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Smoking Out Infringers – Above the LawAbove the Law


blaze, fire, flame backgroundIf you listen to any of the popular sports or entertainment podcasts, there is a good chance that you have heard at least one host read out a Solo Stove ad. One of the commercial successes of the pandemic era, when the company saw its sales of “smokeless” fire pits rise by 300% even as it dealt with supply shortages, Solo Stove is a prime example of a new class of word-of-mouth driven premium consumer products that are marketed heavily via social media and podcasts. (You can include Yeti coolers, Simpli Safe home security systems, and Roman male-focused medications on the list.) Again, regular podcast listeners can encounter ads for these and similar companies on a daily basis. And while the products may start off as being direct-to-consumer, rather than on the shelves of the local Walmart, the success of these outfits proves that there is a healthy market for well-marketed, aspirational, lifestyle-enhancing products, even at a higher price point.

At the heart of many of these companies, Solo Stove included, is a focus on innovation, as well as aiming for high levels of product quality. Both are critical elements in getting customers to forego their usual shopping approach of looking for items at the cheapest possible price in favor of paying a premium price for a more desirable product. The marketing works — and, in the case of Solo Stove, worked on me as I am the proud owner of one of their medium-sized stainless steel free-standing fire pits. Did I get along fine without one for my entire life? Sure. Was the bill for the fire pit and accessories large enough to get me to second guess the purchase? Again, yes. But I have also enjoyed using the product, especially on cooler summer and autumn nights. More importantly, it has led to some invaluable quality time with my family, particularly with my youngest son, who has an abiding fondness for charred hot dogs “cooked” over the Solo Stove flame. For that alone, I am a fan of the Solo Stove experience.

From an IP perspective, I find brands like Solo Stove fascinating, irrespective of my feelings about the products they sell. For one, a company like Solo Stove is a great example of getting the branding around a product right. As a trademark, Solo Stove arguably straddles the line between a descriptive and suggestive mark. Add in the smart marketing, however, and it becomes a category-defining brand name, even as the company has made a push to acquire other leading outdoor-oriented product companies to diversify its portfolio. In addition to building a strong trademark foundation, Solo Stove has also invested in developing a modest, but targeted, patent portfolio across its suite of offerings, including a mix of design and utility patents. In short, it appears that the company has wisely decided to execute on an IP development strategy, despite the costs associated with such an effort.

At bottom, however, even with IP protection, Solo Stove’s products are ripe fodder for cheaper knockoffs. Whenever a consumer product enjoys a large price premium over its cost to produce, there is usually plenty of room for copycats created to play in. As with many things, these “competitors” come in many forms. Some will just look to knock off the innovative product as closely as possible, including by listing the products online using the innovator’s brand name. These types are usually bounced off the Amazon and eBay playgrounds pretty quickly, but sometimes not before flooding the market with dirt-cheap alternatives of questionable quality. Other copycats take a bit more pride in their work, by at least trying to design around the target innovative product in some measure, while also trying to establish their own no-name brand as an alternative to the better-known and branded company’s offerings. As an example, you can compare the Amazon listing for the Solo Stove Bonfire model with that of the Hykolity alternative, which retails for $120 less — after you apply a coupon, of course. For an even cheaper knockoff, you can also consider the DIYTuning product, which offers a cute fire-shaped ring of bottom airholes in contrast to the circular ones found on the Solo Stove original.

In such an environment, it is not a surprise to see Solo Stove turn to legal action to protect itself on the IP front. In an October 11, 2022, complaint filed in the Central District of California, Solo Stove’s owner, Solo Brands, alleges design patent, trade dress, and trademark infringement by a competing product called the Bonstove Fire Pit. One has to look hard to see the differences between the BonStove and the Solo Stove, even as the Bonstove undercuts the Solo Stove’s pricing for equivalently sized models by a significant margin. In addition to the “virtually identical” copying of the Solo Stove fire pit, the complaint also alleges that the infringing “e-commerce stores also imitate Solo Stove by using many of Solo Stove’s images, product descriptions, verbatim wording to describe the company’s mission, and has posted customer reviews of Solo Stove’s products suggesting the products are the same.” Shortcuts all around by the infringer, apparently. Even as the case seems pretty assured on the merits, there is always the challenge for the IP owner of cutting off the head of the infringing Hydra, which is a challenge in this age of what the complaint deems “Seller Aliases” that “conceal … the full scope and interworking of” the infringer’s operations.

Ultimately, Solo Stove’s filing reinforces the need for innovator companies to not only invest in IP protection, but to also direct investment into enforcement efforts when needed. For Solo Stove, the hope is undoubtedly that their filing against BonStove will pay dividends by not only getting BonStove off the market, but also by sending a message to other infringers that they mess with Solo Stove’s IP portfolio at their own risk. It can be a challenge for IP owners to commit to an enforcement campaign — and an even greater challenge to see one through. For Solo Stove, at least, the lesson has already been learned, namely that sometimes there is no alternative. The infringers must be smoked out.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.


Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.





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