How to Protect Your Products in a Competitive Market

May 23, 2019

James M. Hanifin Jr., Maximilian Tang

(as published here by Startup Nation)

Startups thrive on innovation and disruption, finding new ways to tackle challenges and devise solutions. However, many new businesses don’t have a strong understanding of how to safeguard their innovations in highly competitive markets. This is where design patents and trade dress rights can play an important role.

Even in the earliest stages of product development, understanding the differences between design patents and trade dress rights can be beneficial to engineers and product designers. Products may include unique ornamentation and/or visual designs that can be protected to prevent copying.

The timing of product development and the expected lifecycle of the product can impact what types of protections may be best, and understanding these differences can help create products that compete for a longer period of time in the marketplace. This article will explore when and why to pursue each type of protection.

Protecting products with design patents

Design patents provide a limited term of protection for the visual, non-functional characteristics of an article. They can cover aspects such as the shape, color and pattern of an entire product or a portion of a product.

Here’s a prime example: In the Apple vs. Samsung design infringement case, Samsung was found to infringe on an Apple design patent because, even though its Galaxy S 4G employed an overall different shape, the bezel of the Samsung phone looked substantially similar to Apple’s protected bezel design (see below). That similarity of only a portion of the overall product was sufficient to infringe.


Safeguarding your brand with trade dress rights

Trade dress is a type of trademark directed to the distinctive look and feel of a product or service which may identify the source of the product. To be registrable, a trade dress needs to serve as a source identifier, be distinctive in the marketplace, be used in commerce and be primarily non-functional.

Trade dress coverage may include the design of a product, or the packaging of a product. If a product design is identifiable with a brand, company, or source, trade dress rights prevent other products from appearing confusingly similar to a consumer. For example, trade dress rights have been granted to the shape of the Coca-Cola glass bottle and the red soles of Christian Louboutin shoes (see below).

Exploring your options

Which type of protection is best for your product, design and brand? An understanding of the differences between design patents and trade dress rights can help you pursue the most appropriate option.

When to consider design patents

To obtain a design patent, the design must be an article of manufacture which is ornamental, novel and non-obvious over existing designs. Although the article can provide functionality, the portion of the design to be protected cannot be purely functional. If the design is the only way to maintain the functionality of the article, the design is not eligible for design patent protection.

A design patent may not be available if an article embodying the design was publicly disclosed prior to filing the design patent application. Design patents can be sought before even beginning manufacturing. Therefore, ideally, an application should be filed as early as possible, prior to sales or other disclosure.

When to consider trade dress

To obtain trade dress rights, the design must be non-functional, and must have acquired “secondary meaning,” such that the design is identifiable with the source.

For example, the companies associated with the trade dress registrations below are likely readily identifiable to many of us. If the design involves product packaging, trade dress rights may arise from “inherent distinctiveness.”

Remember, trade dress protection can only be obtained for non-functional designs. For example, a “pink” colored bandage is not protectable because the color served the purpose of blending well with skin. The shape of a Gibson guitar was deemed too functional because it was advertised to have acoustical advantages. If you choose to pursue trade dress rights, make sure you avoid touting functional benefits of the design.

Demonstrating that a design has acquired secondary meaning can be difficult, and it requires evidence which may include customer testimony or surveys. In some cases, adequate recognition may require extensive marketing and sales of the product. Aggressively highlighting the design feature when advertising may help emphasize its secondary meaning.

Trade dress rights often deliver long-term value, as they do not expire as long as the design is used in commerce as a source identifier. Once a design acquires secondary meaning, future products can also benefit if they use the same protected design feature.

Furthermore, with trade dress rights, a competing product infringes when it is deemed close enough to confuse a consumer regarding its source. In contrast, infringement of a design patent requires an ordinary observer to find the accused design to be substantially similar to the protected design in context of prior designs in the field, which is generally more difficult to prove.

Although not necessary, registering a trade dress conveys a number of advantages that may serve as deterrents against copying. For example, a registered trade dress is presumed valid such that the burden of establishing invalidity falls on a copying party. In contrast, the owner of an unregistered mark must establish the mark’s validity should the mark need to be defended.

Next steps and considerations

If the product is not yet being commercialized, only design patent protection may be possible because trade dress rights arise only for a commercialized product design. Similarly, if the product has been publicly disclosed for longer than an allotted grace period, only trade dress rights may be available.

If the product lifecycle tends to be short, the limited term of a design patent may provide sufficient protection. However, if various products may be launched under your brand (for example, different models of sneakers), there could be value in pursuing trade dress protection for distinctive design features which may be employed throughout the product line.

If the commercial space is prone to knock-offs, it may be desirable to pursue multiple layers of protection. Before commercialization, consider obtaining a design patent for a unique ornamental feature of a product that could be associated with the company or brand. When commercializing the product, advertise and specifically call out the unique ornamental design features to help build recognition for acquiring secondary meaning. A design patent should ideally discourage copying of the design, helping to establish distinctiveness.

After several years of commercialization, consider applying for trade dress protection for the design feature if the product or similar products are in long-term plans. In this manner, upon expiration of the design patent term, trade dress protection may be in place to continue protecting your mark as long as the products are sold.

In summary

Design patents and trade dress rights should be considered when the visual appearance of your product may contribute to its commercial success in the marketplace. These can be important tools for protecting the distinct ornamentation or design of products which may become associated with the your brand.

Investment in one or both of these types of protection can create significant economic benefits for the owner of the rights. If you are seeking advice or counsel for your own situation, seek guidance from a qualified IP attorney that can help protect your valuable innovations.