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Protecting 3D Printed Designs – Can Trade Dress Rights Fill the Void?

by • March 24, 2016 • No Comments

Just imagine you’ve created a new product with 3D printing. Thinking of ways to preserve it can be a daunting challenge. Hopefully, you can consider a few basic agreements with any third parties that took part in the create, such as non-disclosure agreements, employee agreements and joint venture agreements, that are handy documents to make sure that the rights and liabilities in the project are well described at the quite beginning. Those agreements are an great initially step at the begin of the project (and can save a lot of headaches down the road). Consider a joint venture where one party is providing capital and the other is contributing know-how. If the venture fails, who can own the intellectual property (IP)? Will there be re-payment? Who has the right to sue? Who can practice the innovation? Will the employees have non-compete restrictions? These preserveions are many handled with agreements that are the many significant form of IP preserveion, and relatively inexpensive.

If you are thinking patenting the create, assuming it’s patentable — i.e., novel and non-obvious — you are appearing at years of proceedings preceding the patent office and thousands of dollars to gain a utility patent, that preserves the functional aspects of the create, its make and/or composition, for example. Thinking of of the world patent preserveion? That’s readily on the market through the Patent Cooperation Treaty, that many nations have signed, but again additional time and additional thousands of dollars. An international patent portfolio on a product can take a few five years to complete. That’s a lifetime in 3D printing, especially when one in addition considers the makes it to in reverse engineering. Laser scanners are now exceedingly accurate and can easily render point cloud data into usable CAD drawings (for conversion into STL printing files).

A future avenue of preserveion with 3D printing is trade dress rights. Trade dress rights are an significant form of intellectual property preserveion but are frequently over appeared. Simply noted, a product or device is in addition entitled to trademark preserveion under sure circumstances but it must have “secondary meaning” or completed market distinctiveness in order to be entitled to the preserveion.

First, a few basics. A trademark is described in 15 U.S.C. § 1127 as which include “any word, name, symbol, or device or any combination thereof” utilized by any man “to select and distinguish his or her greats, which include a one-of-a-kind product, of those maked or sold by others and to indicate the source of the greats, actually if that source is unknown.” In order to be registered, a mark must be capable of distinguishing the applicant’s greats of those of others. § 1052. Marks are frequently classified in categories of generally increasing distinctiveness; next the classic formulation set out by Judge Friendly, they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976).

Registering a product for trademark preserveion is cumbera few. The Supreme Court in Wal-Mart Stores, Inc. v. Samara Brothers, Inc. 532 U.S. 23, 121 S. Ct. 1255 (2001) ruled in a litigation that an unregistered product must have gaind distinctiveness to be accorded preserveion. The Trademark Office adopted this rationale so that in order to register a product as a trademark, the product must initially have gaind distinctiveness in the market place.

The Coke Bottle, that began its life as a create patent over a century ago, is an great example of how a physical item can complete market distinctiveness so that the appearance of the product is synonymous with a brand (and complete trade dress rights):Coke Bottle Patent

With the create patent in place, the product can rely on the create patent for basic preserveion while the product itself gains distinctiveness through great results in the market place. The bottle shape continues to appear in Coca Cola’s advertisements, as depicted below:

Coke Bottle Advertisement

Source: http://us.coca-cola.com

One caveat is the distinction between the preserveion of functional attributes (completed with a utility patent). Trademark law indefinitely preserves creates that “select a product with its maker or source.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). Patent law, on the other hand, “encourage[s] invention by granting inventors a monopoly over new product creates or functions for a limited time.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995). The so-called “functionality doctrine practuallyts trademark law, that seeks to promote competition by preserveing a firm’s reputation, of instead inhibiting legitimate competition by enabling a producer to control a useful product feature.” McAirlaids v. Kimberly Clark Corp, 756 F.3d 307 (2014).

When assessing a create element’s functionality, courts frequently appear at (1) the existence of utility patents, (2) advertising focusing on the utilitarian advantages of a create, (3) the availability of “functionally equivalent creates,” and (4) the effect of the create on making. Valu Engineering, 278 F.3d at 1274 (citing In re Morton–Norwich Prods., Inc., 671 F.2d 1332, 1340–41 (C.C.P.A.1982)). McAirlaids v. Kimberly Clark Corp, 756 F.3d 307 (2014).

What does this mean? Turning again to the Coke bottle as an example, the trade dress right preserves the appear of the bottle synonymous with the Coke brand as opposed to its functionality (i.e., that it holds soda!). An significant aspect of the trade dress right is that it goes on indefinitely while utility patents and create patents expire. Confutilized of the create patent? No wonder! The create patent is a patent right that preserves the ornamental showcases of the create (but is limited in time and does not take into consideration the source or origin of the greats, i.e., the brand, i.e., its trade dress).

Even the color of a product can complete trade dress rights. Take the case of of Christian Louboutin S.A. v. Yves Saint Laurent America…, 696 F.3d 206 (2012). Louboutin alleged that Yves Saint Laurent infringed its trademark on a red woman’s outsole in a high heeled shoe. The District Court ruled there was no preserveion for a product with a single color, yet, the Appellate Court concluded that Louboutin’s trademark, that covered the red, lacquered “outsole of a woman’s high style shoe,” had gaind limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. The Court denied a requested injunction (at the preliminary stage of the case) for the reason the accutilized product did not only include the claimed “red outsole” (the litigation moved forward).

christianlouboutinshoe

Source: www. http://us.christianlouboutin.com

A great bet on the road to preserveion for a product maked with 3D printing, assuming that a utility patent to preserve its functional aspects is not appropriate, is to consider pursuing create patent preserveion. On February 13, 2015, the United States Patent Office revealed that the United States deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization. The treaty went into effect for the United States on May 13, 2015. An entity may now register up to 100 creates in over 62 territories with the filing of one single international application! Moreover, these create registrations can be put in place at a fraction of the cost of a utility patent portfolio. All and all, a certainly easy way to create an IP portfolio and without waiting years to complete it.

Finally, remember too that copyright preserveion may in addition be on the market if the create encompasses an artistic expression. The copyright is automatic and attaches at the time of the creation of the work. The Berne Convention on International Copyrights provides preserveion throughout many of the world.

Bill Cass is a Partner and Co-Chair of the Litigation and Additive Manufacturing Practices at with Cantor Colburn LLP (www.cantorcolburn.com). Bill’s cases involve hard innovation, which include medical devices, circuitry, mechanical engineering, material science, chemistry, and desktop software. Bill has spoken on topics concerning intellectual property internationally at EuroMold, IVA Sweden, Rapid (SME), and in addition at a White House Symposium on Additive Manufacturing.