Toy manufacturer fights to protect its trademarked figurine design. LEGO v. LASER PEGS

A trademark is traditionally thought of as a word, phrase or symbol that a manufacturer places on their products. However, just about anything that signals to consumers the identity of the company that produced a product can be granted trademark protection. The key to a trademark is, the association consumers make between a trademark and the products produced by the trademark owner. Trademark law in the United States grants the first user of a trademark the right to exclude others from branding products using a trademark in a way that causes consumer confusion. If a company uses a trademark, which was first used by another company, to brand goods in a way that causes consumer confusion, that can be considered trademark infringement. A trademark owner can file a lawsuit to stop trademark infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

The majority of trademarks are 2 dimensional, either text or a drawing. 3 Dimensional objects can also be registered as trademark. Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Trade dress originally included only the packaging or “dressing” of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Thus, trade dress includes the shape of a product shape.

Registering trade dress is slightly more complicated that a normal trademark application. When an applicant applies to register a product design or other trade dress, two substantive issues are considered: (1) functionality; and (2) distinctiveness. If the design of a product is essential to the use or purpose of the product or if it affects the cost or quality of the article it is functional and cannot be registered. With respect to distinctiveness, produce design can never be considered inherently distinctive, therefore evidence of acquired distinctiveness must be submitted.

Gaining trademark protection for a product design can be difficult however the benefits of registration of a product design as a trademark out weight the cost of the registration process.

LEGO A/S, v. Laser Pegs Ventures, LLC, 3:20-cv-00716 (D.CT 2020) is a case which involves a product design which has gained trademark protection in the United States. Plaintiff in this case is the manufacturer of the iconic LEGO toy. Plaintiff has been manufacturing plastic brick toys since 1958. The LEGO brick world is populated by Mini figurines which are as recognizable as the bricks themselves. An example of a LEGO mini figurine is reproduced above on the left. In 2016 LEGO successfully registered the shape of the Mini figurine as a trademark.

The trademark registration No. 4,903,968 consists of the three-dimensional configuration of a toy figure featuring a cylindrical head, on top of a cylindrical neck, on top of a trapezoidal torso of uniform thickness, with flat sides and a flat back, where arms are mounted slightly below the upper surface of the torso, on top of a rectangular plate, on top of legs which bulge frontwards at the top and are otherwise rectangular with uniform thickness, on top of flat square feet.

Defendant produces a brick building toy which competes with Plaintiff’s product. Defendant’s product also includes little people to live in the brick world. An example of Defendant’s figurine is produced above on the right.

In May 2020 Plaintiff filed a complaint against Defendant on several different grounds including trademark infringement. Plaintiff alleges that Defendant has sold figurines that are confusingly, strikingly and substantially similar to the overall look and feel of the LEGO Mini figurine. Given the similarity between the products Defendant will have a difficult time showing that the two product designs are not confusingly similar to consumers. We will have to wait for Defendant’s answer to see what defenses are offered.

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