Trade Dress Series, Part 1: Product Designs – Choosing trade dress, copyright, or design patent protection

Trendsetting product designs are often the crown jewel of a company. Capturing the public’s attention – and pocketbooks – is an asset worth protecting. Luckily, companies have several tools in their intellectual property toolbox for protecting non-functional product designs: trade dress (trademark), copyright, and design patent. Often, a company must choose between these legal protections so understanding the benefits and challenges of each is important to strategic planning.

Trade dress protection under federal trademark law can extend as long as the design is in interstate commerce. Trademark protection is not subject to the limited protection periods of patent and copyright protection. The key to trade dress protection is that the design element (or a combination of elements) is so distinctive that consumers come to recognize it as signifying a particular company’s product. In other words, simply by seeing the design, a potential consumer knows that brand. Trade dress protection is not available for functional designs (the design actually serves a purpose). Examples of successful trade dress protection include the Coca-Cola bottle and the Voltswagen Beetle (Bug). The most recent successful use of trade dress was by Christian Louboutin for its lacquered red soles on high heels.

Trade dress is preferably registered with the USPTO, but unregistered trade dress can still be protected through judicial channels. The key to this protection is marketing in a way that emphasizes the design element as a brand identifier. Trademark registration for trade dress generally costs $1,000 – $5,000.

Copyright protection does not require consumer association with the design feature. It allows the copyright owner to control derivative works, distribution and importation. Copyright protection exists at the moment of creation; it does not experience the 6-18 month delay as in obtaining trademark registration or design patent issuance. Copyright protection lasts for the author’s life plus 70 years (or 120 years in the case of works-for-hire). Copyright is the least expensive legal protection (usually under $500) and can be a powerful tool. Copyright offers limited protection for utilitarian objects and requires proof of copying. However, it is not subject to the short statutory filing period and allows for statutory damages, eliminating the burden of showing actual damages.

Design patent protection is available for ornamental non-functional design features, even for utilitarian objects, if the features are novel and not driven by function. Design patents last for 14 years from issuance. The typical costs are $1,000 -$5,000, a fairly affordable legal protection for a profitable high-volume item or a flagship design that offers prestige to the company in the marketplace. Proof of copying is not necessary and patent damages can include treble damage awards for willfulness. The standard to obtain a design patent is more stringent, and thus design patent protection is considered broader and more powerful.

In Part 2 of this trade dress series, we will look more closely at what qualifies as trade dress and what certain features need to be considered for trade dress protection. Part 3 further explains the consumer recognition requirement. Part 4 provides examples of popular brands that have successful trade dress claims, and Part 5 reveals some unsuccessful attempts at trade dress protection.

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