Patent Infringement: Shotgun Concho Dog Collar

[HellcatLeathers]

Hey y'all! I just thought I'd bring this to your attention. This morning, I received an email from a "Adam Benjamin" at grizzlycollars@yahoo.com. He forwarded one email to about 7 different makers and I was one of them.

I've never heard of this guy, he's not on any of the Facebook leather pages I am on and I couldn't find him on here either. Anyway, he wrote me an email which said:

"My name is Adam Benjamin. I currently hold a Design Patent for a product that you are manufacturing. Please contact me as soon as possible regarding this matter. I would willing to discuss a amicable solution, I look forward to hearing from you. Thank You."

And I responded with this:

"Hi Adam,

I am a hobbyist leathersmith, so I don't do this full time or own a shop.

Please email me several pictures, a description of your product with size and material specifications and copies of your patent records and I will gladly take a look at them.

Every item I make is by hand one at a time. I so not use patterns or templates nor so I mass-manufacture anything.

I am pretty sure we're not even in the same league, but I'll take a look at what you are referring to.

Thanks!

Maria"

So I'm waiting to hear how he replies. In the meantime, I can't find a website for him anywhere...no Etsy store either. So I went to the patent office online and started researching. The guy actually has a patent for a "band with spaced bullet cartridge elements". So it's just a band with evenly spaced 12 gauge shotgun conchos you can buy from Tandy and about a hundred other places. I wonder if he even makes these or is he one of those people who patent a bunch of simple objects and then gets in touch with people who unknowingly make them and then he says "we can take care of this amicably" and then wants a percentage of your profits.

I am attaching the copy of the patent I found online.

The funny thing is, I didn't even infringe on his patent as my collar has brass dome rivets in-between each concho and I only have (1) of them for sale in my Etsy shop.

So, I'm just letting everyone know, don't bother making a plain dog collar with evenly spaced shotgun conchos on it, because this guy will contact you. Thanks.

Anybody have this happen before?

[tnawrot2]

I don't know the legality of this , but the patent is for bullet cartridge element. A cartridge is the casing in which primer, powder and a bullet is used. A 12 gauge is a SHELL in which primer, powder and SHOT is used. He doesn't have a picture of the "bullet cartridge elements". Maybe you should get a patent for "shotgun shell conchos"

[veedub3]

I looked at the attached image on his patent and I took a look at yours on your site. I guess one can say they are similar but to me that is in no way infringement. Yours have and additional element. Depending on the type of patent he holds, one can take a product and improve upon it without infringement which would include for example, the additional element, a wider band, etc.

I think you responded in the proper manner, although being a hobbyist or doing them one by one by hand does not matter, (you only have to sell one), I too would have requested detailed information on his product.

When he made the statement "we can take care of this amicably" I immediately thought that this guy is just trying to dupe people that are not knowledgeable on the subject, but that's just me.

When/if he contacts you again, tell him that you requested the detailed information on his product so that your Attorney may review it, just to see what response you get. I would then contact an IP Attorney, (usually they will give you a free phone consultation) and see what he says.

Good Luck with it all!

Karina

[atcspaul]

personally i would ignore him. patents are pretty exact and if yours is just a little different then i do not believe he has a case. plus it will cost him a good amount of money to pursue it.

[BearMan]

Hi Maria, I'm not a patent lawyer, but there is a lot of good info, that can be easily found. There are a few different types of Patents. A "Design" patent is the least protected type of patent as any change to the design, does not infringe on the patent. Here is a bit of info from a patent site: Detriments of Design Patents

• Design patents do not protect the functional features of an invention (most inventions have functional features).
  
• Design patents can be relatively easy to design around by simply changing the overall appearance of the competing product.
  
• Difficult to protect different variations product. So, the way I see it, is that unless you are making an exact copy of his design, there shouldn't be a problem. Here is the site where the info came from: http://www.patent-ideas.com/Design-Utility-Patents/Design-Patent-vs-Utility-Patent.aspx
  

[ChuckBurrows]

_{It's mainly a type of scam that has been ongoing for some years now - people do these patents and then go out and "charge" people with infringement in order to make money.. it happened with wed designers a few years ago and was all the rage - unless your piece is an exacting copy of his patent you are basically safe although he can try and cost you money but that's the scam - they settle "amicably" by you sending them a chunk of change - I had it happen to me some years ago and told them to get stuffed after discussing it with a patent lawyer which cost me $50.00 (they wanted $10,000.00 grand with on going payments) ...haven't heard from them since after the lawyer sent a letter as part of the charges.. it may go higher but I doubt it, especially if he doesn't respond in a professional manner}

Edited May 12, 2013 by ChuckBurrows

[BearMan]

After doing some more research, it looks like he could have a problem if he tries to push the matter on you. Some recent Patent laws show that his patent could be deemed "unpatentable" if it can be shown that it's not a unique enough design. Here is the info, from the same site as before: Post-Grant Review

Any patent issued from a patent application governed by the new first-to-file provisions will be subject to a post grant review. For patents issued from a patent application filed before March 16, 2013, a post-grant review may be utilized for a few classes such as business method patents. To initiate a post-grant review, a third-party must file a request for post-grant review within nine (9) months of the issue date of the patent establishing that (i) at least one claim of the patent is more likely than not to be declared unpatentable or (ii) that the request raises a novel or unsettled legal question that is important to other patents or patent applications. In essence, post-grant review may be sought on any grounds that may be used to challenge the validity of a patent claim. Check it for yourself,,, & make your own determination, as I'm not attempting to give legal advise,,, just info.

[Cyberthrasher]

I don't really have much experience with patents. But, I'm pretty sure that Ed nailed it. Talk to an attorney and get their thoughts, but I don't see anything about that that's really patentable. One good way to prove that he didn't "invent" that design is to find an example of it that pre-dates 2011. If someone else was already manufacturing something with that "design", then it's obvious he didn't invent it. I do know that there are "first-to-patent" laws, but this is only a step above patenting a plain dog collar with nothing on it and saying you invented the design for the dog collar.

For reference - here's someone who was making them in 2010 - predating his "invention"

http://www.dobermantalk.com/doberman-related-chat/48970-ginos-new-collar-pictures.html

[HellcatLeathers]

Thanks y'all for all the advice and comments. I work at a law firm, so I'm going to talk to one of our attorneys. If he was a leatherworker, you would think he would have a website somewhere. I have a hunch he's looking for a payout. I made one collar for one customer and I haven't even sold it. I might just remove it from my Etsy page and put it on one of my dogs and call it a day. LOL.

[Frank]

I was going to say that it sounds like a scam as well, to get you to pay "royalties"

[camano ridge]

Don't be detered from free enterprise by some scam artist. The shotshell casing end decoration was not invented by him they have been for sale for many years. THe purpouse for them was to adorn leather crafts of all types. They have been put on everything from belts to holsters to purses and yes even dog collars. I did one like that for a duck hunter back in about 2006 and have done a few since then. It is such a basic design element that I would never have thought of patening it simply because I put a concho on a strip of leather. I believe that person would have a hard time defending it as his original design. You want to sell it sell it (not legal advice just what I would do). If it is a scam that person is unlikely to spend the money on attorney to pursue you. It looks like they are just hoping you are an easy mark and can get money from you without earning it.

[HellcatLeathers]

Okay, he wrote me back the following:

"At the moment I too make all of my products by hand. I drive an 89 Nissan pick up. A few years ago I began the patent process, knowing as time went on that people were begining to make my product but under the advise of my lawyers I have waited until the patent was completely finished to begin this end of the process. If you would like to continue to carry this design I am willing to license you to do so if we can come to agreeable terms. Thank You."

I then responded with:

"Hi Adam,

You haven't provided me with copies of your patent papers which should include pictures and exact specifications of your "design". How can I stop making them if I don't even know what they look like? I might not even be making your design. I am sure I can find them online, but since you brought this to everyone's attention, it would be nice if you provided the documentation you say you have.

Please don't waste my time or the time of the other leather workers you emailed. Time is money.

By the way, my full time job is at a law firm, so I am a little familiar with the patent process.

Please provide the info I requested, and I won't make your design going forward. No problem.

Thanks,

Maria"

He then responded with:

"My patent is for a band having spaced bullet cartridge elements as the attachment that I put on the last email would explain. I sent you another copy of my Issuance Notification, with the patent number on it, the actual Ribbon is sent in physical form. You are correct that it is public information, and you can look up the specifics yourself if you would like. Ill simplify it a bit for you though, any type of band that has bullet cartridge elements on it, ie... dog collars with shotgun shell conchos in any size or variation, belts, hatband, etc. On a personal note dont tell me what to do with my time, I too am a leather worker, I also build houses, and have a family, so I know full well the value of time. Thank you and have a pleasant day."

I then responded with:

"Hi Adam,I didn't get the first attachment, so thanks for sending it again. Upon reviewing it, it isn't a copy of your patent...it is a copy of the patent issuance letter. I still don't know what your item looks like. Since you hold a "design patent" it is imperative to know what the design actually looks like so I can ensure I don't replicate it. Can you please provide a picture of your design?

Thanks!

So....long story short....he's just fishing for licensing fees and hasn't provided any photos of his "design" at all! Aggravating to have to waste time on this.

Edited May 14, 2013 by HellcatLeathers

[Cyberthrasher]

The best part about that is that he thinks he owns a patent on anything with bullet cartridge elements!!!

"any type of band that has bullet cartridge elements on it, ie... dog collars with shotgun shell conchos in any size or variation, belts, hatband, etc."

So, he now owns the patent on any and every cartridge belt ever made, all the guitar straps that were ever made with bullet loops, and anything else that's in "band" form which contains something that would go on a bullet. Think about all those 80's rockers that copied his future patent by putting "bullet cartridge elements" on their belts and everything else!! Oh wait, you can't manufacture that rifle sling with bullet loops, this guy owns the patent on it. This is the kind of thing that would make me want to figure out how to file a formal challenge on it. It's the principal of the matter and it's a blatant abuse of the systems that were put in place to protect honest entrepreneurs.

[dirtclod]

So now i'm wondering if the people that make the conchos are violating his patent by making the conchos available to the public....HUMMM. If that's the case i guess he should be sueing them to...LOL.

[camano ridge]

I did notice that in the thumbnail of the design patten it says as shown below. Well what is shown below is 7 conchos on a band so use any number except 7 and you are not infringing on his patten

[MakerUnknown]

I guess I would tell him that you want a letter in the mail from his attorney on a letterhead explaining this. Time to cut him out of the picture.

Edited May 14, 2013 by MakerUnknown

[penguineer]

Definitely sounds like a troll. You'll find the cost of settlement is less than the cost of getting a lawyer involved(at which point the troll often walks away).

I think someone should do a bit of community service and take it to Tandy - let them know that their customers could be sued for using their products and they may be infringing by continuing to promote use of their products in this way(they have videos on leathercraftlibrary for steampunk wristbands using bullet/shotshell conchos).

Perhaps I should patent "use of braided, twisted or woven material, natural or artificial, to attach two pieces of leather by a method of interweaving or knotting said material through holes in the leather". I'm willing to start taking settlement payments at $1000.....

I'm thinking perhaps it might be worth it having a look at fightcopyrighttrolls.com or dietrolldie.com - the guys over there are a bit more familiar with the issues, can tell you if you've got a problem and ways to deal with it. Unfortunately, from what I've heard, the best way to deal with these sorts of things is to not respond in the first place.....

The whole thing works by having reasonable people try to sort things out like reasonable people....

Cheers!

Edited May 14, 2013 by penguineer

[HellcatLeathers]

I received another email from Adam today:

"Again any type of band ie bracelet, collar, belt, hatband, choker, guitar strap, gun strap, with the round end of a bullet in any way used in the making. currently you are making dog collars with a 12 ga concho, that or anything like that. Pat # D677 191. I am a very busy person, look it up on the USPTO website if you want to see the drawings. This is the last of my communication to you. If necessary the next response will be a notice from my lawyer. Please take any reference to my product off the websites, and cease to manufacter any product that consist of any kind of band with bullet elements that are facing forward.Thank You."

I was angry at this point. I emailed Tandy Leather on their website and would you believe that I actually got a response within a couple hours? I even got an email this evening from the Senior Vice President. He thanked me for my email and asked that I give him a day or two and he would get back with me.

In the meantime, I received an email from a fellow leatherworker that Adam had also emailed. Paul from M&F Western Products. He emailed Adam the following:

Dear Adam,

We have been doing a band with spaced bullet cartridge elements in various forms for approximately 10 years which would predate your patent filing. It looks like you are the one infringing upon M & F Western Products.

If you would like you can have your patent attorney call me.

Thanks

Paul Eddins

M & F Western Product

LOL. So at this point, I'm going to see what Tandy says and I think I'm not going to respond to him any further.

[Frank]

I looked at the "patent" and stating the obvious, he says that it includes bullet cartridge elements and a concho that you purchase from Tandy or any other place, was never a bullet, shell, or cartridge at any time. So, it does not contain cartridge elements.

The other thing being, if anyone has a photo of a cartridge concho belt, band, collar, etc. that was added to their website prior to 2011, you can blow this guy completely out of the water as infringing on prior art. Tandy can do the same since they had these conchos to be used on leather "bands" prior to this guy.

That being said, just do not use the same number of conchos that he has shown on the drawing.

[ChuckBurrows]

Yep appears to be a scammer as I noted above and as normal he's going after the little guys who he figures won't know better- here's a Google search for shotgun shell conchos - note some of the makers/sellers of his so-called patented item are big time like Nocona, Browning, Sheplers, Roper, and Mossy Oak, bet their lawyer won't deal - might be worth while spreading the word..... https://www.google.c...erp.0IeU4G1Jw2M unfortunately the current Patent Office has been real lax in back checking whether something is really patentable - they just collect the money and.....

Edited May 15, 2013 by ChuckBurrows

[veedub3]

This guy is a joke! He couldn't possibly think he has a patent on any and every leather strap made with bullet conchos on it. Not to mention, he did not start his patent process until 2011, and it was not approved until March 2013; use in commerce would supercede this as I am sure dog collars with bullet conchos were in the market place looooooong before he started his patent process. All one would have to do is show the sale of a dog collar with a bullet concho on it before his patent was approved and there would be nothing he could do about it. I am amazed they even approved a patent on this. If I worked in a law firm I would definitely ask the question to be sure, just curious, but why have you not done that yet? Personally I think this guy is full of it.

Karina

[penguineer]

This guy is a joke! He couldn't possibly think he has a patent on any and every leather strap made with bullet conchos on it. Not to mention, he did not start his patent process until 2011, and it was not approved until March 2013; use in commerce would supercede this as I am sure dog collars with bullet conchos were in the market place looooooong before he started his patent process. All one would have to do is show the sale of a dog collar with a bullet concho on it before his patent was approved and there would be nothing he could do about it.

That is the way it's supposed to work. Turn up to court and present your prior art - no problem. Of course, that probably costs more than the settlement and maybe a "license". The ability of the patent holder to shop the courts for a nice venue also helps dissuade people fighting these things - apparently courts in East Texas are quite amenable.

I am amazed they even approved a patent on this. If I worked in a law firm I would definitely ask the question to be sure, just curious, but why have you not done that yet? Personally I think this guy is full of it.

Karina

The law firm does what the client wants. The patent office ensures that there is no obvious conflict with any other patent and that the patent was correctly filed. If there are problems they'll end up in court. What's the problem - it all makes sense to the lawyers.

An attempt to improve the patent system in Australia by introducing "innovation patents" resulted in an approved filing for "circular transportation device".......

Cheers!

[J Allen]

What a tool. The first leather item I ever made... back in 2004 was a bracelet with shotgun conchos. Unfortunately I have no photos.

Next thing he will patent is a "leather currency holder with recessed artistic impressions" then claim he invented the carved wallet.

I'd love to see a ton of leatherworkers rise up and create a band with bullet elements. Just bombard this turd with potential litigants and he wont be able to fight everyone. Not defending EVERY attempt will also void his patent or discourage him from trying to prey on people.

[camano ridge]

Personally I believe the best way to deal with this guy is to post his email address here. We will all be happy to let him know what we think of his patent.

Detriments of Design Patents

• Design patents do not protect the functional features of an invention (most inventions have functional features).
  
• Design patents can be relatively easy to design around by simply changing the overall appearance of the competing product.
  
• Difficult to protect different variations of product.
  

Edited May 15, 2013 by camano ridge

[Cyberthrasher]

I'd love to see a ton of leatherworkers rise up and create a band with bullet elements. Just bombard this turd with potential litigants and he wont be able to fight everyone. Not defending EVERY attempt will also void his patent or discourage him from trying to prey on people.

Actually that was a thought I had yesterday. We could all tool the words "bullet cartridge elements" on a strap and say "now THIS is infringing on your patent!!"