This article explores the trademark-design patent overlap. The maker of a new product or service wants to distinguish its goods/services from the competition. A distinctive style of a product, identifying the maker or source of the product, can be valuable intellectual property. Note I have previously written on the distinctions between trademarks and patents. Trademark provides protection of a mark, e.g., name, word, or logo, that is used to mark a product sold in commerce. The mark identifies the origin of the product. For example, Telsa, Ford, and Chevrolet identify three brands of automobiles. I have written that patents are a distinct type of intellectual property protecting a useful idea. See Patents, Trademarks and Copyrights. However, there are also design patents protecting the ornamental appearance of an article. In this article, I discuss the interrelationship between trademarks and design patents.
The trademarks can be more than a word or name but can comprise a stylized logo. See below:
Product designs can also be protected as intellectual property. Typically this is a design patent. Staying with auto for the moment, an automobile grill can be protected with a design patent. I have also written of a mobile phone case being protected by a design patent. See Design Patents, $1 Billion Stepchild.
The style of a product such as ornamental design can be protected by a design patent. The distinctive style of a product can also designate the origin of the product similar to the identification provided by a trademark. The distinctive style is termed trade dress and is protectable by registration with the Trademark Office of the USPTO. Trade dress constitutes a “symbol” or “device” within the meaning of 15 U.S.C. Section 1052 (Lanham Act). Although trade dress originally applied to the packaging (or “dress) for the product, it has been expanded to include the overall image or appearance of the product such as size, shape, color or color combinations, texture, graphics. See Two Pesos, Inc. v Taco Cabana Inc., 505 U.S. 763 at 764 (1992) and Wal-Mart Stores, Inc. v. Samara Bros. 529 U.S. 205 at 209-210 (2000).
Trade dress pertains to protecting the maker’s ownership of the “mark” (here product design) and to prevent consumer confusion as to the identity of the producer. The well known and distinctive shape of a Coke bottle is protected as trade dress. In contrast, a design patent pertains to the encouraging innovation by protecting the ornamental design of the product. It will be appreciated that these goals are similar and overlapping in application.
For example, consider the shoe below.
The shoe comprises functional elements, e.g., a heel, sole, the sides and top holding the sole and heel to the wearer’s foot and laces to tighten the fit. The functional elements can not be protected as part of either the trademark or design patent.
It will be noticed that the shoe also comprises color variations (black, silver and white) in the content of the sides and top. Also there are ornamental design patterns of material included with the shoe sides and top, e.g., the serrated edges, stitching patterns and perforations. These elements can be protected as an ornamental design subject of a design patent and as trade dress under the trademark statutes. In other words, non-functional variations in the shoe covering (sides and tops) can be subject of both trademark and patent protection.
But the protections and eligibility for protection are not equal. For trademark registration, the design of the trade dress must be used in commerce to identify the source of manufacture or maker. The design must also be distinctive. Design patent protection requires that the design be ornamental, new and non-obvious over existing product designs.
The term of a design patent is fixed (15 years) and cannot be extended. In contrast, the term of a trademark is unlimited provided it is timely renewed and requisite fees paid.
The subject matter of the design patent would be defined by drawings showing the ornamental pattern of the stitching, varied shapes of differing layers of material, etc. The combination of colors may be an element of the design patent. The functional items such as the shoe heel, sole and non-design portions of the shoe tops and sides would be shown with dashed lines to designate that the heel and sole, etc., are not part of the subject of the design patent.
Note also that the exclusion from protection due to the part having a functional purpose is much more restrictive with regard to trade dress protection. For example, the covering of black leather over the toe of the shoe may be deemed to have a function purpose, i.e., extra protection of the user’s foot. However the fanciful design of the notch or cut of the silver covering between the front (toe) and the back of the shoe could be protectible for having no functional purpose. The sample and placement of the perforations could be protectable.
As stated above, the trademark would need also to be distinctive. This may require proof that consumers recognize the design as an identifier of the source of manufacture or seller. This may require proof of secondary meaning. There is a presumption that a trademark acquires secondary meaning after having been used in commerce for at least 5 years. (Note that this 5 year term to achieve secondary meaning may justify first applying for design patent protection. Design patent protection is “relatively” easily secured at minimal cost.)
As a rough estimate, a design patent and trademark can each individually be acquired for approximately $2,000.00.
The point of this article is to identify and explain how two different theories or mechanisms for protection of intellectual property can overlap and provide similar protection for the same design features. Each has different (although similar) requirements. Each however has different enforcement mechanisms and remedies for recovering damages for infringement.
Apart from the curiosity of this “dual” mode of protection, it may be of great value to a startup company to recognize that product design and appearance can be valuable intellectual property and recognize the methods of protecting the property.
© David McEwing, 2020