Have you ever been frustrated with free-riders? Let's look at a simple example. You are a General Counsel at a luxury fashion house. Your fashion house is introducing a new handbag that is expected to create more hype than the Hermes BIRKIN. The newly-launched handbag in a matter of several months becomes a huge hit among fashionistas. And copycats across the globe start making their own versions of the handbag. What can you do about this? Copyright, which grants protection to the author from the moment of creation, will most likely not cover the shape of the handbag because the shape, no matter how original and creative, is not conceptually separable from the underlying utilitarian aspects of the handbag design. A suit for trade dress infringement is probably not an option either, since you'll be required to demonstrate that the consuming public has come to exclusively associate the shape of the handbag with your company. And how can consumers develop such an association when the copycats start flooding the market with their own look-alike versions the moment your original walks the runway? So do you tell the CEO of your fashion house that the battle is lost? Not so fast. Securing a design patent is a way to prevent copycats from appropriating your design the moment your purses hit the press. And more importantly, a design patent gives you the most valuable gift of all—time to develop secondary meaning that allows you to secure perpetual trade dress protection.
The Different Coverage and Purposes of Design Patent and Trade Dress Protection
Dual trade dress and design patent protection can exist when the shape of the product is ornamental and also serves to distinguish the source of the goods to consumers.1 And brand owners can continue to protect their trade dress from infringement even after the design patent expires. Existence of a design patent, "rather than detracting from a claim of trademark, may support such a claim" because "it may be presumptive evidence of non-functionality," necessary to obtain trade dress protection.2
Created to promote progress in decorative arts and to reward inventors, design patents protect non-functional, ornamental features of "an article of manufacture."3 Design patents for non-obvious novel ornamental configurations are granted for a period of fourteen years. With advanced planning and the payment of additional fees, issuance of a design patent can take as little as three to six months (the time between runway shows and bringing the product to market). And, unlike trademark registration with the USPTO and actions under the Lanham Act, there is no requirement to use the product design in commerce in order to secure a design patent or sue for patent infringement.
Trade dress, on the other hand, "involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques."4 Similar to design patents, trademark law protects only non-functional product design trade dress. In trademark parlance, a product feature is functional "if it is essential to the use or purpose of the article or if it affects the cost and quality of the article."5
While both trade dress and design patents cover non-functional features of product configurations, there are several fundamental differences between the two forms of protection. These differences can be explained by looking at the distinct goals of patent law, which grants an exclusive property right for a limited time to an inventor, and trademark law, which is a species of consumer protection law. Since trademark law is aimed at preventing consumer confusion, product design trade dress protection can last as long as the design is used in commerce and identifies the source of goods to consumers.
Infringement of the design patent is found when an ordinary observer, giving the attention of a purchaser, perceives the patented and the accused designs as substantially the same, in light of the prior art.6 In an action for trade dress infringement, on the other hand, the plaintiff has to prove that it owns a protectable product design trade dress and that the use of similar trade dress by a defendant creates likelihood of consumer confusion. Both design patent and trade dress infringement focus on the impressions of the ordinary consumer—and not the expert—in evaluating the similarity (or confusing similarity) of the respective designs. But unlike the test for trade dress infringement which focuses on marketplace realities, such as acquired distinctiveness and consumer confusion, the focus of the design patent infringement action is similarity to the design features shown in the design patent drawings, and not similarity to the patentee's "commercial embodiment" of the design.7
Since unlike in the patent arena, trade dress rights can exist under common law, and do not derive exclusively from a federal registration, the evidentiary requirements of demonstrating protectable trade dress rights (particularly for product design as contrasted with product packaging) can be involved. In Wal-Mart v. Samara Bros., the Supreme Court differentiated between the evidentiary showing required to demonstrate protection for the two different types of trade dress—product packaging (the box, bottle, or container for the product, or labels thereon) and product design (the configuration of the product itself). Contending that consumers are less inclined to recognize product design as a source identifier, the Court held that product design trade dress can never be inherently distinctive and thus is only protectable upon a showing of secondary meaning. In evaluating whether product design trade dress has acquired secondary meaning, the courts will look at such factors as the length of use, commercial success of the product, "look for" advertising directing consumers to focus on the elements of the claimed trade dress, survey evidence, and advertising expenditures. Only if a plaintiff is successful in demonstrating that its product design trade dress has acquired secondary meaning (and, accordingly, is entitled to trade dress protection), will the court consider the issue of likelihood of confusion. While likelihood of confusion tests differ slightly depending on jurisdiction, generally the courts will consider the strength of the plaintiff's trade dress, the similarity of the plaintiff's trade dress and the defendant's trade dress, the proximity of goods, the level of purchaser care, the marketing channels utilized by both parties, the intent of the defendant in selecting its trade dress, the evidence of actual confusion, and likelihood of expansion of the product lines.8
The Majority View Holds That Design Patent and Trade Dress Protection Can Coexist
While the prevailing view is that trade dress protection is available for designs that were once covered by a design patent upon showing of secondary meaning, some courts have questioned the right of the trademark owner to claim secondary meaning when such secondary meaning was established solely due to the exclusive design patent protection. For example, in Winning Ways, Inc. v. Holloway Sportswear Inc.9, the court noted that "[g]ranting trade dress protection to an item for which a patent has expired creates tension because the product may have obtained secondary meaning precisely because the product was patented." Winning Ways represents the minority viewpoint, and brand owners can generally be certain that most courts will enjoin infringement of product design trade dress covered by an expired design patent so long as this trade dress acquired secondary meaning.
In In re Mogen David Wine Corp., where the existence of the design patent was held not to preclude the applicant from obtaining registration on the Principal Register for the shape of its wine bottle, the court observed that "[t]rademark rights . . . which happen to continue beyond the expiration of a design patent do not ‘extend' the patent monopoly" because patent and trademark rights "exist independently of, under different law and for different reasons."10
In Kohler Co. v. Moen, Inc.11, Moen obtained a trademark registration for its LEGEND kitchen faucet and the appearance of the handle used on the LEGEND and other faucets. Kohler opposed the registration, arguing that granting trademark protection to product designs impermissibly conflicts with the Patent Clause of the U.S. Constitution.12 In rejecting Kohler's arguments, the court said:
The trademark owner has an indefinite term of protection, it is true, but in an infringement suit must also prove secondary meaning and likelihood of confusion, which the owner of the design patent need not do; there is therefore no necessary inconsistency between two modes of protection.13
The court noted that while a design patent grants a fourteen-year monopoly "by giving the patentee the exclusive right to make and sell the innovation, a trademark gives the owner only the right to preclude others from using the mark when such use is likely to cause confusion or to deceive."14 Unlike patents, trademarks are not monopolies because others are allowed to produce similar designs so long as there is no likelihood of consumer confusion.15
Ferrari s.p.a. Esecizio Fabriche Automobili E Corse v. Roberts16 suggests that protection can be granted to the trademark owner even if there is no confusion at the point of sale. In Ferrari, the defendant manufactured fiberglass kits that replicated the exterior features of Ferrari's Daytona Spyder and Testarossa automobiles.17 The defendant argued that Daytona Spyder and Testarossa designs could not be protected under the Lanham Act because automobile designs are to be protected from copying only pursuant to the design patent statute.18 Rejecting the defendant's argument, the court stated that "Lanham Act protection is available to designs which also might have been covered by design patents so long as the designs have acquired secondary meaning."19 The defendant also argued that he did not violate the Lanham Act because he informed purchasers that his kits were not genuine Ferraris but significantly cheaper replicas and, thus, there was no confusion at the point of sale.20 Since "Congress intended to protect the reputation of the manufacturer as well as to protect the purchasers" and since Ferrari's reputation could be damaged by the marketing of replicas, the court allowed recovery even in the absence of point of sale confusion.21
What All of This Means For the Brand Owner
Brand owners can obtain design patent protection for their product designs so long as the design is not entirely functional, and is novel, and non-obvious. Design patent secures for their owner a fourteen-year right to exclude others from making, using, selling or importing the claimed product and, thus, allows time to build up secondary meaning necessary to acquire product design trade dress protection. Trade dress protection can last for as long as product design trade dress remains in use and continues to identify the source of goods to consumers. Brand owners can be almost certain that they will be able to enjoin competitors from using confusingly similar trade dress after the term of the design patent expires.