WIPO enforceable in the U.S?

[king44444]

What is the name of your state? Utah

I would like to manufacture and market in the U.S. a toy that was invented 19 years ago in Switzerland. There is no patent in the U.S. or Switzerland for this toy. There is, however, a WIPO design patent. My question is since the U.S. is not involved or a member of WIPO can I legally manufacture and market this toy in the U.S.?
Thanks in advance for any help.

 

[divgradcurl]

There is, however, a WIPO design patent. My question is since the U.S. is not involved or a member of WIPO can I legally manufacture and market this toy in the U.S.?

Well, first off, the U.S. is part of WIPO, as well as TRiPs and the WTO. The much-maligned DMCA is part of making the U.S. law harmonize with WIPO.

And what do you mean by a "WIPO" patent -- are you talking about a patent application filed under the PCT? WIPO doesn't issue patents, but it does administer the PCT, which in turns allows you to file a single application to get a patent in multiple countries. There are no "international" patents, with the exception of patents granted through the EPO, which are generally enforceable thorughout the EU. There are no patents currently that are enforceable worldwide. And in the U.S., only U.S. patents are enforceable.

So, with all of that said, unless there is a patent in the U.S., if you manufacture and sell the product solely in the U.S., then you can do so without worrying about any patent issues. Now, that doesn't end your inquiry -- you need to make sure that the product doesn't have a U.S. trademark associated with it...

 

[king44444]

you need to make sure that the product doesn't have a U.S. trademark associated with it...

Divgradcurl,

Thank you for taking the time to answer my question. Allow me to be clearer in my previous statement. The design patent in registered with the Hague system of international deposit of industrial designs. Since the Hague system is applicable among the countries party to The Hague Agreement and the U.S. is not one, I can manufacture the toy legally in the United States…..right?
It is very funny that you mention the trademark issue. The company that manufactures the toy and the toy is called the same thing, Cuboro. In 1999 the company did file a trademark patent, as follows:

Typed Drawing

Word Mark CUBORO
Goods and Services IC 028. US 022 023 038 050. G & S: games and puzzles, namely, marble-tracks, marbles, and manipulative puzzles. FIRST USE: 19991205. FIRST USE IN COMMERCE: 19991205
Mark Drawing Code (1) TYPED DRAWING
Serial Number 75740648
Filing Date June 30, 1999
Current Filing Basis 1A
Original Filing Basis 1B
Published for Opposition April 18, 2000
Registration Number 2534597
Registration Date January 29, 2002
Owner (REGISTRANT) Etter, Matthias INDIVIDUAL SWITZERLAND Graebli CH-6086 Hasliberg Reuti SWITZERLAND
Attorney of Record Douglas R. Wolf
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

“you need to make sure that the product doesn't have a U.S. trademark associated with it...”
does the previous patent mean there is a trademark associated with the toy? How does that affect making the toy under a different name, just as long as I don’t use the name Cuboro?
thank you for your time again

 

[divgradcurl]

A U.S. trademark on the name alone isn't going to keep you from producing the toy, as long as you call it by a different name. I was alluding to a "trade dress" issue -- where perhaps they had registered the "shape" and/or "colors" of the toy as "trade dress." If they don't have a trade dress patent, you are probably okay, although I guess they could, if they were so impclined, travel to the U.S. and try to assert "common law" trade dress rights against you, but that's probably a long shot -- are they still selling the toy in Europe or elsewhere?

 

[king44444]

They have mainly marketed to the European market and after 20 years they are starting to pick up popularity. In Germany it is a hot toy. You can get the toy shipped to you in the U.S. through the Internet. The current packaging of the product does not meet U.S. toy packaging standards so I think that has something to do with not being in the U.S.

You have been really great to answer my questions; I really appreciate your time and two cents.
Mike.

 

[divgradcurl]

Well, if the toy is that popular, you might want to consider trying to work something out with the manufacturer so that you are the official point-of-sale in the U.S. Although they don't appear to have a registered "trade dress" trademark, like I mentioned before, that doesn't mean they won't travel to the U.S. and try and assert common-law trade dress protections.