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Protecting Your Product Design Through Trade Dress and Design Patents

I’ve been asked about this often from clients in certain industries, particularly in the furniture industry: How can we stop competitors from copying our product design?
         
Trade dress refers to protection for the totality of elements of a product – including size, shape, color or color combination, texture, graphics, etc. Trade dress is protectible if the totality of those elements identify the source of the product. The U.S. Patent & Trademark office permits registration of trade dress so long as the product configuration is nonfunctional. Unlike traditional trademarks, however, applicants need to provide evidence of acquired “secondary meaning” – that is, a showing that the product design has acquired distinctiveness in the minds of the relevant consuming public. (Interestingly enough, I wrote an article on this exact topic for my law school journal when I was in law school, and the law hasn’t changed much since.)

How do you prove that your product – say, a piece of furniture – has acquired secondary meaning? You would need to provide proof of length of use, public exhibition of the design, awards, accolades, significant sales, advertising mentions, etc. Sometimes survey evidence and affidavits / declarations from customers are also helpful, but hopefully would not be necessary. Once registered, trade dress registrations can extend for as long as you are using the trade dress in commerce, which is an advantage over the 14-year length of design patent protection.

Nonetheless, for newer designs that you anticipate will be important (and, I know, it is hard to tell up front), it may be worth seeking design patent protection both because it provides protection without you having to prove acquired distinctiveness, and also because the fear of “patent infringement” may have more teeth against competitors. (The damages you would get from either are not really too different, even though there are some differences, like the ability to get a reasonable royalty for design patent infringement.)

Note that decorative aspects of the product can often be copyrighted, as well, which would be cheaper, but may be more limited in nature.

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