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That Looks… Unique And Confusing: An Overview On Design Patents And Trade Dress

Design patents and trade dress registrations are often overlooked as a means of protecting intellectual property. Understanding the differences and similarities between each can guide decision making in order to capitalize on commercial success or keep products competitive in the market.

What are design patents?

Design patents protect the ornamental design of a product or part of a product, such as color, shape, detail, or pattern. Design patent protection protects only the visual, non-functional characteristics of a product and must be novel and non-obvious over existing designs.

A federal registration is the only way to obtain patent rights. Design patent rights are limited to 15 years from the date of registration with the USPTO. The goal of patents is to encourage innovation, but not monopolize innovation indefinitely. Inventions fall into the public domain after a limited period to allow further innovation building on the prior inventions.

What is trade dress?

Trade dress is a subset of trademark law aimed at protecting the distinctive look and feel of goods or services. Trade dress can protect the design of a product, product packaging, or, for services, the look of a store or display. To qualify for protection, trade dress must be a source identifier for a product or service, be distinctive in the marketplace, be in actual use in the marketplace, and be primarily non-functional. Ultimately, trade dress should cause consumers to think of a specific source of the good or services.

Trade dress can be registered or unregistered. Rights in unregistered trade dress are established through use in commerce but can be more limiting as compared to a federal registration with the USPTO. Federal USPTO registration has many benefits, such as a presumption of validity and non-functionality in the event of infringement. Protection lasts as long as the trade dress serves as a source identifier and can be maintained in perpetuity if properly used and, if applicable, registered and renewed with the USPTO.

Why choose one form of protection over the other? Do you have to choose?

You may not have to choose! There is an area of overlap where products may be eligible for both a design patent and trade dress registration, but not every product design is the right fit for each type of protection. There are several issues to consider when selecting what option may be best.

The functional aspects of your design will likely affect the ultimate decision. The distinction between the non-functionality analysis in design patents and trade dress is very nuanced. The goal of patent law is to encourage efficient, functional products in the market, therefore the law limits how long exclusive rights in functional designs can last. Due to the potential for trade dress to last indefinitely, the non-functional requirement is more strictly applied to trade dress than design patents.

Design patents only protect non-functional characteristics of a design; however, the overall product can still benefit a functional purpose. For design patents, the product design must have been primarily for the purpose of improving the appearance, not the use, of the product. In contrast, a product feature cannot have any functional purpose. Therefore, if design elements are closely tied to the functional aspects of the product, design patents are likely the best choice for protecting your design.

Another factor that will influence the choice is that design patent rights only come from federal registration. Notably, public use for more than one year before filing an application for a patent application will be a bar to registration. Such “public use” can include working with manufacturers on the design or displaying the product at a trade show.

Conversely, public use of trade dress is critical. Use in commerce establishes the connection between the design aspects of the product and the source of the product, as consumers aren’t likely to associate the product with the trade dress if they haven’t seen the product.

It may make sense to obtain design patent rights early then work to build trade dress rights without outside interference from competitors for the 15-year period of design patent rights. In fact, after five years continual use as a source identifier, it is much easier to obtain a trade dress registration. However, this dual protection may not be feasible if product has functional features.

In the end, which form of protection is right for any product requires consideration of many factors. But functionality, public disclosure, and length of protection are starting points as you consider what strategy to use in protecting your next product design.