Trade Secrets

This story appears in the November 1998 issue of Startups. Subscribe »

While a patent provides protection for your invention, most patents have narrow claims, meaning they prevent competition only from designs that are very similar to the patented product. When you are issued a narrow patent, one way to protect your product and make it stand out in the market is by using trademarks consumers will identify with your product.

A good example is the Mr. Coffee drip coffee maker. This machine has several patents, but there are many similar products on the market, and the trademarked "Mr. Coffee" name is the one widely recognized by consumers.

A trademark includes any word, name, symbol or device, or any combination, used to distinguish the goods of one manufacturer or seller from the goods of others. Using trademarks in combination with patents can give your product a substantial market advantage.

Consider Sally Bergmoser of McLean, Virginia, who markets and sells her invention, Ripe-N-Pockets. The product is a series of hanging compartments made from mesh that allow air to circulate and help pieces of fruit ripen just as they would on a vine or a tree.

Bergmoser got her idea in 1993, had a patent by 1994 and started selling her product in 1996. Last year, her direct-mail volume was under $100,000. Sales are expected to increase rapidly this year, since she's lined up a distribution network and a manufacturer's representative who concentrates on sales to catalogs and large retailers. In 1997, Bergmoser decided to further protect her product against competition by obtaining a trademark for the Ripe-N-Pockets name.

The Straight And Narrow

To evaluate the protection a patent offers, examine the claims. Bergmoser's claim for her patent (my comments are in regular type, in parentheses) reads:

An article for storing fruit and vegetables comprising a tube of mesh material adapted for permitting passage of gases from fruits and vegetables (and passage of) air and sunlight...(A patent claim typically opens by describing the field of the invention-in this case, storing fruits and vegetables. If the patent claim stopped here, it would be very powerful, as it would apply to all fruit and vegetable storage devices made of mesh. But the patent claim goes on to list additional features, which narrows the patent by restricting the number of potential competitors it protects against.)...having a plurality of elastic constricting means spaced along and affixed to a length of said tube of mesh material? This is what I call an add-on phrase that limits a patent's scope. If someone introduces a product that's similar to Bergmoser's but doesn't have elastic, there's a good chance it won't violate her patent.)...said tube of mesh material having openings extending lengthwise between constricting means whereby pockets are defined in said tubes by said constricting means and said openings. (A convoluted way of saying the patent covers only lengthwise openings. This greatly narrows the patent.)

For Bergmoser, this patent prevents competitors from getting a patent on a similar product, assures she can keep selling her product, and gives her a better chance of licensing her idea if she wants to do so. However, it's not strong enough to stop all competitors for mesh-based fruit-ripening devices. That's where a trademark comes in.

Make It Memorable

In my 20 years of bringing products to market, I've found consumers don't really remember or care if a product has a patent. They do, however, tend to remember trademarked names. Registering a trademark with the U.S. Patent & Trademark Office costs only $245-far less than getting a patent (although the cost can rise to $1,000 or so if you use an attorney).

To get the most from a trademark, keep these rules in mind:

1. A trademark distinguishes the source of one product from the sources of other products. This means you can't receive trademark protection until you are actually selling the product.

2. A trademark can't be a descriptive term; for example, Bergmoser couldn't trademark "Fruit-Ripening Mesh Pockets" or even "Mesh Pockets." This restriction makes it difficult to trademark a properly spelled term, unless it's a term not commonly associated with the product, such as Ocean Spray (a trademark of Ocean Spray Cranberries Inc.). You can get around this by spelling the name incorrectly, such as Ripe-N-Pockets; using a made-up word, such as Kleenex; using a symbol, such as a wheel for the "o" in Mr. Coffee; or using a particular typeface, such as the font in the Business Start-Ups logo.

Still need to know more? Try the following resources:

• The U.S. Patent & Trademark Office, (800)?86-9199, http://www.uspto.gov

• Trademark search firm Pop Data Technologies, http://www.trademarksrus.com

• Government Liaison Services Inc., http://www.trademarkinfo.com

Even if you have a patent, trademarks can provide additional protection and name recognition. Use them liberally as part of a smart strategy to set your product apart in the market.

Winning Ideas

Would you like a chance to expose your new product to thousands of potential wholesale buyers-for free? It could happen if you win the National Mail Order Association's (NMOA) "US500" contest.

The 500 winning products chosen will be featured in the NMOA's newsletter, Mail Order Digest, which goes to buyers from mail order, catalog, infomercial and direct-marketing companies in the United States and abroad. Fifty of the winners-one per state-will also have their products featured on the NMOA Web site free for one year. To receive an entry form (due no later than December 31), call (612)?88-4193, visit http://www.nmoa.org or send a SASE to NMOA, 2807 Polk St., N.E., Minneapolis, MN 55418-2954.

Which Way?

Question: I've invented a manual vacuum pump that could be sold for industrial use to drain coolant and oil out of machines, or sold to homeowners to drain oil from boats, autos and lawnmowers. The product needs to be slightly different for each market, and I can only afford to go after one market. Which do you recommend I tackle first?

Answer: The consumer market's appeal is its large size and its (relatively, in this case) glamorous nature. The downsides: Competition is fierce, buyers are hard to reach, promotional programs are expensive, margins can be low, and plenty of marketing pitfalls exist for new entrepreneurs. Among the things that can derail an inventor are slotting allowances (fees some retailers charge before selling a product); co-op advertising allowances (fees retailers charge manufacturers to advertise their products); and product returns (retailers will return products returned by consumers or damaged in the store).

The industrial market is typically much smaller than the consumer market. But it has many attractive features for inventors: Buyers tend to behave in a more uniform way, competition is less cutthroat, prices are higher, the market is more open to a one-product company, and low-cost trade shows provide effective access to key buyers.

I recommend you approach the industrial market first. It's easier to penetrate, and the costs to introduce a new product are lower than in the consumer market. I'd recommend targeting the consumer market first only if you have an experienced contact in the market who will spend up to 10 hours a week helping you launch your product.

Don Debelak, author of Bringing Your Product to Market (John Wiley & Sons, $19.95, 800-225-5945), is a marketing consultant specializing in bringing new products to market.

Contact Source

Sally Bergmoser, (703)?38-4533, http://www.ripen-it.com