In the last two articles, "The case for design patents in manufacturing and industrial technologies," and "Touching the future: Patents on graphical user interfaces on the rise," we explored strategies associated with non-traditional areas of design patent law that companies may use to further bolster their patent arsenal. The final article in this three-part series focuses on a third niche area of design patent law that businesses may utilize to protect surface indicia, including trademarks.
Surface indicia is generally described as "a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture," and consitutes protectable subject matter via a design patent under 35 U.S.C. § 171. One of the key threshold requirements that must be met in order to protect surface indicia via a design patent is association of the surface indicia with a specific article of manufacture. To meet this requirement, an applicant for a design patent must connect the surface indicia to the article of manufacture, and convey this connection to the U.S. Patent Office with some specificity, through one or more drawings, the title, or the specification.