3D Trademarks

What is a 3D Trademark?

A 3D Trademark Registration allows one to claim ownership of the three dimensional qualities that consumers associate with a product. Famous marks include Goldfish cheese crackers by Pepperidge farms and the golden arches configuration of early McDonalds hamburger stands.

What is the difference between a 3D Trademark and a Design Patent?

Trademarks protect the good will of a company product and can last indefinitely. Design patents protect the intellectual conception of a design. They last 14 years from issue.

Registration of a Trademark with the United States Patent and Trademark Office will allow criminal prosecution in many states. It is better to call the cops to catch counterfeiters, rather than your attorney because the cops do not bill you hourly and have power of arrest (search and seizure).

Noteworthy features of California Penal Code § 350

1. Enhanced penalties for repeat offenders in section (b). 2. Enhanced penalties for selling over 1000 units. 3. Violation for possession away from point of sale in section (d).

California Penal Code § 350 is quoted below. Manufacture or sale of counterfeit goods.

(a) Any person who, without the consent of the registrant, willfully manufactures, intentionally sells, or knowingly possesses for sale at the point of sale any counterfeit of a mark registered with the Secretary of State or registered on the Principle Register of the United States Patent and Trademark Office, shall upon conviction, be punishable as follows:

(1) Where the offense involves less than 1,000 of the articles described in this subdivision, and if the person is an individual, he or she shall be punished by a fine of not more than five thousand dollars ($5,000), by imprisonment in a county jail for not more than one year, or by both that fine and imprisonment; or, if the person is a corporation, by a fine of not more than one hundred thousand dollars ($100,000). (2) Where the offense involves 1,000 or more of the articles described in this subdivision , and if the person is an individual, he or she shall be punished by imprisonment in a county jail not to exceed one year, or in the state prison for 16 months, or two or three years, by a fine not to exceed two hundred fifty thousand dollars ($250,000), or by both that imprisonment and fine; or, if the person is a corporation, by a fine not to exceed five hundred thousand dollars ($500,000).

(b) Any person who has been convicted of a violation of either paragraph (1) or (2) of subdivision (a) shall, upon a subsequent conviction of paragraph (1) of subdivision (a), if the person is an individual, be punished by a fine of not more than fifty thousand dollars ($50,000), by imprisonment in a county jail for not more than one year, or in the state prison for 16 months, or two or three years, or by both that fine and imprisonment; or, if the person is a corporation, by a fine of not more than two hundred thousand dollars ($200,000).

(c) Any person who has been convicted of a violation of subdivision (a) and who, by virtue of the conduct that was the basis of the conviction, has directly and foreseeably caused death or great bodily injury to another through reliance on the counterfeited item for its intended purpose shall, if the person is an individual, be punished by a fine of not more than fifty thousand dollars ($50,000), by imprisonment in the state prison for two, three, or four years, or by both that fine and imprisonment; or, if that person is a corporation, by a fine of not more than two hundred thousand dollars ($200,000).

(d) Any person who knowingly possesses for sale, at a location other than the point of sale, any article described in subdivision (a) is guilty of a public offense.

(1) A violation of this subdivision involving less than 100 of these articles shall be punishable by imprisonment in a county jail for not more than six months, by a fine not to exceed five thousand dollars ($5,000), or by both that imprisonment and fine. Any person who previously has been convicted of a violation of any paragraph of this subdivision shall, upon a new conviction of violating this subdivision arising from conduct described in this paragraph, be punished by imprisonment in a county jail not to exceed one year, or by a fine not to exceed ten thousand dollars ($10,000), or by both that imprisonment and fine. Any person who has been convicted of a violation of any paragraph of this subdivision on two or more previous occasions shall, upon a new conviction of violating this paragraph, be punished by imprisonment in a county jail not to exceed one year, or in the state prison for 16 months, or two or three years, by a fine not to exceed twenty-five thousand dollars ($25,000), or by both that imprisonment and fine. (2) A violation of this subdivision involving 100 or more of these articles, but less than 1,000, shall be punishable by imprisonment in a county jail not to exceed one year, by a fine not to exceed ten thousand dollars ($10,000), or by both that imprisonment and fine. Any person who previously has been convicted of a violation of any paragraph of this subdivision on one or more occasions shall, upon a new conviction of violating this subdivision arising from conduct described in this paragraph, be punished by imprisonment in a county jail not to exceed one year, or in the state prison for 16 months, or two or three years, by a fine not to exceed twenty-five thousand dollars ($25,000), or by both that imprisonment and fine. (3) A violation of this subdivision involving 1,000 or more of these articles shall be punishable by imprisonment in a county jail not to exceed one year, or in the state prison for 16 months, or two or three years, by a fine not to exceed one hundred thousand dollars ($100,000), or by both that imprisonment and fine.

(e) In any action brought under this section resulting in a conviction or a plea of nolo contendere, the court shall order the forfeiture and destruction of all of those marks and of all goods, articles, or other matter bearing the marks, and the forfeiture and destruction or other disposition of all means of making the marks, and any and all electric, mechanical, or other devices for manufacturing, reproducing, transporting, or assembling these marks, which were used in connection with, or which were part of, any violation of this section. However, no vehicle shall be forfeited under this section that may be lawfully driven on the highway with a class 3 or 4 license, as prescribed in Section 12804 of the Vehicle Code, and that is any of the following:

(1) A community property asset of a person other than the defendant. (2) The sole class 3 or 4 vehicle available to the immediate family of that person or of the defendant. (3) Reasonably necessary to be retained by the defendant for the purpose of lawfully earning a living, or for any other reasonable and lawful purpose.

(f) As used in this section, the following definitions shall apply:

(1) When counterfeited but unassembled components of computer software packages are recovered, including, but not limited to, counterfeited computer diskettes, instruction manuals, or licensing envelopes, the number of "articles" shall be equivalent to the number of completed computer software packages that could have been made from those components. (2) "At the point of sale" includes the entire building, structure, container, or vehicle in which the sale or attempted sale of an article has occurred. (3) "Counterfeit mark" means a spurious mark which is identical with, or substantially indistinguishable from, a registered mark and which is used on or in connection with the same type of goods or services for which the genuine mark is registered. (4) "Knowingly possess" means that the person possessing an article actually knew that the article was not genuine. (5) "Sale" includes resale. (6) "Value" has the following meanings:

(A) When counterfeit items of computer software are manufactured or possessed for sale, the "value" of those items shall be equivalent to the retail price or fair market price of the true items that are counterfeited. (B) When counterfeited but unassembled components of computer software packages are recovered, including, but not limited to, counterfeited computer diskettes, instruction manuals, or licensing envelopes, the "value" of those components of computer software packages shall be equivalent to the retail price or fair market price of the number of completed computer software packages that could have been made from those components.

(g) This section shall not be enforced against any party who has adopted and lawfully used the same or confusingly similar mark in the rendition of like services or the manufacture or sale of like goods in this state from a date prior to the effective date of registration of the service mark or trademark pursuant to Chapter 2 (commencing with Section 14200) of Division 6 of the Business and Professions Code.
(h) An owner, officer, employee, or agent who provides, rents, leases, licenses, or sells real property upon which a violation of subdivision (a) or (d) occurs shall not be subject to a criminal penalty pursuant to this section, unless he or she sells, or possesses for sale, articles bearing a counterfeit mark in violation of this section. This subdivision shall not be construed to abrogate or limit any civil rights or remedies for a trademark violation.