Q: I want my shoe manufactured in China. What paperwork should I submit to prevent my shoe being produced to another comp ?

I intend to own everything on my shoe. The design, my name marked on it, the shoe in its entirety. I only want the manufacturer to make it mass production (according to my direction/spec sheet) to ship to me. I want to make sure, they are not using my name/design and reproducing it for their own profit. Or any other company replicating my shoe. What contract should I make sure we agree to ? I've seen 'Product Development Agreements' 'Supply Contracts' etc. I want to make sure the correct one is taken care of to protect me and the design of my shoe. My ultimate goal is reducing the chance of someone profiting off my designs. Would Patents and Trademarks play a role in the design or only the logo ? Thanks.

1 Lawyer Answer
Kevin E. Flynn
PREMIUM
Kevin E. Flynn
Answered
  • Patents Lawyer
  • Pittsboro, NC

A: You have asked a number of good questions. Let me fill in a few pieces of the mosaic, but you really need to get connected to a law firm familiar with working in China as there are many issues to address.

1st -- There can be utility patents on shoe designs. I worked on soft spike cleats for golf shoes many years ago. But utility patents for a shoe are relatively rare. There are certainly options for new features. Michael Jackson has a patent that allowed him to engage his shoes with the stage and do things that seemed to defy gravity as he was anchored to the stage.

A patent attorney can look at any new features and give you more precise advice. You can look at my slide set on patent searching and do some initial searching to look for relevant shoe patents to see if you have an innovation that may be worth chasing.

There are also design patents on the ornamental appearance of an item. These are generally much easier to obtain but much narrower. Depending on what makes your shoes distinct--this may be the right fit. See https://patents.google.com/?q=ornamental&q=shoe&q=appearance&q=shown&type=DESIGN for examples.

A US patent does not preclude someone from making the shoe in China for use in China. If you want to stop that, you would need a patent in China. Under the Paris Treaty, one can take a pending application here in the US and file a related application in many other countries. The deadline to do so is one year for a utility patent application but just six months for a design patent application.

I do not know the ins and outs of trademark law, but each country has its own trademark system. You need to consult with competent counsel to sort out the best way to protect your marks in China.

I know that you still have more questions but I wanted to offer some useful starting points.

Kevin E Flynn

Jingzhan Wang agrees with this answer

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.