Well-known brands utilize more than just catchy names and visually appealing logos for instant, invaluable customer recognition. They also develop brand recognition through proprietary product designs and trade dress, such as unique color combinations, product shapes, and themes for product lines. When protecting innovative three-dimensional designs, many often consider two distinct options: design and trade dress.
Design and trade dress serve different purposes within Intellectual Property (IP) law. The purpose of Design Protection is to encourage innovation by protecting the ornamental design for a product. Many companies use designs to provide a period of exclusivity when they can recoup their investment in the design. In contrast, trade dress, a subset of Trademark Law, serves two slightly different purposes: to protect property rights in a mark and to prevent consumer confusion. On the one hand, trade dress also protects an owner’s investment in the marketing of his or her product to create awareness of the design, and in this regard, it is similar to a design. But, on the other hand, trade dress registration promotes consumer protection by allowing consumers to associate a product with a particular source, and therefore, consumers purchase products with the confidence that the product desired is the product purchased.
Designs protect the novel ornamental features of an article of manufacture and not its utilitarian characteristics. They cover the visual, non-functional features in the product, extending to the shape of the product, surface ornamentation, or the combination of both. Design protection extends only to the appearance of the product and not its functionality. If the design is necessary for the product to operate or work, it is considered functional, and therefore ineligible for protection.
Trade dress is a type of trademark. As with all forms of trademark, a trade dress is used to identify the source of a good and/or service as well as the goodwill associated with that source. Trade dress refers to the overall appearance and image of a product. Trade dress may include the design of a product or its packaging. If a product design is identifiable with a company or source, trade dress rights prevent other products from appearing confusingly similar to a consumer. Examples of trade dress include the look and feel of a restaurant or retail store, the packaging of a product, and the design of a product.
When to Choose Design Protection
For obtaining Design Registration, the design must be an article of manufacture, ornamental, novel, and non-obvious over existing designs. Although the article can provide functionality, the portion of the design to be protected cannot be purely functional. If the design is the only way to maintain the functionality of the article, then the design is not eligible for design protection.
If an article embodying the design has been publicly disclosed before filing the Design Application, it may not be available. Design protection can be sought before even beginning manufacturing. Therefore, ideally, an application should be filed as early as possible, before sales or other disclosure.
When to Choose Trade Dress
For obtaining Trade Dress Rights, the design must be non-functional and must have acquired ‘secondary meaning’ such that the design is identifiable with the source. If the design involves product packaging, trade dress rights may arise from ‘inherent distinctiveness.’ Trade Dress Protection can only be obtained for non-functional designs. The shape of a Gibson guitar was deemed too functional because it was advertised to have acoustical advantages.
Trade dress rights do not expire as long as the design is used in commerce as a source identifier. Once a design acquires secondary meaning, future products can also benefit if they use the same protected design feature. Furthermore, a competing product infringes when it is deemed close enough to confuse a consumer regarding its source. In contrast, infringing a design requires an ordinary observer to find the particular design in question substantially similar to the protected design in the context of prior designs in the field – generally a more difficult bar.
If the product has not yet been commercialized, only a design may be possible because trade dress rights arise only for a commercialized product design. Similarly, if the product has been publicly disclosed for longer than an allotted grace period, only trade dress rights may be available. If the product lifecycle tends to be short, the limited term of a design may provide sufficient protection. However, if various products may be launched under your brand, there could be value in pursuing trade dress protection for distinctive design features, which may be employed throughout the product line.
If the market is prone to copycats, it may be optimal to obtain multiple layers of protection. Designs have a limited term of protection; however, trade dress protection can last as long as the design is being used in commerce, which theoretically could be forever. So, you can start with design protection and finish with trade dress protection. Furthermore, the two types of protection can exist simultaneously; so, it can make sense to secure design protection to develop trade dress rights without interference from competitors during the intervening duration before the design expires. To sum it up, design and trade dress rights should be considered when the visual appearance of a product may contribute to commercial success in the marketplace. These can be vital tools for protecting the distinct ornamentation or design of products, which may become associated with a company. Investment in such protection can enhance its economic benefit to the owner of the rights.