When it comes to developing an intellectual property strategy, it can be easy to miss the forest for the trees. The main pillars of intellectual property (patent, copyrights, trademarks, and trade dress) are usually the focus (and rightly so), but how the various types of intellectual property work together can sometimes be lost in the process. This is especially true when it comes to design patents and trade dress protection. These two types of intellectual property protection are different, yet depending upon certain factors including but not limited to product development and product lifespan, they can actually work together to provide a sum far greater than their parts. In other words, understanding their differences is key to understanding how they can work together, and may help provide some additional product longevity to your company (or client) if you understand this interplay and implement it correctly.
The interplay of different intellectual property rights is nothing new in the world of intellectual property. For example, computer software is subject to copyright protection to the extent it is original (as copyright protects original works of ownership fixed in a tangible medium of expression). That said, computer programs (or elements thereof) may also be patentable in the United States (assuming such programming is novel, non-obvious, and otherwise offers some identifiable improvement on the computer — there is more to it than that, but for the purposes of this example, you get the drift). Of course, copyrights and patents protect different aspects of intellectual property, and the terms of protection for utility patents and copyrights are different, but these different types of intellectual property can work together to provide layers of protection to the applicable products(s) embodying those rights. The same is true for design patents and trade dress protection, and the nature of the protection they afford individually is an important antecedent to understanding how they work together.
Design patents, unlike utility patents, provide protection for the non-functional characteristics of a specific product. More specifically, the USPTO defines a “design” in its Design Patent Application Guide as “the visual ornamental characteristics embodied in, or applied to, an article of manufacture.” As designs focus on appearance, “the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” So, design patents cover designs that are articles of manufacture, novel, non-obvious, and ornamental (covering an article’s shape, surface orientation, and even color, to name a few). The duration of design patent protection is 15 years from the date of issuance (for design patent applications filed on or after May 13, 2015; then, the duration is 14 years). Simply put, design patents protect the way the article looks; they do not protect how an article works.
Trade dress also focuses on appearance, but in an entirely trademark way. By that, I mean that trade dress is a type of trademark protection that protects the appearance of a product, its packaging displays, or other elements that promote the product (or service) due to its distinctiveness in commerce and operation as a source identifier. For example, when one sees a Coca-Cola bottle from a distance, it immediately brings to mind not just any cola soft drink, but the specific cola soft drink manufactured by The Coca-Cola Company — a powerful source identifier just by the design of the bottle. As you can see, trade dress operates under trademark law, so its focus is on likelihood of confusion and the origin of such goods and services. Like design patents, trade dress does not cover functional elements of the product. Unlike design patents, however, trade dress need not be registered with the USPTO to be enforceable (though federal registration offer distinct advantages, not the least if which is nationwide constructive notice and a presumption of validity). Further, the duration of trade dress protection can be unlimited — that is, the protection will remain in place so long as the trade dress is used in commerce.
This is where the interplay of design patents and trade dress becomes important. Design patents are patents, so to the extent the article embodying the design was disclosed before the filing of a design patent application, a design patent may not be available. That said, where the article embodying the intended trade dress has yet to be introduced into commerce, a design patent may be an important option. The most important point here, however, is that both design patents and trade dress may work simultaneously and provide layers of protection that leverage the best of both worlds. For example, one can file to design patent protection and, assuming issuance, use the duration of the design patent term to build trade dress rights so that when the design patent expires, trade dress protection can still apply for the duration of the product lifecycle in commerce. Of course, other intellectual property rights may protect other elements of the product, but the point here is that both design patents and trade dress protection are important elements of protection that should both be considered whenever applicable.
It is interesting how these two different yet complimentary types of intellectual property can add value to an intellectual property portfolio. Protecting and leveraging such rights, however, requires informed counsel and a strategic plan. So when it comes to your intellectual property strategy, don’t be afraid of a little form over function — your company (or client) will be better off for it.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.
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