By STEPHANIE POTTICK, ESQ., Pottick Law PC and Protection Success
Whether it’s an action figure or collectible, a vehicle or remote control toy, an outdoor game or hobby item, or even a tabletop game, intellectual property rights are an important tool in protecting your product and promoting it in the market.
But IP can also get you into trouble if you’re not careful. The last thing you want is to receive a legal complaint claiming that your product infringes on someone else’s intellectual property rights.
So, what steps can you take to help prevent intellectual property infringement?
• For trademarks: You can search online to see if anyone is already using your mark (or a confusingly similar mark) on the same or related products, then make sure to conduct a thorough search of the United States Patent and Trademark Office (USPTO) by an experienced Prepared by a trademark attorney – preferably before you adopt and use the trademark.
•For copyright: You can try to see if similar content is registered with the U.S. Copyright Office, or you can reverse-search your content or image online.
Bottom line: Choosing to use and/or enforce intellectual property rights is a business decision you make.
Mr. Stephanie Pottick
• For patents: A knowledgeable patent practitioner should conduct a priority search and patentability analysis. It’s important to understand what’s out there and how to circumvent any potential infringements.
Failure to conduct due diligence may expose you to potential litigation and possible government enforcement.
An article in toy book Details recent examples of alleged patent infringement related to toy blasters. Spin Master and Hasbro filed a joint complaint with the U.S. International Trade Commission (USITC), which subsequently launched an investigation into whether other companies were infringing on its patents. It’s worth mentioning: Having a valid patent first enables them to enforce their intellectual property rights to help prevent others from infringing.
By registering your intellectual property rights, you can obtain law enforcement assistance from various government agencies, including the USITC and U.S. Customs and Border Protection (CBP). For example, CBP’s electronic records program gives intellectual property rights owners access to border enforcement, and violations of Section 337 of the Tariff Act of 1930 (what Spin Master and Hasbro allege) are another way to obtain government help in enforcing intellectual property rights.
In some cases, intellectual property rights owners may receive an injunction requiring the infringement to cease, the destruction of the infringing goods, or monetary damages. Sometimes all three situations occur, and the remedy is determined on a case-by-case basis.
Bottom line: Choosing to use and/or enforce intellectual property rights is a business decision you make. While there is no way of knowing whether other intellectual property rights owners (or government agencies) will require you to use any trademark, copyright, or patent, conducting due diligence beforehand will allow you to understand the risks and make the best decision for your situation. Stay safe and stay legal!
A version of this feature was originally published in The Toy Book’s 2024 Action & Adventure Special Issue. click on here Read the full article! Want to receive a printed copy of The Toy Book? click here Subscription options!
