So I have a design I want to protect – say it is the design for a dress, the style of the dress, or the look and feel of a dress, or maybe it is the design for a new brand I am creating. Should I apply for a trademark? Or copyright? Or a design patent? Wait – aren’t they all the same??? Not really. Often, people refer to trademarks, copyrights and patents interchangeably. But while all three are useful to protect your “intellectual property”, the types of protection and the scope of the protections are very different.
So let’s go back to the basics. What is “intellectual property” exactly? The U.S. Constitution, Article 1, Section 8 references the design of Congress “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”. This is often referred to as the “intellectual property clause”. Essentially, this clause was included to encourage authors, inventors and the like to be more innovative and develop creative works that benefit society. The fact that such protection grants exclusive rights over creative works functions as an incentive to encourage the development of intellectual property.
Broadly, there are three main intellectual property laws – copyright, patent and trademark. Briefly, copyright law protects any original artistic or literary work, provided it is the “original expression of an idea” and not the “idea” itself. Patents (utility patents are the most common) protect scientific inventions and technological innovations, provided they are new, non-obvious and useful. Trademarks protect brand name and brand value and are most often used to indicate the source of origin for goods and/or services.
Given this background, let’s go back to the original question – so what should I apply for now that I have this design? Well, this requires further consideration –
Let’s begin with copyright law. Do you have a design you want to put on clothing? Or just a design in general (in the form of a sketch)? You can apply to have copyright protection for this. The only caveat is that the idea for a design is not protectable by itself unless it has been reduced to expression in some form of tangible medium. Specifically, “ornamental” designs placed on the front of clothing should be copyrighted and not trademarked because this would not qualify for the complete federal trademark protection anyway.
Interestingly, (unlike design patents, as we will see later) copyright law also protects the design of a “useful article”. A “useful article” refers to items that serve a utilitarian purpose, for e.g. the shape or design of a car, airplane, football, etc. Copyright protects the design of a “useful article”, but only to the extent such a design is separable and capable of existing independent of the utilitarian aspects of the article. Such separability can be physical i.e. we can physically separate the design from the functionality of the article or conceptual i.e. the design invokes a concept separable from that of the article’s function. In either situation, copyright law will help secure legal protection for the design of a “useful article”. To give a clearer idea, copyright law helps protect original prints and patterns, fabric designs, belt buckles, non-useful/non-functional clothing, unique color arrangements and novel combinations of elements used on apparel and accessories, provided “separability” can be achieved.
Trademarks and Trade Dress
So how is a trademark or trade dress different? While trademark references the legal protection for a brand name, trade dress essentially refers to the image and overall appearance of a product/brand. Because it is classified under the broad field of “trademarks”, a trade dress is a design/product packaging typically used to identify the brand directly. This can include customized boxes for the brand (such as a Tiffany’s box), product shape (such as the Coca Cola bottle), or even the look and feel of a restaurant or retail store (such as the Apple store and Chipotle Mexican Grill – yes, these are actually protected!!). Trade dress is commonly sought in restaurant décor and design, food products, bottles and cans, toys and games, sporting goods and apparel, publications, health care products, computer products, pharmaceuticals, automotive products and footwear.
Briefly, a trade dress is a design that can directly identify the brand because of its distinctiveness in the marketplace. In order to qualify for trade dress protection, the design must be primarily nonfunctional i.e. it must not contain any functional features. What this means is that if the “trade dress” feature is “essential to the use or purpose of the article or if it affects the cost or quality of the article”, then the trade dress is considered functional. It is important to note that the feature need only have some utilitarian advantage to be considered functional. Basically, a trade dress feature, taken as a whole, is functional if it is in its particular shape because “it works better in this shape.”
At the core of it though, trademarks (and trade dress) are used to protect brand names and brand value, so while a logo and a distinctive pocket stitching on a pair of jeans could be registered as protectable trademarks and the unique shape of a particular clothing could be registered as protectable trade dress – they must be distinctive in their reference to a particular brand. Even a simple shape along with a color for a particular product/service/brand could receive trade dress protection because trade dress is about source identifying and with extensive promotion and/or advertising, a product shape/color can receive trade dress protection (like the color orange for Home Depot’s specific products/services).
So how about design patents? Design patents fall within the broad purview of patent law, so they tend to be a little more complicated. While utility patents are only granted to articles for their use and functionality, design patents extend to the “way an article looks” (irrespective of how it functions), more specifically, they protect the configuration or shape of an article, the surface ornamentation applied to an article, or the combination of configuration and surface ornamentation. Remember: this is only restricted to the appearance of an article, not its structure or functionality.
Design patents specifically protect the design of an “article of manufacture” i.e. any invention that is a new or non-obvious physical product. To qualify, the design must be ornamental, new and original over existing prior designs. Ornamentality of an article of manufacture is the key to seeking a design patent. A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and will fail to receive design patent protection. Similarly, if the design is well-known or naturally occurring, then it would be considered lacking in originality.
It is interesting to note that there are two distinct points that separate design patent protection from the previous two intellectual property rights. Unlike copyright and trademarks (and trade dress), public disclosure is harmful for design patent protection. More specifically, if you disclose the design more than a year before seeking federal protection for it, the design patent application will not meet the statutory requirements and will subsequently fail to register with the USPTO. The second divergent point is that this is even more important because design patents are only protected if they are registered. While copyright and trademarks have the benefit of “common law rights” i.e. certain limited legal rights without any formal application, design patent rights can only accrue from an actual application from the USPTO.
So to summarize, for design patents, the design must be for the configuration or shape of an object, the surface ornamentation of the object or both. It must be visible during the actual use of an “article of manufacture”, but must not contribute to such use. It must be purely ornamental, new, original and not on the market for more than a year. If your design fulfills these requirements, then odds are you will receive federal design patent protection.
Now that you know the basics of each type of protection, tomorrow we’ll talk about what to do if you think your product would qualify for more than one type.
RENUKA RAJAN, is a NY-licensed trademark attorney in the Nagpur office at LegalForce RAPC. She specializes in trademarks, copyrights and office action responses. Renuka received her B.A. LL.B. (Hons.) degree from National Law University, Delhi and her LL.M. in IP from the George Washington University Law School (Washington, DC), where she was also a Thomas Buergenthal Scholar. When she is not busy advising her clients, she’s usually found either in the gym or singing along to different songs on her guitar with the same six chords. She is an avid Harry Potter fan and is always up for a healthy argument.
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