Wheel / patent advice / help request

[Wil Ferch]

(Reposting this here in addition to the other general topic forum. If that violates rules, moderators, please advise and I will adjust).
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Folks. Been gone from this website for some time now since the Carrera left me some time back ( !) .... but thought to seek some help and advice here. Thanks for listening.

My good friend "John" has invested a lot of time and money to get a new wheel design accepted and off the gound for Mercedes-Benz models. Who knows, if successful, he may branch out into BMW and Porsche wheels.

Here's his question.... quoted directly from several emails sent to me. I offered to put this in front of the Pelican community if anyone has advice on how he can break-through the barriers he is finding to discuss his ideas further--->
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He says--->
I have been actively working on some inventions and have received four patents now with another one getting very close to completion. Being a car enthusiast you should find my car wheel patents of interest, look up InnovativeWheelDesigns. I have been trying to break through Mercedes-Benz gate keepers to get to a decision maker on these US and EU wheel patents but haven't been able to get to the right person yet. I have emailed the patent group in Germany and had the deisgns pasted on but no response back in three or four months. Two weekends ago I sent "Contact Us" responses to all 350+/- Mercedes-Benz US dealerships asking them to look at this website and if they liked the designs contact their German contacts, but in most cases my emailed information got cut off and I got sales responses back about new cars. If you have any ideas on how to get through 285,000 Mercedes-Benz employees with decision makers in Germany let me know. I have found the three main Mercedes-Benz wheel manufactures, trying to back door through them, but again haven't broke through to the right people yet.
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Later.... he also says this--->

My plan has been to patent the design using a "Plurality of Three Legged Equilateral Stars" (Mercedes-Benz Star) and then either get Mercedes-Benz (MB) or a third party wheel manufacture to do the detailed design, build prototypes, and test to meet EUWA - Association of European Wheel Manufacturers (TÜV SÜD), UN/ECE 124 standards.

The three manufactures I am told manufacture for MB are; BBS (German location) with this contact email address: sales@bbs-usa.com, OZ ( German and Italian company) with contact email address: info@oz-racing.de, and Borbet (German and Mexican company) with contact email address: info@borbet-solingen.de. I emailed all of the above, about eight weeks ago but have not heard anything back from them yet. Can you think of an approach to get them to at least email back?

I've invested a lot of time and expense, PE Engineers, designers, and two patent attorney's to get both US and EU patents, so I'd like to be able to monetize these efforts. My plan if successful is you give one half of any proceeds to charities and use the other half for further patent work.
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So guys... sorry for the length of this.... but does anyone have a suggestion how my friend John can proceed? Many thanks.
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[deanp]

No advice here, but surprised that there were design patents issued using a plurality of the trademarked three pointed star that Mercedes has used since the early 1900's.

There's evidence (prior art) of the star being used without the ring, and in plurality on a steering wheel in this collection of posters, ads and logo art:

https://emercedesbenz.com/autos/mercedes-benz/classic/the-true-story-behind-the-mercedes-benz-three-pointed-star/
'

[stomachmonkey]

Originally Posted by deanp

No advice here, but surprised that there were design patents issued using a plurality of the trademarked three pointed star that Mercedes has used since the early 1900's.

There's evidence (prior art) of the star being used without the ring, and in plurality on a steering wheel in this collection of posters, ads and logo art:

https://emercedesbenz.com/autos/mercedes-benz/classic/the-true-story-behind-the-mercedes-benz-three-pointed-star/
'

Had the same exact thought.

Friend may be provoking a trademark infringement case here.

Beyond that, why would MB care about a 3rd party wheel design that is purely aesthetic and provides no technological advantage or benefit to them?

Not trying to sound harsh but there is virtually zero chance a MB consumer will not buy one because of the wheel design.

Put another way, unlikely friends product will increase sales.

Why would any manufacturer be interested in a royalty arrangement that will never impact the bottom line in a positive way?

If people like the wheel they'll buy it aftermarket.

Friend is barking up the wrong tree and potentially causing more trouble for himself than it's worth by calling attention to his designs.

[stomachmonkey]

Oh, and FWIW, because we deal with this in our space.

The reason no one has acknowledged his outreach is because they are almost certainly prohibited from doing so.

Companies with IP exposure do not want to see outside submissions because for all anyone knows they may already be working on something similar and when they release it they avoid claims of IP theft.

Can't tell you how often we were developing a game that the public had no knowledge of and we received unsolicited game concepts that contained similarities.

If you acknowledge the unsolicited submission it just lends credibility to their claim.

[bkreigsr]

Wil's 'time-out is officially over?

[Sooner or later]

I don't think "John" is going to make a dime.

[vlocci]

Wil

I've got 20+ years as a patent attorney and a similar amount of time running a manufacturing business that has worked with most of the big car manufacturers. I've seen both sides first hand and have effectively licensed a pile of technology to folks who initially wanted nothing to do with it.

I expect the are some facts missing but would suggest your buddy is attacking this problem from the wrong side. At present he is seemingly introducing a significant element of risk for (near) zero liklihood of success.

I'm happy to share my experiences offline. Shoot me a pm oif he is interested and we can spend 30 min on the phone.

Vin


Sent from my Pixel 2 using Tapatalk

[Zeke]

Originally Posted by stomachmonkey

Had the same exact thought.

Friend may be provoking a trademark infringement case here.

Beyond that, why would MB care about a 3rd party wheel design that is purely aesthetic and provides no technological advantage or benefit to them?

Not trying to sound harsh but there is virtually zero chance a MB consumer will not buy one because of the wheel design.

Put another way, unlikely friends product will increase sales.

Why would any manufacturer be interested in a royalty arrangement that will never impact the bottom line in a positive way?

If people like the wheel they'll buy it aftermarket.

Friend is barking up the wrong tree and potentially causing more trouble for himself than it's worth by calling attention to his designs.

Given those, I might not.

[asphaltgambler]

^^^^^^ That's the answer^^^.

Perhaps he needs to realign his idea / design directly to consumer. From the story above, I'm not sure why he persists directly with MB

[Wil Ferch]

He is not "persisting" with MB....,he is using them as one (of many) possible entry points, including the aftermarket wheel manufacturers he says he contacted.

[deanp]

The aftermarket companies may be looking a them and don't want the exposure to trademark infringement claims by MB.

[stealthn]

Sadly this is infringement, he will be sued to kingdom come and the patents will become Mercedes...

[Wil Ferch]

He's been in contact with patent and trademark lawyers on both sides of the pond. There is obviously much more backstory to all this, in order to keep the text length down on the original inquiry.

Maybe we all take a momentary breather on this as to infringement opinion.... I'll attempt to put buddy "John " in direct contact with "Vlocci" who responded above....he having both legal/lawyer background and auto manufacturing experience.. so let's give these two a chance to chat and maybe we all come back here if they end up stalemated, or such.

Thanks guys.....

[MRM]

Mercedes will not buy John's wheels or wheel idea. That is not how car manufacturers work. If he wants to develop and sell his invention he needs to sell it directly to consumers as an after market wheel. He would have to put together all the specifications and have someone in China or Japan manufacture them. He would put up a web site where people can order them and they would be drop shipped to the customer. Eventually he might get enough of a following to establish his brand. But there is no way an OEM component manufacturer or the final product manufacturer are even going to talk to him, let alone think of buying from him.

[Wil Ferch]

Again....I have no dog in this fight....just trying to help a friend get a toe-hold on this idea where-ever he can gain one. Being a M-B wheel, he tried M-B first. As is clearly stated in my opening remarks, he also approached BBS and other suppliers, either as OEM suppliers or aftermarket wheel suppliers....separately.

Aside....he also said this, after he had a slew of patent and trade mark attorneys on both sides of the Atlantic look at this, for them all to pronounce---> " This image only consists of simple geometric shapes or text. It does not meet the threshold of originality needed for copyright protection, and is therefore in the public domain.

As I said, he is looking for help or guidance on where to move forward, and I suggest we let John and "Vlocci" (see his post above) talk it out. I think we can sit this out until those talks happen and if John is thereafter looking for further advice if stalemated. I think this will reduce the level of churn that unfortunately a question like this seems to create. Sorry 'bout that.

[john70t]

Originally Posted by stealthn

Sadly this is infringement, he will be sued to kingdom come and the patents will become Mercedes...

I'm afraid you are right (IMO as layman).
The three-pointed star even has the same raised pattern as the Mercedes symbol.
Not just a coincidence but an exact copy.

Even trademark 'homages' and 'similarities' are mostly off-limits unless it's in a completely different spectrum.

https://www.reddit.com/r/AskReddit/comments/2fwqh0/can_people_with_tattoos_of_copyrighted_images_or/
"Commercial or a money-making usage is not required for infringement or liability."


Back in 2004 I had an idea for a 3-rotor electric motor that was pretty slick if i do say so myself. Still do actually.
But it was disruptive technology and nobody is going to spend a billion dollars on R&D for something that will ruin their existing business model.
I did a search through an attorney, filed a $14k patent, and started contacting auto companies that were selling the brand spanking new hybrids.
Toyota ignored all emails but I eventually got one back from Honda saying "we are not interested in your design".
They get dozens of these a day probably and the peon answering the emails barely graduated third grade.
Everyone I talked to (including UM engineering professors and Small Business and Ann Arbor SPARK org) said "Build and sell a prototype first. Then they will find you."
That was not possible, and there was existing prior patent artwork, so unfortunately that dream ended there.

[stomachmonkey]

Originally Posted by Wil Ferch

...he is looking for help or guidance on where to move forward...

Staff used to come into my office all the time with this "great idea" which often times were great concepts.

My first question was always, (when it was obvious it didn't), how does it make money?

And this is part of John's problem.

Right now, all John has is an idea. Sorry to say a rather limited and highly derivative one but let's ignore that for now.

Idea's can get someones attention, sometimes.

John needs a pitch.

John needs to provide research on the size of the market, the sales projection, the costs, profit margin, all those things that a business relies on to decide if their capital investment is worth the risk.

Right now, John is asking everyone else to do the work and assume the risk solely on the strength of his idea.

Thats pretty much a non starter.

Yes he thinks he's put in the work and yes he has put in some but not the work that matters to the people that it needs to.

My last thought on this, John's design is, to put it bluntly, obvious.

I would not be surprised at all if it had not been presented internally by at least one if not several junior designers over the years and dismissed.

The Star is MB's icon, it's their primary branding element.

Its usage is tightly controlled to preserve its integrity and intrinsic value.

I can all but guarantee there is an entire chapter in their branding guidelines of allowed and disallowed usage and Johns concept falls in the later.

[rusnak]

The poor guy would be better off selling the patent to anyone who is willing to pay him.

He's not the guy to get it done, given his approach so far. Emailing all MB dealers? Really?

[porsche4life]

So.... as someone who used to sell high end aftermarket wheels here’s a few pieces of advice... as someone already mentioned, the wheel design isn’t slowing down the sales of new MBs. The number of people that would call us and drop 5-10k on wheels and tires for a new car would boggle your mind.

Now that being said I looked at his site.

That first design doesn’t look structurally sound. I’ve never seen any of the big manufacturers do something with that narrow of a spoke on a 5 spoke, there’s a reason for that.

https://innovativewheeldesigns.com

That website is begging for a cease and desist letter from Mercedes

A large chunk of the high end aftermarket wheels in the US are coming out of just a few main factories in Miami and LA, your guy would be best getting setup and having them build them and sell them himself. But be warned the wheel game is harsh, and margins get thin in a hurry.

Lastly..... them some fugly wheels. I don’t see there being a market honestly.

[unclebilly]

I have 31 issued patents. All are utility patents.

A design patent is easily invented around.

He is trying to be a patent troll with design patents. Somehow, I don’t see him recouping his $$$.