So what if I think I qualify for more than one protection? Can I have two (or more) intellectual property protections for the same design?
Typically, design patents are issued to protect the aesthetic appearance of products and packaging that meet the novelty and non-obviousness requirements of patent law, whereas trademarks (trade dress) are addressed to protect a brand’s sales, reputation, and goodwill that arises from the distinctive visual aspects of a product or its packaging. So while the standards for protectability and validity are very different, both trade dress and design patents can, and often do, protect the same subject matter. There is an overlap in as much as that design patents protect the ornamental, (not functional) features of a design. Functional features of a trade dress are likewise unprotectable under federal or common law. So design patents and trade dress are not mutually exclusive – they are in fact complementary.
Given the above, design patents are especially important to protect a design and to keep competitors from making substantially the same design without permission. So in order to acquire the fullest of intellectual property protection, where possible, designers should first seek and secure a design patent and must simultaneously develop trade dress protection for the design during the 14 years of design patent protection. This way, once the design patent expires, the trade dress protection can kick in and continue to protect the design.
Likewise with copyright and trademarks: when looking to protect a design that is purely ornamental for clothing, while this may not qualify for the full federal trademark protection, you can definitely apply to have the design copyrighted so you still own the exclusive intellectual property rights over the design, and could effectively prevent others from using the design without your permission. In the meantime, you can also build goodwill and reputation for the design by using it in the form of a logo to identify your brand for your specific products and/or services.
Lastly, it is important to keep in mind that different elements of the same creation may qualify for different types of intellectual property protection. Given the current U.S. laws, it might be best to –
Apply for federal copyright protection for any original prints and patterns, fabric designs, belt buckles, non-useful/non-functional clothing, unique color arrangements and novel combinations of elements used on apparel and accessories as well as their protectable design elements to the extent physically or conceptually separable from the functional aspects of the subject apparel or accessories;
(ii) DESIGN PATENT:
Apply for a design patent for any new, original and ornamental design for an “article of manufacture”, provided there has been no public disclosure for longer than ONE year;
Apply to federally register any trademark and/or trade dress protection for brand names, logos, designs, packaging and other elements of apparel and accessories to the extent they identify the source and origin of such products. TIP: for trade dress protection, the design, product packaging or the “feel and look” of a store must be sufficiently distinctive so as to identify the brand for those products/services.
Of course, this is but a brief overview of design protection under the various intellectual property laws. Don’t wait too long to apply to protect your design because you never know when someone else with a similar idea might be more proactive in seeking protection. When confused or unsure, it is always best to consult with a lawyer – after all, that’s what we are here for!
RENUKA RAJAN, is a NY-licensed trademark attorney in the Nagpur office at LegalForce RAPC. She specializes in trademarks, copyrights and office action responses. Renuka received her B.A. LL.B. (Hons.) degree from National Law University, Delhi and her LL.M. in IP from the George Washington University Law School (Washington, DC), where she was also a Thomas Buergenthal Scholar. When she is not busy advising her clients, she’s usually found either in the gym or singing along to different songs on her guitar with the same six chords. She is an avid Harry Potter fan and is always up for a healthy argument.
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