The Difference Between Trademarks and Design Patents: What you need to know
Celia Leber and Linda Chan | October 28, 2021
Celia Leber is a patent attorney with a background in Mechanical Engineering and the managing principal of Leber IP Law. Before founding Leber IP Law, she worked for many years at a large IP firm and in-house at several companies. She loves working with startups and other entrepreneurial clients to craft their IP strategies, as well as helping larger entities with portfolio management and development. Linda Chan is an attorney based in New York City with over 30 years of experience in trademark law. Linda specializes in the use and protection of trademarks, including devising trademark filing strategies, clearing trademarks for use and registration, filing and prosecuting trademark applications, and managing U.S. and international trademark portfolios. She is registered with the United States Patent Office and advises clients on design patent protection and prosecutes design patent applications.
Do you ever wonder how best to protect a new product or packaging design with an interesting appearance? Wonder no longer! Here are some answers to FAQs. For the sake of brevity we will not be discussing copyright here, but keep in mind that there is also often overlap between design patents, trademarks and copyright protection.
Can you explain the differences between a design patent and a trademark?
A trademark is a word (or words) and/or a symbol used to identify the source of goods or services provided to consumers. Trademarks can cover words and two-dimensional designs (such as logos), as well as three-dimensional designs (trade dress), colors, and sounds. A design patent covers the ornamental appearance of a product in itself, not associated with identifying the source of goods.
In the United States, trademarks are registered for ten-year periods and can be renewed for subsequent ten-year terms without any limits. However, there must be continued use of the mark in U.S. commerce for the trademark registrations to be maintained and renewed. Design patents, on the other hand, expire 15 years from the date of grant, and there is no requirement that the protected product be used in commerce.
The test for infringement is also different between trademarks and design patents. Trademark infringement requires a likelihood of confusion between the two marks – i.e., that consumers might be confused as to the origin of the goods – whereas design patent infringement requires that an accused product appear substantially similar to the patented design in the eyes of an ordinary observer.
How do you determine whether to file a design patent, trademark, or both? What strategies are important to consider?
If the design is used or will be used to identify a source of goods/services, then an application should be filed to register the trademark. However, if the mark is a three-dimensional mark (trade dress) or a color, the mark must have developed secondary meaning before the mark can be registered. This will usually require at least five continuous years of use of the mark in commerce and/or evidence that the mark has developed secondary meaning among consumers through the applicant’s extensive use of the mark in U.S. commerce.
Whether or not a trademark registration is appropriate, a design patent can provide valuable protection for the ornamental appearance of a product. Design patents are particularly useful when a competitor would want to produce a product that would have a very similar or identical appearance – for example when the competitor’s product would need to match an existing design (think patterned ceiling tiles or distinctive light fixtures) or when the competitor would like to “knock off” the product.
What are the timing considerations for filing a design patent application versus a trademark in the U.S.?
It is important to file a design patent application prior to launch or other public disclosure of the product if the option to pursue protection outside of the U.S. is to be kept open. If disclosure is made without having a U.S. application on file, you will be barred from filing the application in most other countries. If only U.S. protection is desired then the application can be filed for up to a year after public disclosure – however best practice would still be to file prior to disclosure if possible.
A design patent application can take up to several years from filing to issuance. However, expedited processing can be requested, significantly shortening the time to issue. Additional cost is involved, including the cost of obtaining a patentability search and paying an additional fee to the USPTO.
A trademark application can be filed at any time, but if you delay and someone else files for or registers a similar mark before you file your application, their mark can bar registration of yours. In the U.S., if you have used a mark before a third party, but they filed the application first, you may have some legal recourses to oppose the registration of their application or cancel their trademark registration.
It will usually take about a year from filing for a trademark to be registered in the U.S. if the mark is already in use when the application is filed. It will take longer if the mark is not in use at the time the application is filed. For most U.S. applications, use of the mark in commerce regulated by Congress will be required before the application can register (with some exceptions for marks filed based on a foreign registration). If it will potentially be a long time before the mark will be used in commerce, this may be a reason to wait on filing a trademark application. Waiting would avoid extension fees associated with not being able to show use of the mark after it has been allowed.
What documentation do you need to prepare an application for either a design patent or trademark?
For a trademark application, we would need the mark and identifying information for the applicant. If the design is claiming color as a feature of the mark, then the drawing of the mark should be in color. If color is not being claimed as a feature of the mark, then the mark should be shown in black and white only (with no gray shading). If the mark is three dimensional, there is still just one drawing used for the application. The application would need to specify that the mark is three-dimensional.
When filing a trademark application, it is necessary to identify the goods and/or services with which the trademark will be used, and protection is limited to the identified goods/services. For example, if the mark is registered for use with ice cream confections, the trademark owner usually cannot stop others from using the mark on lawn mowers. Thus, we would also need the goods and/or services for which the mark is being or will be used.
For a design patent, it is important to file good-quality patent drawings, as will be discussed below. A patent draftsman can create suitable drawings from a prototype, or if that is not feasible from a good set of photos or CAD drawings showing the product.
What are the possible pitfalls that you could run into with filing a design patent application or a trademark?
If a design is completely functional or completely ornamental, it is considered not to be able to function as a trademark – a reasonable consumer would not be able to associate the design with a particular source of the goods and would not be registrable.
This is also theoretically the case for design patents, but patent examiners rarely if ever reject design patent applications for this reason.
A more frequently-encountered pitfall in design patent applications is issues with the drawings. It is very important to file the application with good-quality, formal patent drawings that accurately show the design to be covered. If photos or informal drawings are initially filed, serious, often fatal problems can be encountered when later trying to replace the initial images with formal drawings, as will be required.
If you’ve filed design patent and trademark applications concurrently, what happens when either application gets refused? Can this be detrimental to the other pending application?
There would be no impact on the trademark application if a design patent application for the same design is refused a design patent. In most cases, if the trademark application was filed at the same time a design patent application was filed, the trademark application will be examined and a determination of registrability will be made before the design patent application undergoes examination.
Also, the Trademark Office is separate from the Patent Office – there is no examination of the Patent Office’s records by the Examining Attorneys at the Trademark Office. There is also no special deference given by the Trademark Office to decisions of the Patent Office. The examination of a design at the Trademark Office is to the ability of the design to function as a trademark and whether there are any registered marks or prior filed applications that are confusingly similar to the applied-for mark that would bar registration of the applied-for mark.
Similarly, the patent examiner for the design patent application would not take into consideration the refusal of the trademark application.
What sort of considerations must be weighed in terms of foreign rights?
In place of design patents, Europe has a system of design registration that allows for registration of three-dimensional designs that is separate from patent and trademark registration. There is a relatively low bar for European design registration.
As noted above, if design protection is desired outside of the United States most countries require that a U.S. design patent application be filed prior to public disclosure of the design. This is important to keep in mind when contemplating a product launch or other public disclosure.
Three dimensional trademarks can be registered in Europe as well as some other jurisdictions but similar bars to registration of functional elements or completely functional marks exist.
Trademarks can be registered in the U.S. and abroad at any time. There is no time bar to filing for registration of a trademark after you have begun use of the mark. However, in some countries trademark rights are only conferred from registration of the mark and the first to register the mark would have the rights to the trademark. If you are using or have definitive plans to use a mark in a certain country, you should seek registration of the mark as soon as possible.