Dressed for success: protect products with design patents and trade dress.

• Author: Marshall, Ryan L.
• Position: Legal Brief

Utah businesses have a terrific history of innovation and entrepreneurship. They constantly develop new and successful products. Those products generate momentum, revenue and notoriety. Often, that success leads to copycat products by competitors who imitate the design and innovation of other companies.

Securing the right form of intellectual property can protect a successful product and its revenue stream. Patents and trademarks are both forms of intellectual property that can be critical to a company's success, and the specific combination of design patents and trade dress can perpetually protect some products.

Design Patents

A design patent protects the ornamental appearance of an article of manufacture, as opposed to a utility patent, which can safeguard the functional aspects of an article. Design patents are less expensive to obtain than utility patents and often are issued within six to 24 months from filing.

The U.S. Patent and Trademark Office (USPTO) grants design patents for new, useful and nonobvious designs, while foreign countries offer similar protection as "industrial designs."

Products that incorporate a unique design or combination of design elements are eligible for design patent protection. Design elements may include surface ornamentation, configuration (shape) and other features, such as color. Design patent owners can exclude others from making, using, offering to sell and selling the patented design or importing products having that design into the United States. That protection covers the visual aspects of a product but not the underlying function, which may or may not be protected by a separate utility patent.

Innovators have received design patents for many types of products, including furniture, light fixtures, headphones and eyewear. One prominent example is Coca-Cola's original bottle design.

Patents receive favorable legal treatment because they are presumed by the courts to be valid. To invalidate a patent, infringers must show clear and convincing evidence that a design is obvious or lacked novelty when the patent application was filed. To patent holders, courts can award damages in the form of lost profits, the infringer's profits, or a reasonable royalty for the competitor's use of the patented design, and enjoin further infringing use. Design patents can be enforced from the moment they are issued until their 14-year patent term expires.

Trade Dress

Trademarks are words, designs or other distinctive...