Toting a Trademark

Coca-Cola's (KO) hourglass-shaped bottle. Absolut Vodka's widebodied, slim-necked vessel. These iconic silhouettes serve as distinctive symbols of their brands and are protected by registered trademarks. Such recognition by the U.S. Patent & Trademark Office is relatively rare. But in January a small Manhattan startup won the same protection. Built NY, now two and a half years old, successfully trademarked the shape of its first product: the Two-Bottle Tote.

Introduced in 2003, the neoprene wine carrier quickly garnered attention. It has won various accolades, including a 2004 Gold Award for Industrial Design Excellence (co-sponsored by BusinessWeek) and is sold at New York's Museum of Modern Art gift store, among other places. But the tote also caught the attention of copycats.

"We realized our Two-Bottle Tote was more than effective design. It is a symbol of the company," says Chief Executive Carter Weiss. "We knew it needed protection." That a small company like Built NY succeeded at the trademark office is a reminder of the power of strong design in building a brand.


  The Built NY phenomenon began with a simple problem. The three founders -- John Roscoe Swartz, a former furniture designer; Aaron Lown, who had designed fashion accessories for Kate Spade and Calvin Klein; and their business partner, Weiss -- set out to create a wine-bottle carrier that would fit a set of design criteria. "It had to be protective, ergonomic, reusable, inexpensive to manufacture and transport, and cost consumers only $20," says Swartz.

Swartz and Lown had recently designed an insulated bag with a leather exterior for a wine importer who was a mutual friend. The friend wanted a chic means of transporting his goods that would also protect the glass bottles from clanking together or breaking. Upon finishing the design favor, Swartz and Lown realized that for carrying wine to parties and restaurants, there was no bag available that was elegant yet youthful, protective yet economical. So they decided to come up with one.

"We solved the entire problem with the material," says Lown. Their simple solution was neoprene -- the inexpensive and often colorful fabric used for wet suits and known for its insulating properties and flexibility.


  Not only was the Two-Bottle Tote a hit, it was the beginning of a whole line of products. The initial concept -- a bag that could lie flat for easy storage, that could be cut simply from as little fabric as possible, and that possessed a unique and distinctive, playful shape -- could be adapted to more than just wine bottles. When Swartz and Lown discovered they were each using the insulated bags to carry bottles for their children, they decided to introduce a baby product.

Other items followed. Realizing that wine lovers usually also take food seriously, they took the original Two-Bottle Tote design, shrank one side for a single-serving of soda or water, and expanded the other side to accommodate a sandwich or Tupperware bowl.

Built NY now offers 16 products -- including the One-Bottle Tote and the Six Pack Tote for beer -- with a new all-purpose neoprene bag scheduled to hit stores in early March and four more new items by yearend. The company sold its millionth product in August, 2005, and expects to bring in $18 million in sales by the end of 2006, up from $600,000 in 2003. (It launched the trademarked Two-Bottle bag midyear.)


  These days, with a new product launch just weeks away, Built NY's SoHo office is abuzz. Employees, who now include 27 full-timers, move about frenetically among stacks of colorful neoprene prototypes and trade-show samples of the newest bag, which still carries the signature Built NY design cues. The handle, for example, is the same size as that of the original Two-Bottle Tote -- a detail that carries through the product line.

By trademarking the Two-Bottle Tote, Built NY is moving aggressively to ensure that the company receives credit -- and profits -- for its innovative designs. It has successfully settled, pre-registered-trademark, with a variety of international copycats. These include a major giftware and accessories company based in Yonkers, N.Y., that agreed to stop production and destroy inventory of knockoffs of Built NY's wine bags, and a 50-store chain in Denmark that agreed to cease and desist hawking imitations.

Weiss admits it wasn't easy to convince the trademark office. "When I pointed out that the U.S. Patent & Trademark Office's [museum] gift shop actually sold our wine-bottle bags, we had a good case," says Weiss, who adds that winning design awards and appearing in numerous magazine and newspaper articles were the true basis of their argument.

Why has such a simple product as the Two-Bottle Tote garnered so much attention in such a short amount of time? Design historians believe its clear function, and not only its clean form, is the key to its appeal. "The original Two-Bottle Tote is an interesting product, so functionally specific and worthy of a trademark," says Ellen Lupton, curator of contemporary design at New York's Cooper Hewitt, National Design Museum.


  But Lupton believes the highly adaptive form of the Two-Bottle Tote, evidenced in Built NY's growing line of products, could encourage competitors to riff on the winning design in ways that wouldn't be protected by the current trademark. "The variations on a theme prove the extendability of their original idea," she cautions.

In any case, Built NY is smart to be taking intellectual property seriously. Knockoffs are a problem for companies large and small. There are even "awards" given to the most egregious companies by Action Plagiarius, a group formed in 1977 to call attention to the problem. But while counterfeits can be expensive problems for large companies, they can be deadly for others.

"So many small companies are shut down simply because of intellectual-property problems," says Weiss. "They wait before dealing with trademarks and patents, and then a bigger company rips off their ideas and it's too late." Built NY is a small company now, but at the rate that it's growing, it might soon become a case study in successful big-brand intellectual property protection, too.

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