talking about health and everything yeah yeah man laughing heals the soul so um ended up getting into a sort of on the-fly discussion about a court case that I found about this company so after they pitched to the sharks they got in some trouble now they didn’t actually file patents but the other company their competitor beardo you may have heard of um a competitor probably their you know Coke their Pepsi to their Coke um they’ve got uh all kinds of stuff they were the one to file a design pattern and I pulled that up and actually found there was a lawsuit from the company the holding company of beardo against beard head alleging design patent you know design patent infringement um and you know it was our job over this week to go you know pull up that case and kind of go through it I’m not sure if you had a chance to I know I was pretty busy this week did you go through that at all or look at it I’m looking at it right now take a peek and I’ll pull it up too basically it’s it’s um you’re like oh yeah my homework um it’s what I thought was interesting was the counter claim okay yes so beardo sues hey we got a design patent on this beard design okay basically it’s a very simple I pulled it up last week where they pulled over and the design patent is exactly that it’s one design that is the major limitation of a design patent is it’s one exact three-dimensional shape it doesn’t cover you know the The Barbarians okay all the different variations it’s it’s just a very Limited Format so it’s they’re swinging away trying to get some rise out of beard beard head but beard head says Nope not only are we not infringing you are counter claim liable for and they they go after trade dress and trademark infringement don’t they yep and so that’s very interesting uh I know you’re just looking at this on the fly but what’s involved in in that counter claim what what’s sort of the heart of of that swing back yeah so it looks to me like looking at the the synopsis of the of the case and it looks like this case was remanded back down to the district court for further analysis um and specific findings um I had actually reached out to the owner um I tried to get them on the show today they didn’t want to come on story end of story is it got dropped the case got dropped and dismissed and they didn’t want to stir up they didn’t want you know beardo thinking they could come at at them again or didn’t want to ruffle feathers until the owner wasn’t want to come on or have any official statement um sure so I actually got it wrong I had assumed that there was some sort of a settlement or license that uh I suppose he doesn’t want to kick any Hornet’s Nest at this point yep yeah it sort of went away it was a mess when happened but he’s he’s passed it so um so is that common to get a counter claim like that I mean I mean I know we’re not in litigation we’re not litigators but I mean I think the in my experience whenever you can bring a counter claim it’s you should right because at the end of the day it’s leveraged towards maybe a settlement um and also if you don’t use it you lose it right you have to bring the counter claim got it right now’s the time you know don’t want to bring it don’t want to have to bring it later so if you’re I see yeah you’ll be yeah you’ll be barred from bringing it later yeah and so this from a procedural perspective this looks like a 12 B6 summary judgment motion right so here the defendant for the counter claim is trying to get this claim this counter claim kicked out of court yeah and um essentially the the uh the judge in this case comes back and and denies the summary judgment and sends it back down to the lower court for um more findings of fact and uh law looks like got it but yeah I mean at the end of the day they came back and they counter claimed for trade dress which is you know kind of the uh the ugly cousin of trademark law it’s it is I mean like it’s one of these things that we don’t want to talk about we don’t want to do it it’s uh trade dress is typically reserved for larger clients with really distinctive product design uh and packaging you also see trade dress in um you know things like I would say you know interior design right if you have like national chain of restaurants you might get trade dress protection on the look and feel I don’t know if this is the case but you go into a Chipotle and you know you’re in Chipotle right it’s got corated metal everywhere right right um concrete everywhere and so that you know could potentially be registered under trade dress or at least you can make the claim in common law that you have trade dress rights in that particular look and feel for that environment so yeah I’m going to share this is this is beard beard heads you know webs this an online retailer right and then we’ve got beardo here so yeah I mean there’s a they’re basically creating the same product you know um with different variations on that same product but I would say that that first one that you showed us um beard head I mean they do have their logo prominently displayed on the on the hats right so yeah I don’t know if that goes into the trade dress infringement analysis or not but I would say that you know you’re less likely to have a trade dress issue if you’re prominently displaying your logo on your product like they are okay say that one more time so it’s Crystal Clear so yeah so let me kind of paint you guys a picture here so we’re looking at uh an image of a a man wearing one of these uh beard head hat face combo coverings and they have their logo beard head promly displayed on the front of the hat right so of the day like when you look at their product you might say hey this looks like beardo but then of course you see that it says beard head right and so I don’t know if that goes into the infringement analysis or vice versa yeah but at least for this particular um plaintiff or or claimant they have the the brand listed or probably displayed so I would think that that would go against any finding of likelihood of confusion based on the trade dress trade dresses it’s really hard to prove too I mean I’ve prosecuted a few of these these um it can’t be functional right and so I don’t know if they could even claim that this is trade dress because at the end of the day right it’s a face covering it serves a purpose um so I guess maybe the design elements of the trade dress like the the locks coming out that don’t provide any warmth could potentially be you know categorized as trade dress but um you know i’ be curious to talk to that attorney who filed these and and basically made that argument because it’s notoriously an uphill battle yeah you know I’m actually on beardo website I don’t even see a competitor product they’ve maybe switched completely to fragrances and beard products themselves yeah hair products so I mean that is curious too so yeah I mean maybe that was the settlement at the end of the day like I’ll go my way you go your way you know um we’re not g to do the hats anymore you’re not going to do men’s you know facial products yeah or health and beauty products yeah and that very well could have been a confidential settlement yeah owner wasn’t willing to share that wish we could had him on so um no that’s that’s interesting um what’s also interesting is that there’s a claim here of common law infringement okay competition so when you bring um a lawsuit in federal dist to court you can also bring your state level trademark claims and you should there’s good reason to do that because you’re going to get different case law potentially you might get a different standard um for you know um damages I who knows what what could be in there but at the at the outset too you also get to claim common law infringement which doesn’t necessarily need to be registered and you can kind of make that argument that you have rights in the mark in your state even though they’re unregistered so yeah so there you go so just to kind of bring that home for some of those that may not know you can have rights there are trademark rights common law rights that that basically you have just by using the mark yeah without registration at all it’s it’s like a copyright you know you have rights just by using the or you selling the service or the product or offering it for sale like you do when you create a copyright just by creating the work right now you you need to register your trademark with the federal government with USPTO just like you need to register your copyright with the US copyright office if you want to enforce that trademark and eventually you know drag someone into Federal District Court you need the government stamp of approval before you can do that um common law is a way to get around that um that kind of gets into clients always ask you know can I use the TM symbol or should I use the registered trademark symbol the circle R and of course if you have unregistered rights use the TM symbol if you have pending trademark rights use the TM symbol if you have registered rights that are still active um go ahead and use the registered trademark symbol Circle

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 https://boldip.com/contact/