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By J.D. Houvener
Patent Attorney and Founder

Good afternoon everybody. I am JD lawyer host of The Bold Inventor Show and that is what this is. I’m a patent attorney and I own Bold 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 secret protection. Got my co-host here with me as always. Good afternoon howdy howdy howdy howdy.

Well, we’re doing Movember. We talked about this yesterday on our Bold Lawyer Show but today we’re continuing that in this month. 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, you know, like in 1997 and now it’s like couple mustache enthusiasts, yeah. And and now it’s like, you know, worldwide – 700,000 members. So go check it out. If you’re if you’re a guy out there listening, you know, live or after the fact, go get checked out. Get your health taken care of. Get your screenings.

Yeah I gotta break the stigma. 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 you say it, say you’re oneliner. Getting old’s for the birds. I my grand used to say that. I love it. She was from Minnesota here but I don’t know what it means. Anybody out there, if anybody has any ideas of what that means would love to hear from you.

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. We want to have you ask away. We’re not going to be giving 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 questions things related to intellectual property, patents, trademarks -you name it.

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 letting down our guard, kind of just sharing in a live fashion. Give us a like and subscribe to our YouTube channel too while you’re at.

Let’s do this. This is part two. I did last week solo but we’re we’re continuing this month down this journey of looking at a company – company called Beardface. I did a Shark Tank critique last week. I don’t know if you saw it but it was pretty quick too but it’s kind of a Christmas theme pitch where they 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 beard – like a Santa beard. You get a beard, you get the chops, you get whatever, yeah exactly.

I’ve got it all pulled up here. They, they’ve got it they’re still selling. They were looking for investment. They didn’t get any takers. It’s Beardhead, that’s what it is, Beardhead. Let’s take a look. I’ll show you what I’m looking at. Podcast listeners, you can’t quite check it out but you can go to Beardhead dot com and it basically is on the front of our 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, novelty items for sure.

Yeah this was this was the hot ticket like I don’t know five years ago, 10 years ago you heard about it? 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 it. You gotta 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. I don’t think I’m attention seeking enough. 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. But it was interesting. I was having a discussion on my critique. One part of the pitch – they had asked “Well hey what’s, what makes you unique? You know do you have any competitors?” And the founder said “Well yeah we do. We were the first ones on the market but about 12 months later competitor popped up.” And the founder stated that “You know this is not something you can get a utility patent on.” I had to of course object to that.

It is. It is and you know, utility – which is the bar – one of the three criteria: novelty, utility and non-obviousness. Entertainment qualifies and so I want to break… So I kind of let that go. I went through some of those criteria: entertainment and of course this is saying the world to file a patent. We can be no…Exactly the utility is so flow… 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 man laughing heals the soul.

So anyway, 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 – a competitor, probably their Coke to their Pepsi. Beardo’s got 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 Beardhead alleging design patent infringement. And you know it was our job over this week to go pull up that case and kind of go through it. I don’t know if you had a chance to look at it at all or? I’m looking at it right now. Take a peek and I’ll pull it up too.

Basically it’s, you’re like “Oh yeah, my homework.” It’s what I thought was interesting was the counterclaim. 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 get a design patent. It’s exactly that – it’s one design that is the major limitation of a design patent. It’s one exact three-dimensional shape. It doesn’t cover the Barbarians, all the different variations. It’s very limited format. So it’s they’re swinging away trying to get some rise out of Beardhead but Beardhead says “Nope, not only are we not infringing, you are counterclaim liable for…” And they, they go after trade dress and trademark infringement.

So that’s very interesting. In my experience, whenever you can bring a counterclaim it’s you should because at the end of the day it’s leveraged towards maybe a settlement. And also if you don’t use it you lose it You have to bring the counterclaim right now’s the time. You don’t want to bring it later so if you’re… I see yeah. You’ll be yeah you’ll be barred from bringing it later.

And so this from a procedural perspective this looks like a 12b6 summary judgment motion here. So the defendant for the counterclaim is trying to get this claim, this counterclaim kicked out of court. And the judge in this case comes back and denies the summary judgment and sends it back down to the lower court for more findings of fact and law looks like. But yeah I mean at the end of the day they came back and they counter claimed for trade dress which is kind of the ugly cousin of trademark law.

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…Trade dress is typically reserved for larger clients with really distinctive product design. And packaging – you also see trade dress in things like I would say interior design. If you have like a 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 corrugated metal everywhere, concrete everywhere and so that 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 here’s Beardhead’s website – this is an online retailer – and we’ve got Beardo here. So I mean there’s basically creating the same product with different variations on that same product but I would say that first one that you showed us, Beardhead – I mean they do have their logo prominently displayed on the on the hats. So I don’t know if that goes into the trade dress infringement analysis or not but I would say if you’re prominently displaying your logo on your product that’s less likely to have a trade dress issue.

Say that one more time so it’s crystal clear: Let me kind of paint you guys a picture here: looking at an image of a man wearing one of these Beardhead hat-face combo coverings And they have their logo “Beardhead” prominently displayed on the front of the hat. 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 Beardhead. And so I don’t know if that goes into the infringement analysis or vice versa but they have the brand listed prominently displayed. I would think that that would go against any finding of likelihood of confusion based on the trade dress. Trade dresses are really hard to prove too.

I’ve prosecuted a few of these – it can’t be functional. And so I don’t know if they could even claim that this is trade dress because at the end of the day it serves a purpose. I guess maybe the design elements – the locks coming out – that don’t provide any warmth could potentially be categorized as trade dress but I’d be curious to talk to that attorney who filed this basically made that argument because it’s notoriously an uphill battle.

I’m actually on the Beardo website. I don’t even see a competitor product. Maybe switched completely to fragrances and beard products themselves, hair products. So I mean that is curious too. Maybe that was the settlement – like “I’ll go my way you go your way,” you’re not going to do men’s facial products or health and beauty products. And that could have been a confidential settlement. The owner wasn’t willing to share. Wish we could had him on.

What’s also interesting is that there’s a claim here of common law infringement, unfair competition. So when you bring a lawsuit in federal district court, you can also bring your state level trademark claims and you should – good reason to do that: different case law, different standard for damages. Who knows what could be in there? But at the outset too you also get to claim common law infringement which doesn’t necessarily need to be registered and you can make that argument that you have rights in the mark in your state even though unregistered.

So just to kind of bring that home: some may not know you can have rights. There are trademark rights, common law rights that you basically have just by using the mark without registration at all. It’s like a copyright – you have rights just by using it or selling the service or product, offering it for sale. You need to register your trademark with USPTO just like you need to register your copyright. If you want to enforce that trademark and drag someone into federal district court, you need the government stamp of approval.

Common law is a way to get around that. Gets into: clients always ask “can I use the TM symbol? Should I use the registered trademark symbol?” 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, use the registered trademark symbol.

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