The Functionality Curse of Protecting Design with Design Patents and Trade Dress Trademarks

Both design patents and trade dress have one unfortunate thing in common: functionality of the design can be a killer.

You cannot protect a design feature if it is essential to the product’s use or purpose.

The Test: If a unique shape makes the product work better, cheaper, or easier, it’s functional and cannot be protected by Trade Dress and will be much harder to protect with a Design Patent.

For example, if the scent of Play-Doh were a byproduct of how it’s made or its essential ingredients, it couldn’t be protected as a trade dress trademark.

If a uniquely thick and textured spoon handle makes it easier for witches with arthritis to grip and stir what’s in their cauldrons, that is functional and belongs in a utility patent. It’s the essential part of the function of the ergonomic handle, so both design patent and trade dress protection for the appearance of the handle are prohibited. However, if the texture just needs to exist and can be in any format, the texture being in a pattern of, say, repeating bats, that pattern on the handle could be protected by a design patent or as trade dress.

The Lesson: If your design is purely aesthetic, a style choice, it’s protectable. If it’s utilitarian, a necessity, or unavoidable, like a particular color or scent caused by manufacture, it is not.