What do the Coca Cola Bottle, Ring Pop candy and the PedEgg foot micro file all have in common? The designs of each were once, or still are, protected by design patents in the U.S. and are also well-known trademarks. Why would a company use two forms of intellectual property protection to protect the same thing? Piggybacking design patent and trademark rights is a clever strategy to obtain strong intellectual property protection for a three-dimensional brand.
Trademark rights exist in nearly anything capable of being represented graphically, and which functions as an identifier of source. This definition includes typical word marks, logos and taglines used with products and services. It is also broad enough to include the shape and appearance of the product itself. Shape and appearance, as well as the way a product is packaged, are often referred to as “trade dress.” Trade dress, like a service or certification mark, is a type of trademark right.
Unfortunately, it can be difficult to register product design trade dress with the U.S. Patent and Trademark Office (PTO) until the trade dress has acquired secondary meaning. Or, in other words, until the product design trade dress serves as an identifier of the source of the product, as all trademarks must, in the eyes of consumers. In some cases, it may take several years and significant advertising of the design before a company can show that the design is functioning as a source identifier and therefore, that it has secondary meaning. How then does a company protect its product design while it is establishing trademark rights?
One approach is to obtain design patent protection for the product design. Design patents are available for any ornamental product design that is novel, not obvious and not functional. No use or consumer recognition of the design is required to obtain or maintain a design patent in the U.S. Unlike utility patents, the PTO grants design patents fairly quickly—in about 12 months from filing and they last for 14 years from their issue date. In some circumstances, a design patent can be obtained in a matter of months.
Design patents are also presumed valid immediately after grant, while trademarks only become incontestable after at least 5 years of continuous use. The test for infringement of a design patent is “substantial similarity” between the patented design and the accused infringing design. There is no requirement to show consumer confusion or a likelihood of consumer confusion through costly consumer surveys, as is often necessary with trademarks. Perhaps what is most attractive about design patents is that the typical measure of damages for infringement is disgorgement of the infringer’s total profit. No actual loss to the patent holder is required to obtain money damages from an infringer.
The challenge with design patent protection, however, is that the product design should not be disclosed to the public before the design patent application is filed. The reason for this is that prior disclosure may prevent companies from obtaining a valid patent in the U.S and abroad. This is particularly challenging when it is necessary or desirable to do consumer testing before putting a new product on the market. An invalidating disclosure can be avoided by having proper confidentially agreements in place. Nevertheless, because of this challenge, it is important that care be taken before a new product is launched to create a strategy that will protect the product design throughout its lifecycle.
When used together, design patents and trade dress protection can be a synergistic pairing to ensure that unique and valuable product designs are protected, even before a product is launched.