Protecting Product Designs

Jianming Shen, Esq.

The design of a product is not readily protected through trade secret law because once the product is placed in the stream of commerce it is necessarily disclosed. There is some question concerning whether the design would be protectable under state law, due to the possibility of preclusion.

If the product life is shorter than two or three years it is probably not beneficial or economical to apply for a design patent.
Further, the design might not be deemed to meet the high standard for patentability. How, then, can a design be alternatively protected?

Advantages

One method which appears to be gaining popularity is by seeking to register the design as a trademark on the principal register of the U.S.Trademark Office.

Since the life of a trademark is extensible in ten year increments, it has a potentially unlimited life;
Trademarks are relatively cheap (for a registration in a single class, the first ten years should cost no more than about $750 - $1,000, including all PTO fees, if the application is passed to publication without substantial prosecution and is not opposed); and,
Registration of a trademark requires meeting significantly lower standards than those required for the issuance of patents.

Almost anything can serve as a trademark. A "trademark" is any word, name, symbol, or device, or any combination thereof, adopted and used by any person to identify his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 15 USC 1127.

Thus, to be entitled to registration as a trademark, the design must distinguish the goods from those of competitors and indicate the source of the goods. Take, for example, the design of a Coke bottle: even if there were no writing on the bottle at all, the bottle would still be widely recognizable as a Coke bottle. Under the standards set for trademark registration, the Coke bottle would qualify for registration. Thus, almost any distinctive design can be a trademark.

Federal protection is not limited to registered trademarks. Section 43(a) of the Lanham Act (15 USC 1125) protects unregistered trademarks, including such things as trade dress.

Although trade dress originally referred primarily to product packaging and labels, it has expanded in recent times to include product configurations and even the "look and feel" of products and service establishments, such as restaurants. See, e.g., Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 841-42 (9th Cir. 1987).

Disadvantages

Despite the advantages, trademark law does have some limitations which make trademark protection unsuitable for some designs.

The doctrine of "functionality" prevent the owner of the mark from claiming functional aspects of a product as a trademark. This prohibition extends to features which are dictated by function -- those which are necessary to serve a useful purpose.

The doctrine of "aesthetic functionality" has been occasionally used to characterize ornamental features as functional, and, therefore, ineligible for trademark protection when such features contribute to the demand for the product. See, e.g., Wallace Int'l Silversmiths v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990).

This doctrine, which is followed in the Ninth Circuit and in a somewhat modified form in the Second Circuit, has been widely criticized.

Finally, the design must be distinctive, that is, it must fit somewhere in the spectrum between arbitrary and suggestive. If a design is not distinctive (i.e., if it is descriptive or generic) it is not entitled to trademark protection.