Stop imitators by combining design patents and trade dress

Design patents have gained popularity in recent years among inventors looking to protect their market share.  But they shouldn’t forget trade dress–the distinctive physical appearance or packaging of a product–as a way to ward off copycats as well, says Morrison & Foerster partner Jennifer Lee Taylor. In fact, Taylor says, design patents and trade dress filings can work together to achieve permanent protection from look-alikes.

Unlike trade dress protection, a design patent can be sought immediately upon invention.  But design patent protection only lasts for 14 years, while trade dress protection never expires.

Companies should use the 14-year design patent period to build the kind of consumer recognition necessary to qualify for trade dress registered with the U.S. Patent & Trademark Office, Taylor says.  “It’s not an either-or proposition.  Both are important,” she notes.

Design patents (which cover a product’s appearance) are cheaper to acquire than utility patents (which cover how a product works).  They’re also issued more quickly.  A series of high-profile legal battles over design patents on everything from smartphones to women’s shapewear have raised awareness of their value.

Thanks to revisions to the patent law that favor applicants that are the first to file, it’s especially important now for inventors to file for patent protection quickly–even if it means filing a series of applications for each small element of a product’s appearance, Taylor says.

To register for trade dress protection, a filer has to show that a product’s appearance is “inherently distinctive,” or has acquired “secondary meaning” over time.  The contour of a Coca-Cola bottle or the shade of blue of Wedgewood china are two examples of designs with trade dress protection.