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You Have a Design: How Do You Protect It?

October 20, 2018

When attempting to protect the appearance of a product as opposed to its utility, either trademarks or design patents may be appropriate. It can be difficult to determine which type of intellectual property protection to pursue. Though they are separate protection vehicles, trademarks and design patents may well complement each other as described below:

Design Patents:

A design patent offers protection for the design for an article of manufacture, or put differently, the configuration, shape or surface ornamentation of a product or some combination thereof. This allows a manufacturer to reap the benefits of design efforts by making the production of knockoff products illegal. Assuming the protected product is of good quality, this builds good will with those who purchase the product. Unlike a utility patent, a design patent does not protect how the product functions, simply how it looks; it cannot be functional.

Trade Dress:

A registered trademark is essentially official recognition of a brand by the government. It identifies the manufacturer as the source of the products associated with the mark. Trade dress is a particular type of trademark that protects the design of a product (essentially the packaging, color, flavor, shape, configuration and other distinctive physical characteristics). Trade dress works to associate the design, and thereby the product, exclusively with its manufacturer. Like a design patent, a trademark cannot be functional.

Potential Remedies:

Infringement of a design patent can result in damages of a reasonable royalty fee and up to three times the amount found or assessed. Unlike utility patents or plant patents, design patent damages can also include the total profits of the infringing party but not less than $250. Note that, given recent Supreme Court precedent, if an article of manufacture (e.g. something made by hand or with a machine) protected by a design patent is one of many components that comprise a product, recovery may be limited to a portion of profits attributable to the protected component. Attorney’s fees may also be recoverable. Additionally, infringement may be stopped by an injunction prohibiting continued unauthorized use.

Infringement of trade dress may include court costs of the defendant, profits earned and an attorney’s fees. As with design patents, infringement may be stopped by an injunction prohibiting continued unauthorized use.

Which Vehicle to Choose:

The best vehicle to protect your product depends on a number of factors. You should consider how soon you want your protection to start, when it will end, and how the protection you choose will impact your business plan. A design patent can be obtained quickly—in a matter of months- allowing you to immediately prevent competitors from copying your design. Trade dress protection cannot be secured unless the applicant has used the mark in commerce and acquired secondary meaning (e.g. customers associate the mark exclusively with the manufacturer), which takes five years. A design patent expires 15 years after it is granted while trade dress, being a trademark, has an initial term of 10 years. But it may be renewed indefinitely for 10-year increments. Patent design protection remains even if the patent is never used. Conversely, trade dress must be used continually in commerce to be preserved. However, use of trade dress in commerce before securing a design patent may disqualify an applicant from securing a design patent for the same product or product component. As nothing prohibits simultaneous possession of both a trademark and a design patent, design patent protection and trade dress protection can be held simultaneously for the same product.

DeMarcus Levy is an attorney at Walter Haverfield who focuses his practice on intellectual property law. He can be reached at or at 216-928-2945.