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Can I copy a product that was sold in another country and sell in the USA?

Swedesboro, NJ |

A storage box design that was sold briefly in the US but I'm don't know how to research the patent, copyright or trademark of the product.

Attorney Answers 5


  1. At the very least, they may have copyright protection, and potentially have patent protection pending. As such, you do potentially run some risk of an infringement action. It is irrelevant where the product was originally sold, or even manufactured. Intellectual property protection may still apply in the United States. Please seek the counsel of an intellectual property attorney that may be able to assist you in entering into a licensing agreement, if even necessary, with the owner of the intellectual property that may be associated with the product.

    The answer to this question is for informational purposes only and does not form an attorney-client relationship.


  2. Congratulations on asking the questions before you get in trouble. your best bet is to contact one and discuss the details and ask to conduct a clearance.

    USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.


  3. More details are needed to answer you correctly. what kind of box is this? metal, wood, plastic, paper?

    Do not copy exterior art work/ logos / etc and you will not have copyright or trademark problems. The structure of a functional object cannot be protected by copyright law.

    Whether or not the box's structure is subject to a design or utility patented can be easily figured out.

    Consult with an attorney in your area to confirm and do a patent search.


  4. All my colleagues are exactly correct. If you are concerned about patent rights here, then I would advise having a prior art search done, which can culminate into a patentability and infringement opinion, should it be required. There is no other way to know if the design you allude to is also protected here in the US.

    I think you should discuss your plans over with a lawyer in private. Most of us here, including myself, offer a free phone consult.

    Best regards,
    Frank
    Natoli-Lapin, LLC
    (see Disclaimer)

    The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.


  5. You have certainly hit upon all of the issues - utility patents, design patents, copyrights, and trade dress.

    The first two can be searched, the others are not likely to be the subject of registrations you can check. All require the assistance of an intellectual property attorney for proper identification and evaluation of risk.

    Even if you do run afoul of the intellectual property laws, such an attorney could assist you in negotiating a license from the owner of the rights (depending upon the size and scale of your market opportunity and operation this may be your lowest risk option).

    (1) Functional Aspects
    A utility patent protects the functional aspects of the storage box you would like to copy (or have copied by another you hire or import) for resale in the U.S.A. To provide assurance that you have the freedom to produce, import, or have others do those things for you, so that you can sell the item here, you need a "clearance" search. A proper clearance opinion by an IP attorney will be based upon a careful examination of all details available regard the design and construction of the product involved, any patents uncovered during a search that (a) are currently in force and (b) that claim subject matter found in the product being reviewed. If such patents are identified, the IP attorney may work with you to identify changes in the design or construction to avoid infringement.

    (2) Aesthetic Aspects
    Even if the patent clearance gives you a green light, however, the work of your IP attorney is not over. Product designs which capture the attention of customers for reasons other than how the product works, such as the creativity, innovation or fashion cachet — can also be hugely valuable assets – and subject you to liability if you misappropriate them. There are three primary sources of protection for nonfunctional product designs: trade dress, copyright and design patents.

    (A) Trade Dress - If there is an aspect of the storage box’s external appearance /design which is not functional, and this design has acquired distinctiveness in the minds of consumers through secondary meaning, the design might qualify for trade dress protection. Trade dress need not be federally registered in order to be protected by the courts, and there is no concern for originality or novelty. Since the storage box may have been sold only briefly, the seller is unlikely to have built up a strong association with the design (it generally requires substantial time and/or publicity for a company to establish that its product design has acquired distinctiveness). A google image search might be helpful, as well as some research into the retail channels which might have been used to mass market the product.

    (B) Copyright
    Like trade dress protection, there is no obligation to register a copyright (at least not until the owner was ready to sue someone for infringement). The only requirements are that the box would have to embody some "original expression" by its creator. Copyright protection extends to "derivative works" so merely modifying some details while leaving others in your modified design could be problematic.

    (C) Design Patent Protection
    Design protection could be in place to protect the new and unobvious ornamental aspects of the storage box design. This would be relatively straightforward for an IP Attorney to have searched for you from an examination of a perspective top, and bottom photo of the box.

    The most problematic area for you is likely to be copyright since the product designer may not have registered any copyrights to which it may be entitled. An IP attorney would look at the box and give you an opinion as to whether there are any protectable aspects of the box (under any of the four categories identified above),

    As a central-NJ based IP attorney and former patent examiner, I would be happy to work with you if you call my office.