New Hampshire Bar Association
About the Bar
For Members
For the Public
Legal Links
Online Store
Vendor Directory
NH Bar Foundation
Judicial Branch

Clio is the most widely-used, cloud-based practice management system in the world.

Order with big business buying power.
New Hampshire Bar Association
Lawyer Referral Service Law Related Education NHBA CLE NHBA Insurance Agency
Member Login
Member Portal

Bar News - June 21, 2017

Intellectual Property Law: Protecting Product Designs: Trade Dress v. Design Patents


Clients often ask whether the design of a product is protectable instead of, or in addition to, its function. Before a company invests time and money to bring a product to market, it may be desirable to determine what rights can be secured for the product’s appearance. This especially true with consumer products where the look may do much of the selling.

Intellectual property laws in the US include two vehicles that may be available to protect design – trade dress and design patents. Trade dress and design patents also can protect the same product.

Trade dress is a form of trademark that protects the product’s overall look and feel in a way that identifies its source or distinguishes it from other sources of goods. For example, the iconic shape of a Coca-Cola bottle is protected by trade dress. Design patents protect ornamental elements of an article of manufacture. The design of Crocs shoes is protected by design patents, for example.

To explore the purpose, scope, limitations, and enforceability of each type of protection, it helps to use a hypothetical product. Imagine you are counseling a company that has invented a new wine stopper that incorporates technology that allows the stopper to remove oxygen from inside the bottle and monitor the vacuum seal created via a mobile app to help wine enthusiasts best enjoy the bottle before it goes bad. The bottom of the product that is inserted into an opened bottle is shaped like a cone, and the top is shaped like a star with the company’s name and logo. Will trade dress or design patents be available to protect any aspects of this product?

Trade dress, as a form of trademark protection, allows the owner of the mark to protect the goodwill of the business, and helps consumers identify the source of the product. Trade dress protection therefore is not available for any functional aspects of a product, as this would grant a competitor a potentially unlimited monopoly on these features.

The US Supreme Court has held that trade dress for product design is never inherently distinctive, and that for protection to attach, it must have secondary meaning. This requires that consumers associate the non-functional design aspects with the source of the goods. Any aspect that is essential to the use or purpose of the article, or affects the cost or quality of the article, is functional and cannot serve as a trademark. Utility patents (which protect functional features), advertising emphasizing the utilitarian benefits, and alternative designs are all considered when determining whether a product design is protectable by trade dress.

To be eligible for trade dress registration, the design must be used in commerce, meaning the product must already be in the marketplace. A product that has not yet been launched cannot obtain trade dress protection, because consumers have not come to associate the design with that producer. However, once secondary meaning has been established, trade dress registration offers powerful protection of a product design, because it can last in perpetuity, so long as the design is still used in commerce and identifies the source of that product.

Design patents are meant to promote the decorative arts and to improve the appearance of manufactured articles. The drawings in the design patent lay out what is protected on the product. Similar to trade dress, functional aspects of a product cannot be protected by design patents. To be eligible for a design patent, the design must new, nonfunctional, and not obvious. Like utility patents, prior art is considered in granting patent rights and may serve as a bar to registration.

Unlike trade dress, a design patent can be obtained before a product comes to market. However, the application must to be filed within one year following the date of first sale or public use of the item – or possibly before public use, if foreign patent protection is also planned. Design patents are meant to grant a limited exclusive right to the design, and are currently enforceable for 14 years. The owner of the design patent is not required to actually make the product to enforce the patent.

There are many similarities when an owner seeks to enforce trade dress or design patent rights. In either infringement analysis, consumer confusion between the protected and infringing product is considered. Remedies for infringement of either include injunctions, monetary damages, and, in exceptional cases, attorneys’ fees. Total profits from the infringing products are available for design patents.

There also are differences in the infringement analysis of the two intellectual property rights. Trade dress infringement requires a showing of a likelihood of confusion as to source, sponsorship or affiliation, as determined by a balancing of factors, such as the similarity of the designs and channels of trade, like a traditional trademark infringement case. The goods in the analysis are considered within the context of the marketplace and how purchasers would encounter them.

Design patent infringement focuses on the similarity between the design features shown in the design patent drawings and the infringing product. The analysis involves a side-by-side comparison conducted by an ordinary observer, having knowledge of the prior art, and whether he would view the designs as substantially the same.

Based on the above, we can apply this basic introduction on trade dress and design patent rights to our hypothetical wine stopper and determine what protection might apply. There are both functional and ornamental aspects to this product. The functional features, including the portion of the stopper that holds it in place in the bottle and the technology that removes and monitors oxygen, are not protectable by trade dress nor design patents, but rather utility patents. These features in a trade dress or design patent application would have to be removed by using dashed lines to indicate they are not a part of the protected elements.

The ornamental features, particularly the star on top, may qualify for protection. The item is not on the market yet, and so trade dress protection is not possible without sales to show an association in the minds of consumers between the company and the design. This could possibly be applied for at a later date. A design patent would be an option, even before the product is introduced. A design patent application could protect the ornamental star shape of the stopper.

Trade dress and design patents are two important forms of protection available for product design, and can be complementary and overlapping if the requirements for each are met.

Kristen Lang

Kristen Lang is an associate attorney at Loginov IP in Concord, NH. Her practice areas include trademark prosecution and enforcement, and general IP enforcement matters.

If you are in doubt about the status of any meeting, please call the Bar Center at 603-224-6942 before you head out.

Home | About the Bar | For Members | For the Public | Legal Links | Publications | Online Store
Lawyer Referral Service | Law-Related Education | NHBA•CLE | NHBA Insurance Agency | NHMCLE
Search | Calendar

New Hampshire Bar Association
2 Pillsbury Street, Suite 300, Concord NH 03301
phone: (603) 224-6942 fax: (603) 224-2910
© NH Bar Association Disclaimer