Wind-up Radio Inventor Dies at Age 80

In 1991, inspired to help the citizens of Africa, Trevor Baylis created the wind-up radio. With a substantial lack of electricity or batteries, information was hard to spread across the continent and during this time, the AIDS crisis was rampant. By creating a radio that could run off of a crank, Baylis helped deliver the news to hundreds of thousands of people in Africa.  Baylis’ U.S. patent for the crank radio issued in June 1999, as U.S. Pat. No. 5,917,310.

Baylis went on to invent a shoe that could generate electricity as you walked. He also developed products for people with disabilities such as one-handed scissors. He created the Trevor Baylis Foundation which hoped to help inventors protect their work.

Trevor Baylis passed away on March 5, 2018 at age 80. We appreciate his contribution to society.

For more information about patents and intellectual property matters, please contact  Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC.  Pamela may be reached via email at:

Coca-Cola discovers small design changes can mean lack of protection of product designs: protecting product shapes and appearances

How Famous is the Coca-Cola bottle design?  Not quite enough to protect small differences 

Design patents are an increasingly useful tool in product configuration protection, but as Coca-Cola recently learned, even a famous product design has its limits.  As surely everyone knows, Coca-Cola owns a protected famous trademark for it’s original hour-glass bottle shape featuring fluted ridged lines.  Earlier this year, however, the European Union (“EU”) Court denied trademark protection to Coca-Cola for a newly evolved, smooth shaped bottle. The Coca-Cola Company v. Office from Harmonisation in the Internal Market (Trademarks and Designs)(OHIM) 2016

Under EU law, a trademark may consist of “the shape of goods”, as long as the shape is distinguishable from other third-party products. Coca-Cola’s original hour-glass bottle featuring ripple contours is “one of the most famous shapes in the world… is so distinctive it could be recognized in the dark” Coca-Cola stated. However, the EU court found that Coca-Cola failed to establish that the new smooth bottle design had acquired distinctive familiar connection and character through use.

Coca-Cola originally developed the fluted contoured bottle in the U.S. in 1915 to distinguish its bottle from competitors making similar bottles. Cola-Cola developed a glass “bottle so distinct that you would recognize if by feel in the dark or lying broken on the ground.”  After several years of continuous use the unique distinction and recognition lead to trademark protection.

The new smooth bottle shape maintains the hour-glass bulge in the center of the bottle consistent with the original bottle shape, but does not feature the rippled contours that brought the original bottle its worldwide recognition. Although Coca-Cola argued that the smooth bottle is “a natural evolution” of the traditional bottle, both the EU Trademark Office in 2014 and the EU court in 2016, denied the request for trademark protection.

Strategies to Secure Initial Product Appearance and Shape Protection via Design Patents

Similar to the EU, U.S law also allows for trademark protection of product configuration and packaging that acquire distinctiveness  over time.  See Section 43(a) of the Lanham Act, Section 15 U.S. Code 1051.  However, the design must gain “secondary meaning” as the Supreme Court has ruled that “a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning”. See Walmart v. Samara.

Design patents can fill this “use” gap – as they also have the ability to protect unique product appearance and packaging at initial launch of products. This form of protection can serve as the first line of protection to claim ownership of distinctive shapes before the established passage of time that later may provide a basis for prolonged customer recognition which eventually may be used to establish trademark protection for the source of origin of the product.  While design patent protection has a definitive term of protection– 15 years (See Manual of Patent Examining Procedures (MPEP) 1501), trademark protection, once established, may continue perpetually so long as the trademark is in use.

Coca-Cola first obtained U.S. design patents on its ornamental bottle shape in 1916, and again on it’s redesigned contoured bottle in 1923 and 1937.  Design patent protection at that time lasted 14 years (currently 15 years). Years later in April 1960, after the product gained established customer recognition over time, Coca-Cola obtained federal trademark registration for its fluted contour bottle shape, thereby enabling the company to protect its fluted bottle design indefinitely with continuous use and protecting the iconic bottle that it is today.

If Coca-Cola is seeking to protect its new bottle shape in the U.S., one avenue may be to investigate the availability of design patent protection for the initial protection of the new bottle shape, and then look to secure trademark protection after prolonged continued use of the product.  This strategy faired well for Coca-Cola in obtaining initial design patent protection and then continued trademark protection of its original rippled bottle shape.

Discussing these concepts in the current age – the design elements of product are becoming very important.  For example, Apple protected its iPhone design and recovered significant damages against Samsung for infringement.  Car manufacturers have recently filed claims against game manufacturers for digitizing their car shapes into a game.  See as an example BMW v Turbosquid.

Should you seek Design Patent Protection for the Appearances and Shapes on Products or Packaging?

A protectable design must be manifested in the appearance of the product and consist of “visual ornamental characteristics embodied in, or applied to, an article of manufacture. The subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.”  MPEP 1500 et seq.; 35 USC 171 et seq.  Design protection is based on specifically drawn product figures made in accordance with the U.S. Patent Office Rules, and submitted to the U.S. Patent Office with a patent application in order to identify the legal metes and bounds of the protected design. If you are interested in preventing others from making, using, selling or importing the same or similar product shape or appearance, you may want to engage a patent attorney to investigate whether design patent protection may be available for your product or packaging.  An investigation generally consists of a preliminary search and initial evaluation of your product shape or appearance as being new, novel and non-obvious in order to meet the requirements of the U.S. Patent Office.

Should you Trademark the Appearance and Shape of Products or Packaging?

You do not need to register a trademark with the U.S. Trademark Office to establish trademark rights.  Protection is established through use of the trademark.  However, without federal registration, the trademark is only enforceable in the geographic area where the product is sold.  A federal registration on the principal register, however, provides additional advantages and is likely beneficial in most cases primarily because a federally registered trademark on the principal register establishes nationwide priority throughout the entire U.S.  Therefore, registration ultimately gives you the right to prevent others from using or registering your trademark nationwide and provides notice to third-parties of your registration.  It should be noted that even with principal register trademark protection you cannot prevent someone in a remote location where you do not actually market or sell your product from using a trademark or product design that is confusingly similar until you actually enter that market.  A registered trademark is also presumed valid and may eliminate certain invalidity arguments after 5 years of continuous use (incontestability).

How to Register Appearances and Shapes on Products or Packaging:

In order to register your product shape or packaging in the U.S. Patent and Trademark Office, as a trademark your packaging or product design must have acquired secondary meaning – that is, unique, original, and recognizable by consumers as the source of origin.  Can the public identify your company as the source of origin of the product or the packaging by its distinctive features?

In addition, the trade dress must not be functional.   See generally, Manual of Trademark Examining Procedures (TMEP) Section 1202.02  The original Coca-Cola bottle design met all of these requirements (i.e. the fluted ridges did not serve a significant function in the product, but rather were merely ornamental).

If a product design or packaging is not inherently distinctive it can still be registered after it acquires distinctiveness through long use, known as secondary meaning.

There are three ways that a mark itself may be inherently distinctive—if its intrinsic nature serves to identify a particular source.

1) Fanciful trademarks, such as a made-up word (Xerox- a created name with no other meaning than acting as a trademark);

2) Arbitrary trademarks, having no relation to the product other than as a means of identifying the company that produces it (Apple computers- a word in the English language not related to the product);

3) Suggestive trademarks, providing a link between the characteristics of a particular product and its producer (Microsoft- suggestive of software for microcomputers).

Generally, any mark that meets one of these criteria qualifies for trademark protection without any specific proof that consumers associate the mark with the specific source of the product.

To prove that the trademark product or packaging has acquired distinctiveness through secondary meaning, a mark must be shown to be distinct in the minds of the consumer and with a recognizable source of origin.  Proving distinctive secondary meaning, however, is often expensive and legally challenging and often involves consumer surveys for recognition.

If you are interested in filing a design patent and/or registering your product configuration or packaging with the USPTO, you should contact an attorney to investigate, advise, and file an application for your product or packaging for registration.

Should you need assistance with design patents or trademark protection, please contact Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC at:

More information may be found on the following websites:

Oliver & Grimsley, LLC Secures Patents in USPTO

Hancock U.S. Patent No. 9304496 Pamela Riewerts Larry Guffey Oliver Grimsley Patent Attorney Lawyer BaltimoreMulti-Purpose Wrist Worn Tool Watch: O&G Timely Moves Through USPTO to Obtain Patent

We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,304,496, entitled: “Multi-Purpose Tool Watch Housing Multiple Tool Members to be moved from a Stored Position and Extended Position for Use”.  This application proceeded through the patent office in less than one year as a prioritized application.

The invention is an integrated combination of a wristwatch with multi-purpose tool members that may be stored and extended from a wristband housing. Use of the tool watch is particularly suited for an individual to carry a tool set in a convenient form on the user’s wrist and to be able to access tools during daily or outdoor activities.

Congratulations to Patrick Hancock on his recently issued patent!

How to Mark and Provide Notice of “Patent Pending” or “Patented” Articles/Products

Article by:  Larry J. Guffey, Esq. and Pamela K. Riewerts, Esq.

A patent applicant who seeks the benefit of marking an article as “Patent Pending” must make a good faith effort to ensure that the articles are properly and consistently marked.  An effective way to do this is to mark the article as “Patent Pending”.  Use of this notice alerts the public that your article may soon be patent protected and that once a patent is issued, you have the right to initiate a patent infringement lawsuit against someone who is potentially infringing on that patent and wherein you seek monetary damages or other remedies for the copying, etc. of your patented article.

An applicant may only mark an article with “Patent Pending” once a patent application is filed with the Patent Office.  It is also pertinent to note that it is a criminal offense to mark or offer to sell an article as “Patent Pending,” when an application for the invention has not yet been filed.

In deciding how and where to mark articles as “Patent Pending”, a patent applicant should be mindful of the purpose of giving public notice and also use common sense.  For example, patent markings may be formed directly on the “Patent Pending” article by etching, molding, or printing, or if you are unable to place the marking on the article itself due to “the character of the article”, the notice may be provided on any packaging of the article, including the box and enclosed packaging papers, or marketing and promotional materials. In addition, there may be particular challenges that a patent applicant or patentee endures to properly mark an article.  For example, often times, labels may fall off of the articles in transit, etc.  The courts generally follow the “rule of reason” approach to hold that constructive notice is achieved when the patent applicant or patentee consistently marks substantially all of the articles.

Once a patent has been issued for the invention and you are a patentee rather than a patent applicant, the marking on the article should be changed from “Patent Pending” and instead be marked with the patent number and marked in the following manner: e.g., “U.S. Pat. No. X,XXX,XXX”, where your patent number is inserted therein.  Examples of the proper use of this patent number marking can be found on the products and packaging of many reputable manufacturers.

More recently, the America Invents Act (AIA) allows patented articles to be marked “virtually” by using the internet.  In order to comply with virtual marking requirements, the owner must mark the article itself, or the article packaging if it is not possible to mark the article, with the word “patent” or “pat.” along with a freely-accessible, internet address where one can find the patent numbers applicable to the patented article.  Virtual marking provides certain advantages including aesthetic appeal as well as being able to easily update and identify later issued patents relating to the article without having to remark the articles individually.  Instead, only a revision to the website page is needed.  Examples of virtual marking via internet webpages may be found here:  Examples of Virtual Marking

Please note that we recommend consulting with a patent attorney before moving forward with any marking or notice provisions.

Copyright 2013 Oliver & Grimsley, LLC

Disclaimer: The information provided in this article is not legal advice.  It cannot be such since legal advice must be tailored to the specific circumstances of each case, including the consideration of federal law and jurisdictional law that can vary greatly from state to state.  However, it is hoped that the information provided above will be helpful in familiarizing its readers with issues that may affect them.

Patent filing fee reduction strategies – micro entity status

Earlier this year, the United States Patent Office (USPTO) implemented a “Micro Entity” applicant status pursuant to the 2011 America Invents Act (AIA).  This rule allows qualifying applicants to receive a 75% fee reduction of certain fees—including fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and issued patents. See the USPTO Fee Schedule for a complete listing of fees.

An applicant may qualify for “Micro Entity Status” based on:  (1) experience and gross income; or (2) status as an Institution of Higher Education.

(1) Micro Entity Qualification Based on Experience and Gross Income:

An applicant must certify to the following four criteria:

  • Small Entity Status: The applicant qualifies as a small entity under 37 C.F.R 1.27 (generally, an entity that has less than 500 employees, see 13 CFR 121.802); and
  • No More than Four Previous Applications: The applicant or any joint inventor has not filed more than four previously filed US non-provisional patent applications (exceptions: applications filed in another country; international applications for which the National Stage fee 35 U.S.C. 41(a) was not paid – PCT applications which did not go past the International Stage; applications from a prior employment or assigned to the prior employer); and
  • Gross Income Limitation: The applicant or any listed inventor did not have a gross income for the previous year that was greater than $184,116.  The “Maximum Qualifying Gross Income” will change annually based upon median US household income.  Check the current USPTO Qualifying Gross Income eligibility fee; and
  • Grant of Rights (if any) must be to another Micro Entity: The applicant or any listed inventor has not promised, assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) to a non-micro entity.

(2) Micro Entity Qualification for Institution of Higher Education Status:

An applicant must certify to one of the following criteria:

  • Employee of Institution: The applicant is an employee of an Institution of Higher Education from which the applicant obtains the majority of the applicant’s income(Institution of Higher Education as defined in Section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)) (not the same as a “not for profit” or school); or
  • Grant of Rights to Institution: The applicant has assigned, granted, or conveyed a license or other ownership interest (or is obligated to do so) directly to the Institution of Higher Education itself (not a research institute, foundation or technology transfer office). ** Under the current USPTO rules, an assignee can be listed as the named application, however, in order to qualify for reduced micro entity fees, an Institution of Higher Education (with current or promised ownership interest) should list the inventors as the named as applicants until discrepancies in the law are resolved.

Moving forward, applicants can secure (or lose) reduced fees at anytime throughout the life of a filed application or issued patent.  Keep in mind that each time fees are paid the applicant must certify that it has “Micro Entity” status.  Therefore, it’s best to conduct to review of these requirements prior to each fee filing.

For more information on this topic, please contact Pamela K. Riewerts, Esq. (U.S. Registered Patent Attorney) at

Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols

Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols 

A common question among trademark owners is what’s the difference between the ™ symbol and the ® symbol and when can I use them on my trademarks.  It is also a common misconception that you have to obtain a federal trademark registration on your trademark before you can use the ™ symbol.  That is not the case.

You may use the ™ symbol on a trademark even though the trademark is not registered (or even applied for). Thus, whether you have a trademark application pending at the United States Patent and Trademark Office, but it has not reached registration yet, or you have yet to file a trademark application, you may use the ™ symbol on your trademark.  The ™ symbol is notice to others that you are using a word, phrase or logo as a trademark.  It also potentially wards off third parties from using the same or similar mark.  Thus, once you begin using a trademark on a good or service you are providing, you may use the ™ symbol on the mark (or the ℠ symbol if you prefer to distinguish a service mark although ™ may be used on trademarks used in connection with goods or services).  Note – although this is a whole new topic for another article, you should make sure that another party is not already using the same or similar trademark in the same, similar or related area before you begin using the trademark.

As for the ® symbol, you may use that once the U.S. Patent and Trademark office issues a registration for your trademark.  You should not to use the ® symbol on your trademark prior to obtaining a federal registration – such use is considered a misrepresentation to the public that you have a federally registered mark.  Upon registration, you may (and should) use the ® symbol on the trademark.

This ® symbol provides notice to others that you have a federal registration. It is important to note that the failure to include the ® symbol can potentially result in a limitation in damages that you would have been entitled to in a trademark infringement action as your damages could potentially run later. Thus, it is beneficial to include the ® registration symbol once the U.S. Patent & Trademark Office issues the registration to you.

For additional information, please contact Kim Grimsley at