March, 30th, 2022

By Stephen Ball

A product’s design can act as a source indicator just like a logo or tagline and can be protected as a trademark. Think of the iconic shape of the Coca-Cola bottle or Hershey’s kiss—a consumer knows where the product is coming from and what to expect. Without protection, an owner is damaged when imitators copy a design to divert sales. There is also a risk that the owner’s name becomes associated with cheaper, sometimes dangerous, products. Although trademark protection can last forever, it may take years to secure and other forms of IP can be part of the strategy.

Trademark and Trade Dress Protection

A trademark serves as a short-hand indicator of the origin of a product or service, which is reinforced through marketing activities. While trademarks are typically thought of as logos or taglines, a trademark can be almost anything, including symbols, sounds, shapes, colors, textures, and scents. The distinctive appearance of product design or packaging can also be protected as “trade dress.”

Trade dress protection covers non-functional elements of product design. To be non-functional, a design element should not affect product cost, quality, or a manufacturer’s ability to compete in a non-reputational way. Since product design is not considered to be inherently distinctive to be afforded immediate trademark protection, it must acquire “secondary meaning,” or proof that the design has become distinctive in the eyes of consumers. Five years of exclusive and continuous use in commerce can be evidence of secondary meaning. This can be achieved while on the Trademark Office’s supplemental register in order to give notice to the public of the claimed rights.

Trademark protection can be very valuable. Infringement is determined by the “likelihood of confusion” test, i.e., would a potential consumer be confused between two trademarks. This can be broader than other forms of IP protection since a potential consumer quickly scanning store shelves for a product may find two designs “confusingly similar” even if, for example, an ordinary observer does not find them “substantially similar” (under design patent law) or there is no evidence of copying (under copyright law). And unlike patents and copyrights, a trademark has the potential for an unlimited duration based on use. Trademark value may increase with successful branding and consumer recognition, whereas the value of other forms of IP may decrease as expiration approaches. Accordingly, trade dress protection is important to not only defend products in the marketplace, but also add value to a company’s bottom line.

Building Protection Around Product Design

Because of its unlimited duration and broad coverage, trade dress protection should be sought. However, other forms of IP can provide a valuable period of exclusivity while “secondary meaning” is achieved. Patents are often the first form of protection that comes to mind. A design patent protects any new, original, and ornamental design for an article of manufacture for a period of 14 years. Design patent infringement is determined by a test of “substantial similarity” and copying does not have to be exact to infringe. However, design patent protection cannot be obtained one year after any offer for sale, public use, or publication of the design. And because protection is limited to aesthetic features, a design patent can be invalidated if the design is dictated by its function.

Copyright, meanwhile, extends to “original works of authorship fixed in any tangible medium of expression.” Copyright protection is also limited to aesthetic features. Protection typically has a duration of the author’s life plus 70 years. To prove infringement, a copyright owner must show that the infringing work incorporates the original material. This puts the burden on the copyright owner since any evidence of access is likely in the defendant’s possession. As a consequence, independent creation is often successfully used as a defense.

IP for product design is an important consideration and designers can build a web of protection to defend against imitation and to preserve market share. Trademarks are perhaps the broadest form of protection with a liberal infringement test and potential for unlimited duration. However, the different forms of IP can be used in combination for best effect. As the limited duration of a design patent nears expiration, reliance may shift to the potentially unlimited duration afforded under trademark law. Copyrights provide additional value as inexpensive and easy protection to obtain. Each type of IP offers remedies under federal law, including the power to stop infringing activity as well as monetary compensation for the unauthorized use of protected design features.


WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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