Can a company register design patents on models based on landmark?

[scizor]

I thank you in advance for your time and assistance. My questions are related to trademark and design patents. My partner and I will like to start a Lego business. We plan to accept ideas and custom-build new products from Lego blocks. I am aware it is not illegal to resell an item that is legitimately purchased. Additionally, according to the European Court of Justice, Lego bricks are not registered as trademark.

1.Is it safe to assume we will not have any legal issues with Lego company?
2.Can Lego company build landmark models (e.g. Statue of Liberty, Tower of Pisa, Eiffel Tower, etc.) and register design patents?

The second question is the most concerning issue. I assume we can build models based on landmarks, of which designers passed away long time. However, I am uncertain if one can register a design patent which is a mock-up of someone's work. If it is allowable, we need to verify every Lego product in the past. Your kind answer will be much appreciated.

Best Regards,

Siczor

 

[quincy]

I thank you in advance for your time and assistance. My questions are related to trademark and design patents. My partner and I will like to start a Lego business. We plan to accept ideas and custom-build new products from Lego blocks. I am aware it is not illegal to resell an item that is legitimately purchased. Additionally, according to the European Court of Justice, Lego bricks are not registered as trademark.

1.Is it safe to assume we will not have any legal issues with Lego company?
2.Can Lego company build landmark models (e.g. Statue of Liberty, Tower of Pisa, Eiffel Tower, etc.) and register design patents?

The second question is the most concerning issue. I assume we can build models based on landmarks, of which designers passed away long time. However, I am uncertain if one can register a design patent which is a mock-up of someone's work. If it is allowable, we need to verify every Lego product in the past. Your kind answer will be much appreciated.

Best Regards,

Siczor

What is the name of your state or, if not in the US, what is the name of your country?

Edit to add:

Because Siczor has not responded to the question asked, which seems to indicate that Siczor is not in the US, and because I hate to see "empty" threads, I will address Siczor's questions as if he were in the US.

1. No. It is not safe to assume you will not have legal issues with the Lego company. On the contrary, you probably WILL have legal issues with the Lego company, especially if you are planning on starting a "Lego business" without authorization from Lego. In the US, Lego is a registered trademark and a famous trademark worldwide. Lego can prevent others from using the name Lego even if the name Lego is not registered in countries other than the US.

2. Anyone can construct replicas of buildings using Lego blocks. These Lego buildings can resemble landmarks. Some landmarks are rights-protected so use of the name/image in promotional materials and in products created for sale can be restricted. And, again, the name Lego is rights-protected.

There is a misunderstanding of what a design patent is. In the US, the US Patent and Trademark Office issues three types of patents for inventions - utility patents, plant patents and design patents.

Utility patents are the most common type of patent issued for inventions. They are issued for inventions that are novel and nonobvious. They cover novel and nonobvious improvements on existing ideas (although the existing idea could have separate protection), novel and nonobvious processes, novel and nonobvious machines, novel and nonobvious ways of manufacture, and novel and nonobvious compositions of matter.

Plant patents are the least common type of patent. They are issued for novel and nonobvious plants.

Design patents are issued for novel and nonobvious and nonfunctional designs. The types of patents issued for design are covered under 35 US Code section 171 and include shapes and ornamentation.

Essentially, what scizor can do is purchase Lego blocks and resell these Lego blocks under the US First Sale Doctrine. Legally purchased items can be legally resold (or given away or thrown away). Lego cannot control this. However Lego can (and will vigorously) legally pursue those who use their trademark without authorization.

 

[scizor]

Thank you for your kind answer

What is the name of your state or, if not in the US, what is the name of your country?

Edit to add:

Because Siczor has not responded to the question asked, which seems to indicate that Siczor is not in the US, and because I hate to see "empty" threads, I will address Siczor's questions as if he were in the US.

1. No. It is not safe to assume you will not have legal issues with the Lego company. On the contrary, you probably WILL have legal issues with the Lego company, especially if you are planning on starting a "Lego business" without authorization from Lego. In the US, Lego is a registered trademark and a famous trademark worldwide. Lego can prevent others from using the name Lego even if the name Lego is not registered in countries other than the US.

2. Anyone can construct replicas of buildings using Lego blocks. These Lego buildings can resemble landmarks. Some landmarks are rights-protected so use of the name/image in promotional materials and in products created for sale can be restricted. And, again, the name Lego is rights-protected.

There is a misunderstanding of what a design patent is. In the US, the US Patent and Trademark Office issues three types of patents for inventions - utility patents, plant patents and design patents.

Utility patents are the most common type of patent issued for inventions. They are issued for inventions that are novel and nonobvious. They cover novel and nonobvious improvements on existing ideas (although the existing idea could have separate protection), novel and nonobvious processes, novel and nonobvious machines, novel and nonobvious ways of manufacture, and novel and nonobvious compositions of matter.

Plant patents are the least common type of patent. They are issued for novel and nonobvious plants.

Design patents are issued for novel and nonobvious and nonfunctional designs. The types of patents issued for design are covered under 35 US Code section 171 and include shapes and ornamentation.

Essentially, what scizor can do is purchase Lego blocks and resell these Lego blocks under the US First Sale Doctrine. Legally purchased items can be legally resold (or given away or thrown away). Lego cannot control this. However Lego can (and will vigorously) legally pursue those who use their trademark without authorization.

Dear Quincy,

I thank you for your kind explanation in regards to design patent and trademark regulation.

I did not expect to get an answer very fast.

As you expected, I live outside of US. However, I assume general rules of design patent and trademark can be applied to other countries, also.

According to your explanation, may I assume if I not use the name "LEGO", there should not be a repercussion? However, even if I avoid using their brand name, their Lego trademark is on the brick design in the first place. Am I violating trademark regulation, even though the First Sale Doctrine protects me? It seems reasonable to me if I buy bricks from Lego company, I can resell them as own new models.

Sorry if I misunderstood your explanation. All intellectual property and rights seem very confusing at times.

Best Regards,

Scizor

 

[quincy]

Dear Quincy,

I thank you for your kind explanation in regards to design patent and trademark regulation.

I did not expect to get an answer very fast.

As you expected, I live outside of US. However, I assume general rules of design patent and trademark can be applied to other countries, also.

There are differences in intellectual property laws from country to country so what applies in the US may not apply to you in whatever country it is you reside.

According to your explanation, may I assume if I not use the name "LEGO", there should not be a repercussion? However, even if I avoid using their brand name, their Lego trademark is on the brick design in the first place. Am I violating trademark regulation, even though the First Sale Doctrine protects me? It seems reasonable to me if I buy bricks from Lego company, I can resell them as own new models.

The "first sale doctrine" is a US doctrine that applies to the resale of legally purchased (and unmodified, unaltered) rights-protected goods - but there must be care taken in marketing the resold goods. The name LEGO has worldwide protection as a famous trademark so, like Coca-Cola or Ford or Google, any unauthorized use of the mark can lead to legal issues.

Sorry if I misunderstood your explanation. All intellectual property and rights seem very confusing at times ...

Intellectual property laws CAN be confusing. You should sit down with an IP professional in your area of the world to discuss your plans for a "Lego" business. I see several problems with your plans as you describe them.

Good luck.


US intellectual property laws can be found at the US Copyright Office (http://www.copyright.gov) and the US Patent and Trademark Office (http://www.uspto.gov).

World intellectual property laws can be accessed through the World Intellectual Property Organization (WIPO) at: http://www.wipo.int/portal/en/index.html