Is It Functional or Is It Functional? Trade Dress vs. Design Patent 'Functionality

AuthorManon Burns, Lisa Holubar
Published in Landslide® magazine, Volume 13, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Is It Functional
Is It Functional?
By Manon Burns and Lisa Holubar
nlike most people, you did not ll your time during
the COVID-19 quarantine binge-watching question-
able television or baking bread from wild yeast. No,
you designed a widget. Everyone loves your widget.
Your widget is a new product having a unique orna-
mental design and appearance. How will you protect
your widget? Trademark and/or design patent law.
The purpose of a trademark is to source-identify. A trade-
mark can be anything that identies and distinguishes the
source of goods offered by one party from those of others. To
be protectable, a trademark must be inherently distinctive or
have acquired distinctiveness through secondary meaning.1
Trade dress is a trademark species, and originally referred to
how a product was “dressed,” e.g., its labeling or packaging.2
Protectable trade dress has broadened over time to include
the overall appearance, shape, and design of a product itself.3
Thus, if the overall appearance of your widget is something
that consumers recognize as coming from a single source—
you—then you might be able to protect it as a trademark.4
“The purpose of the design patent law is to promote the
decorative arts and to stimulate the exercise of inventive fac-
ulty in improving the appearance of articles of manufacture.”5
Design patents protect the new, ornamental design of arti-
cles of manufacture for a limited time.6 You apply for design
patent protection by submitting an application—including
drawings and descriptions of your design—and the requi-
site fee with the United States Patent and Trademark Ofce.
A patent examiner will compare your design to all similar
designs that the examiner can identify. If approved, you will
be granted a design patent, which gives you the exclusive
right to use your design for 15 years from the date of the pat-
ent grant.7 You therefore may be able to protect the design of
Manon Burns is an associate at Irwin IP LLC in Chicago, Illinois, where she practices intellectual property litigation. She can be reached at Lisa Holubar is a partner at Irwin IP LLC in Chicago, Illinois, where she focuses her practice on trademark litigation.
She can be reached at
your widget via design patent if it is new and ornamental.
Unlike design patents, utility patents do not protect the look
of a product but can be obtained to protect new functional
aspects of your invention.
When Trade Dress and Design Patents
Protect One Design
Can both trademark and design patent laws protect your
widget? In theory, yes. For example, “[t]he design patent pro-
tects the patentee against another’s making, using or vending
the bottle; a trademark registration . . . indicates only that
the bottle is capable of distinguishing applicant’s soft drink
which is sold in the bottle.”8 But successfully attaining both
trade dress and design patent protections can be challenging,
and both have limits, including most signicantly a concept
called “functionality.” Although the word is the same and the
concept is similar in trademark and design patent law, func-
tionality is determined differently depending on which form
of intellectual property is at issue.9
Functionality in the World of Trade Dress
Utility and design patents encourage “invention by granting
inventors a monopoly over new product designs or func-
tions for a limited time, after which competitors are free to
use the innovation.”10 But trademarks have no set expiration.
“If a product’s functional feature were permitted to be used
as a trademark, competition would be unduly stied because
a trademark can be ‘renewed in perpetuity.’”11 Functionality
is thus meant to prevent useful innovations that are properly
within the province of patent law from obtaining unend-
ing protection via trademark law.12 Not surprisingly, when
a product design is claimed in a utility patent, that is strong
Trade Dress vs. Design Patent “Functionality

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