For many companies, product design ownership is key to gaining or maintaining competitive advantage. Knowing the best intellectual property avenue to use for product design protection, however, can be complicated and even daunting. Design patents, product configuration trade dress, industrial designs, and even copyrights may provide for potential protection. These various intellectual property “tools” are utilized less often for designs than they are for other types of IP assets, such as traditional word/logo trademarks or utility patents.
Design patents in the U.S. have been around since 1842, and were created to protect the ornamental design of articles of manufacture. The process for obtaining a design patent is often faster than for obtaining a utility patent. Design patents are typically less expensive and time consuming to obtain compared to utility patents, and they provide owners with exclusive rights for 15 years from the date of issue in the U.S. and most non-U.S. jurisdictions. Moreover, a design patent can be a powerful enforcement tool against knock-offs readily mistaken for the patented design, and damages can be significant – up to the total profits of the infringer. Provided they are pursued before public use or sale, design patent rights can readily be extended to other jurisdictions around the world. In addition, obtaining a design patent can be a good first step in gaining product configuration trade dress protection.
Product configuration trade dress provides rights in the “source-indicating” aspects of product design as long as those design elements are distinctive and non-functional. Although challenging to obtain in the first instance, as both distinctiveness and non-functionality can be difficult to prove, trade dress rights can provide owners with the advantage of potentially perpetual rights in their key designs.