By Joseph A. Farco, Esq. of Farco ToyCo LLC and Norris McLaughlin P.A
As a toy inventor himself, Joe has an extensive experience in advising clients on intellectual property in the toy and gaming space. Joe advises clients on different IP protection methods, such as obtaining the right type of patent on your toy, copyrights and trademarks for different types of toy branding, and licensing and manufacturing deals involving the same. Joe also provides guidance to clients seeking to enter the toy space or produce a particular toy but want to be respectful of the IP rights of others.
Before or during your next toy design activity, please read this article to make sure you do not fall into any traps:
- Prior Toy Designs
As my prior articles may have already told you, toys can be the subject of patents and copyrights. Even if you decide to copy or “improve” a portion of a toy design, you must make sure that whatever the prior version you choose to improve it is not protected by a valid and enforceable patent or copyright. You read that last sentence correctly – a patent on a toy does not mean it is valid and you can challenge it using various tools (to be discussed in a separate post).
It is good practice to write down the sources of your research into any new toy design and then request assistance by professionals to determine whether there are potential intellectual property issues and/or solutions for such issues. - Manufacturing Methods
Designing the product of your toy design is relatively easy in comparison to the process to mass-produce the product. Repeating the caution from Point 1 above, take notes on what process(es) are needed to make your toy, including any compositions/electronics/software that get installed into the same, to make sure none of the steps in the fabrication are proprietary to someone else. You also should be aware of the machinery needed to make your product, such as the type of injection-molding press, plastic(s) and non-plastic materials, and the labor required for final assembly.
Again, enlisting the help of an intellectual property professional and manufacturing specialist would be a good step in evaluating whether any of your proposed fabrication methods can infringe an existing patent in the United States or at the location of manufacture be it domestic or abroad. - Advertising Channels and Marketing
Once you have a toy design and a method to make the toy, you will need to consider various issues in bringing it to market. Obtaining a trademark on the company or toy name is a good idea if possible as well as any slogans or phrases that have proven to associate consumers with you/your company. Once again, an intellectual property professional can aid you in finding available trademarks to accomplish this purpose.
Keep in mind that your marketing also must not be false, misleading, or meant to confuse customers over your product or service. Make sure when making comparisons or touting certain aspects of your product that you ensure you are in compliance with rules from the Federal Trade Commission (“FTC”) and other regulatory bodies (e.g., claiming a product only partially made in the domestic U.S. is “Made in America”). Again, these marketing and advertising rules can vary from location to location, so it is key to consult with legal professionals who have handled such issues previously and can advise on how to avoid pitfalls when trying to call attention to your latest design.
CONCLUSION
Several areas of intellectual property are involved in the toy design, manufacture, and marketing process such that no one interested in pursuing their toy design should do so without some consultation. While the rewards of a new form or style of play are rewarding, the risks one faces for lack of due diligence on the IP front can very quickly create the types of snags that can turn your toy dream into a nightmare.
