3D Printing - MarkMonitor · TRADE DRESS: PROS Need registration for take down notices...

Jeffrey G. Sheldon Partner

Leech Tishman Fuscaldo & Lampl LLP

3D Printing: Addressing the New Dimension in

Brand and IP Infringement

Thomas J. Peistrup General Counsel

Tre Milano, LLC

Brittany Shaw Strategic Services Manager

MarkMonitor

Agenda

3D Printing Landscape

Adoption: Enterprise and Consumer

Impact on IP: Panel Discussion with Our Legal Experts

Recommendations and Best Practices

3D Printing Landscape

The Growth of 3D Printing

GROWING MARKET ACROSS INDUSTRIES

GLOBAL 3D PRINTING MARKET

Consumer Products

Defense

Healthcare

Education & Research

Industrial Products

Aerospace

Automotive

Others

Source: Research and Markets: Global 3D Printing Market

Polymers

Metals

Ceramics

Other

MATERIALS USED

The Growth of 3D Printing

Efficient use of material

Reduction in human error

Customization of products

Innovation opportunities

Reduces development time

DRIVERS

Higher cost for individual user

3D printing software is expensive

Lack of channel partner assistance

Size of output generated

RESTRAINTS

Source: Research and Markets: Global 3D Printing Market

Moving into the Mainstream

Adoption

Enterprise Adoption

Enterprise adoption is still experimental

Companies are using 3D printing to accelerate product development

Gartner predicts that 3D printing for prototyping will continue to accelerate over next two years

Consumer Adoption

Consumer 3D printing is 5-10 years away from mainstream adoption

3D printers and printing software is still expensive, hindering wide adoption

But prices are falling: Siemens predicts 3D printing will become 50% cheaper and 4x faster in next five years

Impact of 3D Printing on Infringement and Counterfeits

Join Our Legal Experts

Jeffrey G. Sheldon Thomas J. Peistrup

3D Printing Impact on IP

Source: ntldstats.com Source: ntldstats.com

Source: ntldstats.com

$100 Billion: Estimated IP loss due to 3D printing by 2018 according to Gartner

Affects industries across the board: defense, automotive, healthcare, consumer, general manufacturing, supply chain

Optimal Legal Strategy



Start with the Product Design: Design product to obtain protection (example: add aesthetic non-functional elements)

Seek all protection applicable

Monitor the web to look for counterfeits

Types of Legal Protection Available



Copyright

Utility Patent

Design Patent

Trade Dress (Trademark)

Legal Protection: Copyright



Automatic

Cheap to register

Infringement easy to detect

Easy takedown notices

Good remedies – register and notice

Long life

Recordation with U.S. Customs

COPYRIGHT: PROS

Limited protection for useful articles

Product needs copyrightable element

COPYRIGHT: CONS

Some products are more suited to copyright protection than others

Legal Protection: Utility Patent



Covers structure and use

Can issue quickly

Easy to get foreign innovation patents

UTILITY PATENT: PROS

Rarely enforceable with takedown notices

Usually need to buy product

Expensive to get

Damages tough to prove

Expensive to enforce

Many defenses / potential invalidation

UTILITY PATENT: CONS

Some products are better protected than others with a utility patent (example: hip replacement )

Legal Protection: Design Patents



Moderate expense

Can obtain quickly

Infringement easy to detect

Damages – defendant’s profits

DESIGN PATENTS: PROS

Limited protection for useful articles

Product needs aesthetic element

DESIGN PATENTS: CONS Design patents are effective for some type of products compared to others

Legal Protection: Trade Dress



Infringement easy to show

Moderate expense

Typically enforceable through takedown notices

Last forever

Recordation with U.S. Customs

TRADE DRESS: PROS

Need registration for take down notices

Non-functional features

Need to show secondary meaning

Slow to get protection

TRADE DRESS: CONS Trade dress can be useful for protecting only some type of products

Converse Shoes. U.S.

Reg. 4,398,753

… The mark consists of

the design of the two

stripes on the midsole of

the shoe, the design of

the toe cap, …

Recommendations &

Best Practices

3D Marketplaces



Trademark abuse is already prevalent on 3D printing marketplaces

Proactive IP Protection Approach



Unique Data Sources



Understand the scope of the

problem to make

Informed Business

Decisions

Gain access to unique

data sources to

Prioritize Targets

Apply industries best practices

& benchmarks to drive

Actionable Insight

PROPRIETARY

TECHNOLOGY

STRATEGIC

PARTNERSHIPS

BRAND

PROTECTION

EXPERTS

Thank You!

For information on MarkMonitor solutions, services and complimentary educational events:

Contact via email:

[email protected]

Visit our website: www.markmonitor.com

Contact via phone: US: 1 (800) 745 9229

Europe: +44 (0) 203 206 2220

Contact our Speakers:

Jeffrey Sheldon

[email protected]

(626) 676-1201

Thomas Peistrup

[email protected]

(310) 435-3794

mailto:[email protected]

http://www.markmonitor.com/



3D Printing - MarkMonitor · TRADE DRESS: PROS Need registration for take down notices...

Documents

Transcript of 3D Printing - MarkMonitor · TRADE DRESS: PROS Need registration for take down notices...