https://archive.org/details/LegalGeekEp114
A couple weeks ago, Rubik's Brand Limited, the company behind current sales and marketing of the Rubik's Cube puzzle, sued big companies Duncan Toys and Toys R Us in federal court in New York for a series of claims related to alleged knockoff cube puzzles made and sold by the latter. These claims include trademark infringement, false designation of origin, trademark dilution, and unfair business practice under state laws.
There are some differences between the products. While the traditional Rubik's Cube has black background behind the facets and generally square facet corners, the competitor design has white background and rounded edge facets. The competitor design sells for a cheaper price as well according to Toys R Us's website. But in all other ways, the 3 by 3 block puzzles are functionally the same. And those changes, according to Rubik's Brand, are not sufficient to avoid infringement of the intellectual property still pending on the original Rubik's Cube.
You may be asking yourself, how could a functional puzzle like the Rubik's Cube still be covered with it being widely available since the 1980s? This illustrates the difference between patent protection and trademark or design mark protection. The patents in the U.S. and elsewhere on the Rubik's Cube expired in 2000, so from a patent perspective on the general mechanics of a rotating face, cube-like puzzle, this puzzle is in the public domain.
However, companies can also bolster or make fallback protection on products like this by filing trademark applications. Trademarks can be filed on product names, as you know, but design marks are also possible if the product appearance itself is sufficiently distinctive to identify to a consumer the source of the goods. Logos are trademarked as a design mark, for example.
Rubik's secured two U.S. design marks that cover a black cube having nine color patches on each of its faces with the patches having the colors red, white, blue, green, yellow and orange. Note that the design includes color identifying features in this context rather than the general mechanics of the cube puzzle, as that would be what patent covers. As long as Rubik's continues to use that design by selling in commerce or licensing, these trademark rights can be maintained indefinitely. So while this is narrower coverage than patent claims, it continues on and creates the basis for lawsuits like this one.
So, how does this one come out? While I'm no expert with respect to New York business practice laws, the design mark infringement case has some merit. Even though the knockoff is a white cube instead of a black cube, the colors chosen for the facets are the same six colors, and one could argue that this is the core essence of the design mark. It probably comes down to survey evidence on whether consumers are likely to be confused about the Duncan version being authorized or from Rubik's, and that's at least plausible. I personally would feel more confident in Duncan's chances had it changed one or two of the facet colors on the competitor puzzle as well, but that's not what happened.
The Bottom Line is, just because a patent expires and puts a product in the public domain, that does not mean the creator has lost all potential rights. It is wise to check for and design around later patent filings on further developments as well as any trademark and copyright registrations, before bringing a product to market. Otherwise, you could be stuck in a Rubik's Cube of legalese and court orders!
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