New Podcast Series: Episode 3

Susan Grossinger and Rainlight

In this episode, the third of a new series titled “Pithy Conversations with CEOs,” Trusted Counsel’s Evelyn Ashley and John Monahon speak to Susan Grossinger of Rainlight, a boutique product design studio in London and Los Angeles. Rainlight’s talented team of industrial designers create products in all areas of architecture and design that include,; carpeting, furniture, and very technical curtain wall systems. In other words, anything that touches the architecture or interiors of a building is within Rainlight’s realm. Susan explained to us during the interview, “We’re part lab, part workshop and part studio.” 

Never in a million years did Susan believe that she’d have a career in running a product design company, but she says it’s great as she finds objects and products fascinating. She has a great quote that says, “Product is about the individual and their interaction with an object. It is the most personal of the design disciplines. Whether it’s your eyeglasses, the chair you sit in, or your steering wheel, we have a visceral interaction with design that affects our day-to-day life. The opportunity that makes experience extraordinary is itself an exceptional experience.”

When we asked Susan what sets Rainlight apart from their competition, she was quick to reply. For Rainlight, it’s about taking the approach of business consulting. They consult their clients every step of the way and takes pride in being their clients’ confidant. Rainlight works alongside their clients to look at the broader picture in helping them be successful in the marketplace. For example, Rainlight will review renderings of newly designed products and explain to the client that the products are meant to pair the brand identity with the design of the client’s space. That branding is not simply a new logo of a website, the space and objects are crucial elements of the brand experience for their client’s customers. The discussion could segue to reviewing an element of the client’s marketing strategy and that’s exactly’s Rainlight’s approach, business consulting. At the end of the day, however, Susan reminded us that it’s about the products and making them work in the designated spaces.  

Susan was recently honored by the International Interior Design Association (IIDA) with a lifetime membership. She is a three-time judge of the Product Innovation Awards. When she’s not working she’s active in environmental and animal rights non-profits and has served on the Board of Directors for Heal the Bay in Santa, Monica, California for more than 15 years.

During the course of the podcast, CEOs, business owners, and C-level executives will learn:

  • About Susan and her background (which is not in architecture nor design)

  • Rainlight’s approach to working with clients in terms of “the process” for product design

  • Susan’s biggest challenge with running the business

  • Rainlight’s business priority of the year

  • Susan’s words of wisdom for show listeners

Don’t miss a single episode of our podcast show. Subscribe to our show “In Process Podcast” on iTunes and now on Google Play to receive this episode as well as future episodes to your smartphone.

Trade Dress

In addition to trademarks, trade dress is another way for a company to protect its reputation. While a trademark addresses the company’s brand, the trade dress refers to the characteristics of the visual appearance of a product or the product’s packaging. Many companies use distinctive packaging to distinguish their product from their competitor’s. Frequently, consumers can identify a product simply by looking at a silhouette of the box. Similarly, trade dress can be utilized to protect a building design associated with sales of a particular brand, such as a restaurant or a retail store.

One of the simplest ways to present a product to the consumer is to put it in a generic box with a logo and/or the product image. In this case, the marks used may be distinctive, and therefore protected, but the packaging of the product is generic and does not serve to distinguish the product in the eyes of the consumer. A more sophisticated strategy is designing a box of a specific shape and/or type of material. The trademarks would likely still be on the package, so the consumer could very easily ascertain what they were purchasing. The box itself would also be distinctive and therefore protectable as trade dress. This unique packaging may elicit a certain feeling in the consumer, thereby attracting them to the product and/or making it much easier to spot the particular brand on a shelf of competing products.

In the United States, the legal support for protecting trade dress is found in the Lanham Act. “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (A) is likely to cause confusion … as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities … shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.” 15 U.S.C. § 1125(a) (2016). According to the Trademark Manual of Examining Procedure (TMEP), § 1202.02 defines a trade dress as a “symbol” or ‘device’ within the meaning of § 2 of the Trademark Act.” (2017). The TMEP goes on to say that, although trade dress originally only referred to the packaging or “dressing” of a particular product, it now has been expanded to also include the design of the product.

Courts in the United States have defined trade dress as a product’s “total image” or “overall appearance” and “may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques.” John H. Harland Co. v. Clarke Checks, Inc., 771 F.2d 966, 980 (11th Cir. 1983). Of course, the shape of the product itself comprises the total image, but the product’s packaging or presentation is also part of the total image.

An example of packaging that is protected by trade dress is the Coca-Cola™ bottle. The Coca-Cola™ bottle has a distinctive shape. A beverage can be sold in any type of bottle, so the contours of the bottle are not functional. Without the logo, a consumer can still easily recognize the bottle shape as being associated with Coca-Cola™. Because Coca-Cola™ has obtained trade dress protection on the bottle, no other beverages may be sold using that bottle shape.

 Trade Dress protection on bottle

Trade Dress protection on bottle

 Building design protected by Trade Dress

Building design protected by Trade Dress

An example of a building that is protected by trade dress is the design adopted by restaurant Taco Cabana™. In fact, the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) established trade dress protection in the United States. In this case, the Supreme Court of the United States held that trade dress is inherently distinctive under the law. The Court held that a trade dress, “remain(s) inherently capable of distinguishing the goods of the users of these marks.” Two Pesos, 505 U.S. at 772.

The Ride™, an entertainment company offering tours in New York City, obtained trade dress protection in the United States, as well as other countries, for the exterior view of their tour bus. The United States Trademark number for the trade dress is 5,367,214, and the image of the trade dress appears below. As the image shows, the people on the bus are part of the trade dress – when people on the sidewalk see a bus that has passengers facing the sidewalk, this is an indication that the bus is associated with The Ride™. The trade dress registration can be examined in more detail at The United States Patent and Trace Mark Office.

 Trade dress protection on buses

Trade dress protection on buses

To register a trade dress with the United States Patent and Trademark Office, the requirements are the same as they are for a trademark: the trade dress must be distinctive and non-functional. The process required to register a trade dress is the same as the process required to register a trademark, and the examination standards are the same. If a trade dress is not registered, regional protection may be proven in court if the plaintiff is able to show that the trade dress has acquired secondary meaning in the eyes of the consumer. Registering a trade dress, however, provides national protection without the necessity of showing secondary meaning.

Another aspect of trade dress is the potential confusion with design patents.. Trade dress and design patent are actually just various ways to protect a design - it is possible for a particular design to be protected by both a trade dress and a design patent. As described above, because trade dress falls under trademark, a trade dress may not be functional. Accordingly, “if a feature of the trade dress is ‘essential to the use or purpose of the article or if it affects the cost or quality of the article,’” the feature may not be part of a protected trade dress. (TMEP § 1202.02(a), citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). Similarly, a design patent is available for a new, original, and ornamental design for an article of manufacture. 35 U.S.C. § 171. If a company has obtained a design patent on a design, the design patent provides support for the argument that the design is ornamental, or non-functional. Accordingly, the existence of a design patent may be used as evidence that the design may be registered as a trade dress. TMEP § 1202.02(a)(v)(A) (2017).[1]

A significant investment to develop unique packaging = significant benefits. A distinctive trade dress may elevate the brand in the market thereby increasing sales and/or allowing the company to increase price . A distinctive trade dress may also make it easier to distinguish a commodity from a similar product sold by a competitor, thereby allowing a company to build brand loyalty in an otherwise competitive market. Accordingly, developing a trade dress is an important strategy for the modern sophisticated business. If the company takes the time and resources to develop the trade dress, it is a simple matter of protecting the trade dress under modern trademark law.

If you have any questions or comments regarding trade dress, please contact Tammy Tanner, Attorney at Trusted Counsel, Atlanta, Georgia (ttanner@trusted-counsel.com). Tammy Tanner has a strong background in intellectual property and technology transactions. She advises clients on structuring strategy, implementation and management of intellectual property legal issues (domestic and international) as well as brand protection, including building creative protection. Tammy graduated from Jacksonville University with a B.S. in applied mathematics and obtained her J.D. from Emory University in Atlanta, Georgia.

About Trusted Counsel

Trusted Counsel (Ashley), LLC provides seasoned, practical and confidential legal services for businesses. Based in Atlanta, this corporate and intellectual property law firm is dedicated to serving the unique needs of companies, investors and legal departments. Trusted Counsel’s attorneys make a difference. Their focus is to guide and empower clients with exceptional legal counsel, knowledge and tools that lead to practical, informed business decisions. Trusted Counsel’s Managing Partner Evelyn Ashley and Partner John Monahon co-host “In Process: Conversations about Business in the 21st Century,” a podcast where national guests are interviewed on emerging business trends, ideas and techniques. Visit trusted-counsel.com for more information.

[1] The reasons for obtaining both trade dress protection and design patent protection on a design are partially economic in nature. Some of the value of a brand lies in the development of the intellectual property protecting the brand. Accordingly, the more types of intellectual property registered to protect a design, the more valuable the design. Additionally, obtaining various types of intellectual property may provide additional leverage against potential infringers of the product.

New Podcast Series: Episode 2

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In this episode, second of a new series titled “Pithy Conversations with CEOs,” Trusted Counsel’s Evelyn Ashley and John Monahon speak to Liz Harvey, CEO of Island Windjammers. Island Windjammers provides cruises in the Eastern Caribbean to seasoned travelers, the kind who’d likely turn their back on overcrowded massive impersonal cruise lines. Liz's guests cruise on any of the three Island Windjammer’s ships; Diamant, Sagitta, or Vela, and happily spend their recreational dollars for the experience of smaller ships (10 – 26 guests). Experiences include; visits to smaller islands in the Caribbean, exploring quaint villages, and having more personal activities such as snorkeling and beach barbecues. 

Incorporated in 2008 by principal founder Liz and a small group of investors, today, a large part of the ships fan base have invested in the company under Rule 506(c). We commented to Liz (whose past full-time job was as an operating room nurse) the idea that she’s raised capital in a very innovative way. Liz simply shrugged her shoulders and stated simply “Well, I’d never raised money before so I didn’t know how it was done. I just did it one way.”

The conversation with Trusted Counsel revolved around how Liz started the business, what she’s learned with respect to running a seasonal business, virtual management, and her sharp focus on the future. Success for Island Windjammers is all three ships averaging 80 percent or better occupancy over the course of the year. In 2017, when Caribbean tourism drastically decreased due to Hurricanes Irma and Maria, survival was difficult for Island Windjammers. Rather than throwing her hands up in the air and doing nothing, Liz and her team started a GoFundMe page. Using the small yacht, she and her team collected and sent relief items to ravished islands, and anything to help out. “Those are our friends out there too.  Friends of our crew member’s families, it really hit pretty close to home,” Liz told us. 

When Liz is not busy managing her business virtually, you can find her at Roswell Surgery Center in Georgia. Yes, she’s still an operating room nurse who’s always willing to help, although she’s no longer working there full-time.    

During the course of the podcast, CEOs, business owners, and C-level executives will learn:

  • What led Liz to form Island Windjammers
  • Her best tactic for marketing the business
  • How she's able to manage her team virtually from the United States
  • Her experience with fundraising and taking advantage of Rule 506(c) 
  • How she managed to solidify her business when 2017 hurricanes hit hard and nearly decimated her ships and the business

Don’t miss a single episode of our podcast show. Subscribe to our show “In Process Podcast” on iTunes and now on Google Play to receive this episode as well as future episodes to your smartphone.

GDPR Update: Your Questions Answered About GDPR and Data Privacy

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In this episode of podcast In Process: Conversations About Businesses in the 21st Century, Trusted Counsel’s Evelyn Ashley and John Monahon speak to Michael Jones, Attorney at Trusted Counsel, whose practice specializes in privacy, compliance and technology licensing. Michael discusses the latest developments regarding the EU General Data Protection Regulation (GDPR), the California Consumer Privacy Act (CCPA), and data privacy in the United States. This blog post and podcast continue discussion of two earlier blog posts; The EU General Data Protection Regulation and The California Consumer Privacy Act.

As you probably already know, the GDPR entered into effect on May 25, 2018. By now you’ve most likely been bombarded with emails from various vendors stating their privacy policies are updated. What you might not know is that the driving force behind this flurry of email activity is the GDPR. A key requirement of the GDPR is that customers and other users must be notified of certain changes to privacy policies. The goal of the GDPR is to allow individuals to have greater control over how their personal information is processed by organizations. And although the GDPR is a European Union regulation, many U.S. businesses are discovering that they may have certain obligations under the law. If you are a U.S. business providing goods or services to individuals in the EU (even through other businesses), you should undergo a thorough review of how you access, store and use your data. 

“If you are quick to dismiss the GDPR due to the idea that it is an EU regulation, really think it through,” Michael says. “What’s really striking about the GDPR is its extraterritorial effect. By this I mean the idea that it protects the personal information of EU residents. A business can process, hold, maintain, and use the personal information of EU residents even if they’re not living in the EU. In other words, the individual could be located in the state of Georgia, or anywhere in the world. In this example, it applies to your business.”

About a month after the GDPR went into effect, the California Legislature passed the CCPA, which has suddenly become the gold standard for privacy legislation in the United States. It imposes requirements much like those imposed by the GDPR, but it doesn’t go into effect until January 1, 2020. Much like the GDPR, you might be thinking that you’re not affected because you don’t have a business in California. But look at it this way, chances are that somewhere in your database, you’ve obtained the personal information of at least one California resident with whom you do business. And, if California just passed this legislation, could other states soon follow suit? Yes, they will.

Businesses need to prepare now, and here’s what you need to do:

  • Read our past blog posts on GDPR and CCPA (each includes detailed and important questions to ask yourself)
  • Listen to the entire conversation by clicking the audio player below
  • Identify the employees in your company that know where your data is. Get them together, put together a team and start talking about how your organization collects personal data.
  • Take good notes and document everything
  • Contact Trusted Counsel with questions. We can help you put together a compliance plan if needed. This will allow you to not only be in compliance now, but also to stay in compliance. 

During the course of the podcast, CEOs, business owners, and C-level executives will learn:

  • The difference between the GDPR and the CCPA
  • What questions businesses should be asking themselves regarding GDPR
  • Internal steps a business should take right now to become compliant
  • Legal advice for organizations that are reviewing their data privacy policies and procedures and their compliance risks
  • Commentary regarding the future of data privacy in the U.S.

Stream the conversation in the player below to learn more. You can also subscribe to In Process Podcast to receive this episode as well as future updates from the show on your smartphone. If you have any questions or comments regarding the GDPR, the CCPA, data privacy and your compliance efforts, please contact Michael Jones with Trusted Counsel. You may reach him at 404-400-3886 or email him at mjones@trusted-counsel.com.

New Podcast Series

Modo Modo Podcast Image_No TC Logo.jpg

In this first episode of a new series titled “Pithy Conversations with CEOs,” Trusted Counsel’s Evelyn Ashley and John Monahon spoke to Moira Vetter, CEO and Founder of Modo Modo Agency, an award winning creative marketing firm with deep experience in B2B and complex go-to-market challenges. Moira’s business career began when she entered the corporate world as a temp where she was placed in a high growth technology company. She stated, “I was a very formative creature and I really had a great opportunity to come up under some interesting leaders.”

Two decades later, in 2007, Moira went on to establish Modo Modo. Today her agency is an Inc. 5,000 firm and she has aggressive plans to grow to $10 million in revenue and employee 100 people by 2023. As of this writing, Modo Modo has 26 employees. Moira is a weekly contributor of Forbes and the author of AdVenture, An Outsider’s Inside View of Getting an Entrepreneur to Market. She is a past president of American Marketing Association, a founding member of a social change action tank, and serves on Zoo Atlanta  Leadership Council.

The conversation with Trusted Counsel revolved around the company culture, the management team and how they are growing the company. Her role today is changing as she approaches a milestone birthday (she wants to coach and mentor more). With that in mind, she’s charged her team with planning and scaling the agency. Lastly, Moira gave us her pithy brutal advice to new CEOs out there, but ended it on a very positive note. Her parting thoughts were, “When you create your own company, absolutely anything is possible right? You truly can create, it’s the American dream. You cannot do it when you are working for someone else, it is an opportunity. It is the point, right? It was the point for me.”

During the course of the podcast CEOs, business owners, and C-level executives will learn:

  • What led Moira to form Modo Modo
  • Why Modo Modo's company culture of high performance works
  • What's changing in her CEO role as she approaches a milestone birthday
  • Her aggressive plans to grow the company
  • Moira's advice for new CEOs

Don’t miss a single episode of our podcast show. Subscribe to our show “In Process Podcast” on iTunes and now of Google Play to receive this episode as well as future episodes to your smartphone.