June 12, 2013
By Oliver Herzfeld
In my prior two installments of this three-part series (available here and here), I reviewed protections available for 3D printing designs and objects under U.S. copyright and patent law. I will conclude with a review of such protections under U.S. trademark, trade dress, and trade secret law.
Trademarks and Trade Dress
The U.S. Trademark Act does not provide protection for 3D designs or objects per se. Instead, trademark law protects brand names, logos, symbols, designs and other elements of such items, and trade dress law protects the design, shape, color, packaging and appearance of such items, solely to the extent that they identify the source and origin of the owner’s products or services. For example, the brand name on a 3D object could be registered as a protectable trademark, and the unique shape or color of a 3D object could be registered as protectable trade dress. In that vein, when the Coca-Cola KO -1.39% contour bottle shape design became so well known that it became synonymous with the product, The Coca-Cola Company sought and obtained a federal trademark registration for such shape enabling the company to safeguard the bottle design indefinitely. And a federal court of appeals recently ruled that Christian Louboutin owns trademark rights in his distinctive red outsoles since they identify him as the sole legitimate source of his shoes, while Yves Saint Laurent and other parties retain the right to produce and sell monochromatic red shoes (where both the outsoles and uppers are entirely red). To be clear, elements that do not identify the source and origin of 3D designs and objects do not qualify for protection under the U.S. Trademark Act.
In addition to identifying the source and origin of the owner’s products or services, to be eligible for registration and protection, trademarks and trade dress must also have distinctive character. Trademarks are deemed to be “inherently distinctive” if they immediately communicate to a consumer that they are identifying the source and origin of a product, as opposed to describing the product itself. Alternatively, distinctiveness may be acquired through “secondary meaning,” a process whereby consumers come to recognize the trademark as a source identifier over a period of time. Under current law, trade dress protection of packaging and certain other elements may be acquired through inherent distinctiveness or secondary meaning. However, trade dress protection of designs requires distinctiveness to be acquired solely through secondary meaning. In this respect, design patents can work well together with trade dress rights. In particular, an owner of a 3D design may first seek and secure a design patent and then secondary meaning for trade dress protection of the design can be developed during the 14 years of design patent protection.
A trade secret is any formula, pattern, device or compilation of information that is used in a business, which gives its owner an opportunity to obtain an advantage over competitors. In order to obtain protection of a trade secret, reasonable steps must be taken under the circumstances to treat it as a secret. To the extent a 3D design or object (or any underlying models, documentation, ingredients, algorithms, etc.) remain an owner’s in-house tool or device, trade secret laws could be effective in preventing third parties from misappropriating any aspect of the product which the owner considers valuable. However, to the extent any such 3D design or object is disclosed to a third party in the absence of a non-disclosure obligation (such as a presentation or sale to the public), the owner would likely lose its trade secret protection.
What Should Owners Do?
Owners of 3D designs and objects should seek to maximize their protection (to extent relevant) by (i) federally registering copyrights for their original prints and patterns, unique color arrangements and novel combinations of elements, as well as their protectable design elements to the extent physically or conceptually separable from the functional or utilitarian aspects of the subject 3D designs or objects, (ii) applying for a utility patent for new, useful and nonobvious processes, machines, articles of manufacture, or compositions of matter, (iii) applying for a design patent for new and nonobvious ornamental designs, (iv) federally registering for trademark and/or trade dress protection for brand names, logos, designs, packaging and other elements of 3D designs and objects to the extent they identify the source and origin of such designs and objects, and (v) taking active steps to maintain the confidentiality of 3D designs and objects that are used solely in-house as a trade secret providing the owner with a competitive advantage over its competitors. Of course, owners must remain mindful of the attendant time and cost considerations relating to each of the above-mentioned avenues of protection. Nonetheless, protecting 3D designs and objects to the extent practicable and available under each of the foregoing methods would go a long way toward enabling owners to fully enjoy the fruits of their labor.