If the above title seems to be a non-sequitur, keep reading, because it’s not.
There’s been a lot of writing in the IP world recently about a US federal district court judge upholding the USPTO’s decision to revoke the trademark for “Redskins”, used in connection with the professional football franchise in DC. The NFL, and Redskins team owner Dan Snyder, share the traits of deep pockets and dense skulls, so it will be shocking if an appeal isn’t filed. But even if sustained, the revocation of federal TM registration won’t stop the league from marketing Redskins apparel and, in all likelihood, profiting nicely in the process. No less importantly for the league, the revocation won’t necessarily pave the path for knock-off artists to sell Redskins merchandise. The team has been around for a long time, and it’s reasonable to say that the name “Redskins” and the team logo and colors have at this point in time acquired not only distinctiveness but goodwill. So the NFL will likely still be able to avail itself of state trademark claims, including claims for infringement of unregistered marks (also known as “passing off”), and perhaps trade dress claims as well. Whether it should continue to use “Redskins” as a team name is a separate question, as is whether the same arguments that led to revocation of the federal trademark registration would be good defenses against other claims that the NFL might bring.
The critical point is that, because the NFL is a strong, established business, it can use its existing market position to continue to profit from the Redskins mark, and to out-compete most nascent competition.
This brings me to the connection between the Redskins’ situation and the second half of this blog post title. A common fallacy among the uninitiated is that merely applying for a patent, let alone actually obtaining a patent, will make one rich. I’ve lost track of the number of times I’ve had to disabuse potential clients of this notion. As anyone who’s been in the patent law business long enough knows, a good idea, or even a good patent, isn’t sufficient. Succeeding with a product in the marketplace depends on many, many factors; the procurement of a patent is just one of them.
Sometimes, though, obtaining a patent isn’t even necessary. Case in point: the so-called “kosher lamp”. By way of background, religiously observant Jews will use electric lights on Shabbat, but they’re prohibited by religious law from turning those lights on or off. A common work-around to this issue is to use a timer to control the operation of the light. Sometimes, however this isn’t optimal: if you wake up in the middle of the night when the lights are off and you want to read until you fall asleep again, you’re out of luck.
Enter the “KosherLamp Max”. This is a lamp in which the lighting element resides in a compartment having an opening in its side, through which the light can shine. The twist, pun intended, is that there’s a shade that can be partially or fully rotated into place to cover the opening, thus reducing or completing blocking the light. Judging from the testimonials, it appears that this product is doing well. Yet as far I’ve been able to determine, there are no patents on this product. Nor should there be: I recall a similar lamp in my parents’ in my childhood, and the lamp at right was evidently designed in 1967.
The usefulness of patent protection doesn’t seem to have been lost on the proprietors of the KosherLamp: about 10 years ago, a US patent application was filed for an earlier version of the product, but was abandoned after the first Office Action. That version of the lamp utilized an incandescent bulb rather than a compact fluorescent bulb (which generates less heat), and the claims focused on the product features incorporated to dissipate the heat generated by the incandescent bulb. The same fate awaited the corresponding Israel patent application. Nevertheless, the product is now out there, without the benefit of patent protection.
It will be noted that there is a registered US trademark for a stylized “KosherLamp” logo. So it’s possible that others may make a similar product and market it under a different name. But having been first to market, and having now made something of a name for itself, I suspect that the KosherLamp will continue to be the leader in this particular niche market for some time.
In sum, IP can be a useful part of a business plan, but doesn’t sell products, and rarely will IP alone make anyone rich. And sometimes, it’s not even necessary.