Protecting the Look of a Product: Design Patents vs. Trade Dress

February 1, 2019

James M. Hanifin Jr.

(as published by DesignNews)

When considering intellectual property protection, businesses often overlook the value of design patents and trade dress rights. Products may have ornamentation and/or visual designs that could be protected to prevent copying. Understanding the differences between design patents and trade dress rights may be beneficial to an engineer or other product designer involved with designing a product. The timing of product development and its expected lifecycle can impact what type of protection may be desirable, and understanding these differences can help create products that compete longer in the marketplace.

Design Patents: Understanding their Role

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

In the Apple v. Samsung design infringement case, Samsung was found to infringe an Apple design patent because, even though their 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.

Trade Dress: Gaining Competitive Edge

Trade dress is a type of trademark directed to the distinctive look and feel of a product or service which identifies its source. 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 may include the design of a product or its packaging. If a product design is identifiable with a 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).

When to Consider Design Patents

To obtain a design patent, the design must be an article of manufacture, 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.”

Trade dress protection can only be obtained for non-functional designs. For example, a “pink” colored bandage was 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 trade dress rights may be desired, care should be taken to avoid touting functional benefits of the design.

Demonstrating that a design has acquired secondary meaning can be difficult and requires evidence which may include testimony/surveys, or extensive marketing and/or sales of the product. Aggressively highlighting the design feature when advertising may facilitate acquisition of secondary meaning.

Trade dress rights 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, a competing product infringes when it is deemed close enough to confuse a consumer regarding its source. In contrast, infringing a design patent requires an ordinary observer to find the accused design substantially similar to the protected design, in context of prior designs in the field – generally a more difficult bar.

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, whereas the owner of an unregistered mark must establish its validity.

Next Steps and Considerations

If the product is not yet being commercialized, only a design patent may be possible because a 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 pursing 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, contemplate obtaining a design patent for a unique ornamental feature of a product which 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 hopefully discourage copying of the design, helping to establish distinctiveness of the design.

After several years of commercialization, consider applying for trade dress protection for the design feature if the product or similar products with the same design feature 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.

To sum it up, design patents and trade dress rights should be considered when the visual appearance of a product may contribute to commercial success in the marketplace. These can be important tools for protecting the distinct ornamentation or design of products which may become associated with a company. Investment in such protection can enhance its economic benefit to the owner of the rights.