An area of intellectual property that befuddles most clients is the distinction between design patents and trade dress. Each intellectual property right covers a distinct purpose; both rights can be complementary, or can be relied upon individually. Factors to consider are discussed below.
Design patents cover non-functional inventions of a design. The design in a design patent must be ornamental, new and not an obvious variant over any existing designs. Existing designs are called “prior art.” Because the design is embodied in or applied to an “article of manufacture,” the underlying article has a functional purpose. The design, however, cannot be driven by functionality; it must have some ornamental characteristics. In other words, while the underlying object may be functional, the subject matter of a design patent can be the shape of an article, surface ornamentation, or the combination of both.
Valentino shoe design patent:
Lululemon pant design patent:
Aquazurra design patent:
There are important points to remember about design patents that make them substantially different from the trademark application process. There are no unregistered or common law design rights in the United States and public disclosure of the design more than one year from the filing date of the patent application can bar any patent rights. In other words, the design must be treated as a “secret” until such time as the author is ready to file the patent application. As discussed further below, this is vastly different from a trademark application.
A trade dress, like a trademark (because it is one), is a source identifier. To be registrable, a trade dress must be used in commerce as such, and be distinctive. In other words, a person seeking to register a trade dress must show that the shape of the product has acquired “secondary meaning” in the minds of consumers. This means that consumers have come to associate the product with the source (for example, the shape of a Coke bottle). To show this secondary meaning, applicants often must submit a phone-book size application, filled with media references to their products showing that consumers do associate the trade dress with the source. Unlike design patents, there is no bar to using the trade dress prior to filing for an application, and in fact, a trademark applicant would benefit by showing prior use of the mark in order to show this “secondary meaning.”
The design of a trade dress, however, cannot be driven by functionality. While this restriction is similar to design patents, this principle is more strictly applied in the trademark context. The purpose of the restriction is to avoid someone gaining an absolute monopoly over the shape of an object, when the shape is driven by function. So consider the pitfalls of filing for a utility patent on the same feature of the trade dress (e.g. ergonomic design driven by functionality).
Berkin bag trade dress:
Finally, to distinguish both IP rights, consider the underlying purpose of each. Patents are limited proprietary rights given to an inventor for the purpose of spurring innovation, whereas trademarks protect mark owners and consumers from confusion. Given these differences, a patent owner benefits from a 15 year term, whereas trade dress could be perpetual, as long as the mark is used in commerce.
A trade dress is, generally speaking, more difficult to obtain because of the “secondary meaning” hurdle (unless, of course, the design is inherently distinctive). Design patents, on the other hand, tend to be a bit more costly to obtain. Ideally, you should get both, but if not, you should consider the factors above to make a determination as to what works best.