This is a guest blog by Ian Monat, Owner of Monat Technologies. When the catalytic converter was stolen off his truck he made it his mission to "protect vehicles across the US and UK from catalytic converter theft with the best security solutions on the market": The Catlock.
One of my favorite 80’s comedies is ‘Coming To America’. The entire movie is hilarious but I always loved when Prince Akeem of Zamuda (Eddie Murphy) lands his first American job in Queens, NY at McDowells, a fast food restaurant that is a not-so-subtle rip off of McDonalds, and home to the ‘Big Mic,’ the ‘Golden Arcs.’
This makes for good humor on the silver screen, but when a McDowells sets up shop next to your McDonalds in real life, there’s nothing funny about it––especially when it means lost customers, decreased revenue, and time and money spent on litigation. Have you ever had a McDowells open next to your McDonalds? I have…
In 2008, the catalytic converter was stolen from my Toyota 4Runner. I didn’t even know what a catalytic converter was at the time, or why someone would want to steal it. Nonetheless, to replace it cost me a $500 insurance deductible. Total cost to insurance was $1,500.
Fast forward to 2011. I had created a line of catalytic converter security locks called The Catlock (read more about my story in my previous blog, The Importance of Protecting your IP: A Tale of Two Kitties). They were selling well in the US, and had just expanded to the UK where converter theft was on the rise. I was proud of The Catlock––it was patented and trademarked in the US, I created all the marketing materials myself along with the help of a couple talented graphic designers, and I was on the road to becoming profitable.
I received lots of compliments on my website and marketing materials about how professional they looked and how the branding nicely reinforced the brand and differentiated us from our competitors. That meant a lot to me, considering I was an ecommerce play and my website and marketing materials were all I had to market our company.
I was doing some competitive research one evening and clicked on the link to open the installation guide for the leading competitive product and what I saw blew my mind––he had copied my product installation guide! When I say copied, I mean he most likely took my installation guide, gave it to a graphic designer and said, “Now remove his product images and swap in mine.”
The shape, size, look and feel (less a few colors), and nearly all the copy that I had banged my head against the wall to compose was all there on my competitor’s site for his customers to enjoy. Here’s an excerpt (really just the tip of the iceberg). Note that the competitor’s name has been redacted for privacy purposes:
I was livid, but I had a hard time figuring out why exactly. Did he knock off my patent? No. Violate my trademark? No. I was sure what he did couldn’t be legal but I couldn’t put my finger on how or why it was illegal. After an exhaustive web search, I learned he had violated my trade dress.
Trade dress, the intellectual property stepchild, is its own form of intellectual property and is unique from patents, trademarks, and copyrights. Trade dress applications are filed through uspto.gov. According to Nolo.com, “trade dress consists of all the various elements used to promote a product or a service. Trade dress may be packaging, the configuration of the product, or even the environment in which the service is provided.” This means that it constitutes a symbol or device within the meaning of Section 2 of the Trademark Act. For packaging or configuration to qualify as trade dress, it must be both distinctive and nonfunctional. If it is not distinctive, it may still qualify if the applicant can prove it has acquired secondary meaning in the industry. But there is no way around non-functionality. For example, Lego failed to receive a trade dress as the blocks serve a functional purpose.
In an attempt to get my competitor to change his installation guide, I wrote (and had my attorney proof and mail) a cease and desist letter. A cease and desist letter is a formal way to tell someone to refrain from using or distributing materials you believe are especially similar to, or definitely are your protected intellectual property. As a result, my competitor did end up making some changes––not enough to make me happy, but enough to keep me from filing a complaint. Besides, I had a business to run, and I was hungry for a Big Mac.
Trade dress is an important aspect of your business’ IP to consider, and based on the entrepreneurs I know, it does not get its fair share of mind. Have you ever had a McDowells open up on your street? Let’s hear your story!
Are you interested in sharing your trade dress, or other IP horror story? Click the link below to inquire about writing a guest blog for Traklight. We'd love to hear from you!