January 17, 2012

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Dressed for Success

Protect Products with Design Patents and Trade Dress

Ryan L. Marshall

January 17, 2012

Utah businesses have a terrific history of innovation and entrepreneurship. They constantly develop new and successful products. Those products generate momentum, revenue and notoriety. Often, that success leads to copycat products by competitors who imitate the design and innovation of other companies. Securing the right form of intellectual property can protect a successful product and its revenue stream. Patents and trademarks are both forms of intellectual property that can be critical to a company’s success, and the specific combination of design patents and trade dress can perpetually protect some products. Design Patents A design patent protects the ornamental appearance of an article of manufacture, as opposed to a utility patent, which can safeguard the functional aspects of an article. Design patents are less expensive to obtain than utility patents and often are issued within six to 24 months from filing. The U.S. Patent and Trademark Office (USPTO) grants design patents for new, useful and nonobvious designs, while foreign countries offer similar protection as “industrial designs.” Products that incorporate a unique design or combination of design elements are eligible for design patent protection. Design elements may include surface ornamentation, configuration (shape) and other features, such as color. Design patent owners can exclude others from making, using, offering to sell and selling the patented design or importing products having that design into the United States. That protection covers the visual aspects of a product but not the underlying function, which may or may not be protected by a separate utility patent. Innovators have received design patents for many types of products, including furniture, light fixtures, headphones and eyewear. One prominent example is Coca-Cola’s original bottle design. Patents receive favorable legal treatment because they are presumed by the courts to be valid. To invalidate a patent, infringers must show clear and convincing evidence that a design is obvious or lacked novelty when the patent application was filed. To patent holders, courts can award damages in the form of lost profits, the infringer’s profits, or a reasonable royalty for the competitor’s use of the patented design, and enjoin further infringing use. Design patents can be enforced from the moment they are issued until their 14-year patent term expires. Trade Dress Trademarks are words, designs or other distinctive signals indicating the source of a product or service. They are ubiquitous in our culture and enable consumers to distinguish between the different providers of products while providing an expectation of quality. Trade dress is a type of trademark arising from design elements incorporated into a product or its packaging. Those design elements can include the shape, color and arrangement of various design elements. When companies develop, advertise and consistently use trade dress, consumers may associate a product uniquely with a company. Trade dress is protectable, because like other forms of trademarks, an infringer’s deceptive use of trade dress harms the consumer. Packaging or product appearance that imitates the trade dress of a known product can mislead consumers into believing the product they are purchasing is from a recognized source, when the product actually is an inferior knockoff. Trade dress has been recognized for a variety of products, including children’s clothing, product displays and even restaurant décor. Trade dress protection does not blossom overnight. It develops as consumers associate design elements with a specific company. Distinctive design elements coupled with effective and consistent advertising that highlights the design elements cultivate the consumer perception necessary to establish trade dress rights. That perception, also referred to as “secondary meaning” by courts, may take years to mature. Like other types of trademarks, trade dress can be registered as a “product configuration” with the USPTO—and it is advantageous to do so. Once registered, the trade dress is entitled to protection without time limitation so long as the owner continuously uses the trade dress. Registration also gives rise to nationwide constructive use and notice—an important factor for enforcing trade dress rights throughout the country. Like design patents, trade dress protection has limitations. For example, functional elements cannot be the subject of trade dress protection. Many applications for product configuration are rejected by the USPTO because the application covers both functional and aesthetic elements of a product. Functional features appearing in a product covered by a utility patent will often eliminate any opportunity to develop trade dress rights. Registration is usually not available until the trade dress has obtained secondary meaning over time. Also, the trade dress must be sufficiently distinctive from trade dress in use by others at the time the trade dress was first used. Two Stages of Protection Products can be perpetually protected against knockoffs by using design patents and trade dress together. During the initial stage of a product’s life, design patents can be used to exclude others from copying the patented design. Meanwhile, the company can develop trade dress rights by consistently using the design and highlighting the design elements in its advertising. By building consumer association of the design elements with the company during the patent term, a company can develop its trade dress rights to continue protection for the product after the patent expires. Coca-Cola has successfully employed this strategy with its patented design for the original Coca-Cola bottle, even though the design patent expired decades ago. Innovators who obtain the right forms of intellectual property can protect their success today while leveraging it into the future. Ryan L. Marshall is an associate at the intellectual property law firm Brinks Hofer Gilson & Lione in Salt Lake City. He can be contacted at (801) 355-7900 or marshall@usebrinks.com.
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