Design Patent, Copyright, or Trade Dress?

By Debby Winters

I recently met with a client who wondered if they should register their product for a copyright, a patent; either design or utility, or for trade dress protection. Sometimes it is hard to decide between the various types of intellectual property protection and sometimes you can use several for the same product. Because borders between the types of protection are not always clear, it may be that some subject matter is eligible for protection in more than one category. It may also be that qualifying for protection in one category excludes the subject matter from protection in another.

Design patents protect the ornamental features of a manufactured article (while utility patents protect the utilitarian features). The drawings of a design patent show the parameters of design patent protection. Design patents remain in force for 14 years from the date the patent was granted if the application was filed before May 13, 2015 and for 15 years from the date the patent was granted if the application was filed on or after May 13, 2015.

Trade dress is a type of trademark that protects packaging or product configuration. Like other trademarks, trade dress marks serve as indicators of source. To qualify for trade dress protection, packaging or product configuration must be non-functional (that is, the features protected as trade dress must not be necessary for competitors to have to compete against the claimant) and must be either inherently distinctive or have acquired distinctiveness. Product configuration marks are considered inherently not distinctive and must acquire distinctiveness in order to qualify for trademark protection. Trade dress marks (like other marks) may be protected for an indefinite length of time.

A product design or feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. There are several factors one may consider to determine if a feature is functional. One factor is whether the features that are the subject of an application seeking to register trade dress were also the subject of claims in a utility patent. If so, the utility patent is strong evidence that the features are functional and therefore ineligible for trade dress protection.

But if a feature is protected by a design patent, that fact weighs against a finding of functionality (since design patents protect ornamental features) and may mean the design could be eligible for trade dress protection (even though it is still possible for other evidence to establish functionality). If the features are conclusively determined not to be functional, trade dress protection and design patent protection may exist for the same subject matter, either concurrently or consecutively, so long as the features are determined to be distinctive.

Deciding when, whether, and how to pursue design patent protection and/or trade dress protection may depend on a number of factors, including whether the design has been available in the marketplace before one files a patent application, and if so, for how long, and whether the features are inherently distinctive or need to acquire distinctiveness before they can serve as an indicator of source. Having a design patent may aid in the development of trade dress rights by giving the features in question the time to acquire distinctiveness while the design patent remains in effect and prevents others from using the design. It is possible to facilitate the acquisition of distinctiveness through the use of “look for” advertising that instructs consumers of the product to identify the features as an indication of the source of the goods and services. Then, when applying for registration of the trade dress mark, the applicant can present evidence of the advertising in support of its claim of acquired distinctiveness. If the advertising is effective, this should also allow the applicant to produce evidence that consumers recognize the features as an indicator of source. Thus, the applicant may secure trade dress protection prior to or after the design patent’s expiration.

Of course, not all packaging or product configurations that are worth protecting by design patents will merit trade dress protection. While obtaining a patent is typically more expensive than obtaining a trademark registration, design patents tend to be significantly less expensive to obtain than utility patents, and trade dress applications are often more expensive to prosecute than traditional trademark applications.

Consulting with an experienced intellectual property attorney will help decide the appropriate strategy for each case.

Top Patent Stories

By Debby Winters

Every year Donald Zuhn recalls the top 20 patent stories for the past year.  You can find his selections for 2016 at these links: Stories 16 to 20, 11 to 15, 6- 10, and the top 5 stories.

Of note are the following:

#18 about the CRISPR patent.  CRISPR is an acronym for Clustered Regularly lnterspaced Short Palindromic Repeats.  There are many aspects about this, or should I say “these,” patents as more than one has been filed, and that’s part of the story itself.  Since these patents were filed in the days of first-to-invent, rather than first-to-file, therein lies an additional wrinkle to this story.  I will be blogging about CRISPR in the days to come, so won’t go into detail now, but it will be an interesting patent story in 2017 as well.

#16 about the new Trade Secret law, the Defend Trade Secrets Act of 2016 (“DTSA”) signed in law in 2016 by President Obama. Let’s keep our eyes on how this will morph in years to come, especially in light of a new Presidential Administration.

#4  is one of the important stories for both patent attorneys and inventors. In May of 2016, the U.S. Patent and Trademark Office issued the Subject Matter Eligibility Update, which provides further guidance for determining subject matter eligibility under 35 U.S.C. § 101.  We will see more to come on this topic to help clarify what is eligible subject matter for a patent and what is not.  This is also the topic of #2 in continuing fallout of the Supreme Court’s 2014 Alice Corp. v. CLS Bank.

#1- The top patent story, according to Dr. Zuhn was the Supreme Courts refusal to hear a case referred to as Sequenom.  Despite Sequenom’s petition for certiorari and a total of twenty-two amicus briefs that were filed encouraging the Court to grant certiorari, in June, the Supreme Court surprised many in the patent community by issuing an order denying certiorari in the case.  This story is from the Federal Circuit’s very controversial decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc., in which the Federal Circuit affirmed the District Court’s grant of summary judgment of invalidity that the claims of U.S. Patent No. 6,258,540 concerning fetal DNA were patent ineligible.

For more details on any of these cases, click on the links above.

 

 

Commemorating Five Years of the America Invents Act

On Wednesday, September 21, members of Congress and key congressional staff, USPTO leadership, and stakeholders from industry and the inventor community came together again to commemorate the 5th anniversary of the AIA on Capitol Hill.  What follows is a guest blog by Dana Robert Colarulli, Director of the Office of Governmental Affairs that appeared on the Director’s Forum Blog on the USPTO website. Enjoy!

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“We’ve come a long way in five years. The Leahy-Smith America Invents Act (AIA), signed in 2011 by President Obama, modernized the U.S. patent system and, as a result, helped strengthen America’s competitiveness in the global economy. Together with our stakeholders, the USPTO sought to implement the act consistent with the intent of Congress to increase certainty in our nation’s intellectual property (IP) landscape and enable the brightest ideas and most ambitious endeavors in the world to come to light.

I was there in 2011 and the years leading up to the President signing the AIA and have watched the agency embrace and implement the numerous provisions in the act. On Wednesday, September 21, members of Congress and key congressional staff, USPTO leadership, and stakeholders from industry and the inventor community came together again to commemorate the 5th anniversary of the AIA on Capitol Hill.

The event featured remarks from USPTO’s Director Lee, Representative Lamar Smith and Senator Patrick Leahy on the history of the AIA, the need for change, and the AIA’s impact on the IP system – even as we continue to evaluate these sweeping changes and look for ways to further improve our system. A panel discussion at the event focused on the impact the act has had on businesses and inventors of all sizes and what may be next in the way of improvements to the patent system.

The AIA implemented a number of significant changes to update and improve the U.S. patent system.  Upon signing the bill in 2011, the President described what the bill hoped to accomplish this way:

“It’s a bill that will put a dent in the huge stack of patent applications waiting for review. It will help startups and small business owners turn their ideas into products three times faster than they can today.  And it will improve patent quality and help give entrepreneurs the protection and the confidence they need to attract investment, to grow their businesses, and to hire more workers.”

The USPTO has delivered on that promise by reducing the patent application backlog by nearly 30 percent from its high in early 2009, speeding up examination including introducing a fast track option with discounts for small entities, and leveraging the increased financial stability and fee setting authority provided by the act to reinvest user fees into increasing quality under Director Lee’s Enhanced Patent Quality Initiative.

And just this week, the USPTO and the Economics & Statistics Administration at the Department of Commerce released an updated report on the impact of IP on the U.S. economy, reiterating in quantifiable terms the importance of a well-functioning IP system.

The increased attention and focus on our IP system in recent years is critical, and our job to look for ways to further improve did not end with the AIA. Again, the President stated in 2001:

“And we have always succeeded because we have been the most dynamic, innovative economy in the world. That has to be encouraged. That has to be continued.”

Inventors and innovators in the U.S. and around the world deserve a system that evolves and improves right along with the pace of technology – an important reminder as we celebrate the 5th anniversary of the AIA.”

Learn more about the impact AIA has had over the last five years in: