What Design Patents Have That Trade Dress Trademarks Don’t
Early Application and Enforcement
One big advantage of a design patent is timing: You can file this application immediately upon finalizing the design. That’s not the case with trade dress protection.
This allows you to fend off direct copiers while you build your brand. Usually, design patents are issued within 2 years of the application date, but the protection is retroactive to the application date if you use “patent pending” on the product and if your patent is granted.
Usefulness Isn’t Always a Problem
Unlike trade dress trademark applications, a design patent application won’t necessarily be rejected just because the look also affects how the product functions, as long as that functionality isn’t essential to how the product works. If there are a variety of other designs for the product that can achieve the same function, the design is probably suitable for a design patent.
Simpler Requirement
Design patents do not require proof of consumer recognition or acquired distinctiveness. You just have to show the design is new and non-obvious.
What Trade Dress Trademarks Have That Design Patents Don’t
- Term: Protection can last indefinitely, as long as you continue to use the mark, defend the mark, and submit the maintenance documents and fees to the USPTO.
- Source Identifier: It lives on because consumers know the design means a product from you.
The Biggest Obstacles: Functionality and Time
Trade dress has two strict requirements that make it a long-term goal:
- Strict Non-Functionality: The look must be non-functional. This is much more restrictive than the requirements for a design patent. If the design is essential to how the product works, or if you have a utility patent covering part of the design, it will generally not qualify for trade dress protection. For a design patent, the design can be useful; it just can’t be the only way the product works.
- Acquired Distinctiveness: Before you can register a trade dress trademark, the design must be used in commerce, which means it has to be available to the public, and it must develop secondary meaning, which means the public associates the design itself with your company, even without a logo or name. This process can take years. Consumers instantly know the Coke bottle shape means a Coca-Cola product because the shape has come to be identified with Coke products, but that didn’t happen overnight. This requirement is different from how name, logo, and slogan trademarks work.
A design patent can be a great start to protecting the look of your product, but a trade dress trademark is the best long-term protection. If the design is also functional, though, you may not be able to get a design patent for it, and you definitely won’t be able to get a trade dress trademark for it.
Intellectual property is one of your most powerful business tools. If you’re ready to build a strong brand and protect what you create, you don’t have to figure it out alone.
I help entrepreneurs across the U.S. make smart, legally sound decisions about their intellectual property. I’m an attorney in Champaign-Urbana, Illinois, but I serve intellectual property clients nationwide.
Ready to protect your work? Book a consultation online at kingpatentlaw.com or call 217-714-8558.
For more information on intellectual property and business law, check out the other posts on this site, listen to my podcast “Spellbinding IP: Patent, Trademark, and Business Strategy” on all major podcast platforms (video available on YouTube, Spotify, and Substack), or follow me on social media at @kingpatentlaw.
Avoid the legal horrors, and keep rocking your IP.
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