If you have ever wondered how to protect a new product or packaging design that has an interesting appearance, look no further! Here are some answers to frequently asked questions. The purpose of this article is not to discuss copyright, but it is important to keep in mind that design patents, trademarks, and copyright protection often overlap.
Do trademarks and design patents differ in any way?
In the trademark registration system, trademarks are registered for ten-year terms that can be renewed without any limits for subsequent ten-year terms. However, to maintain and renew the trademark registration, the mark must continue to be used in U.S. commerce. Design patents, on the other hand, expire 15 years after the date of grant and there is no requirement that the protected product be used in commerce.
There is also a difference in the test for infringement between design patents and trademarks. As an alternative to trademark infringement, design patent infringement requires that an accused product be substantially similar to a patented design from the perspective of an ordinary observer, whereas trademark infringement requires a likelihood of confusion between the two marks – i.e., that consumers may be confused as to the origin of the goods.
Is it better to file a design patent or a trademark? What strategies should you consider before filing?
In case the design is used to identify a source of goods/services, then registering the trademark should be done. Before a trademark can be registered, it must develop secondary meaning if it is a three-dimensional mark (trade dress) or a color. The applicant must establish secondary meaning for the mark through extensive use of the mark in U.S. commerce over a period of at least five years.
Regardless of whether trademark registration is appropriate, a design patent can provide valuable protection for a product’s ornamental appearance. Design patents are particularly useful for protection against competitors who would wish to produce a product with a very similar 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 design registration online
If you are applying for either a design patent or a trademark, what documentation do you need?
The mark and the applicant’s identifying information are required for a trademark application. If the design claims color as a feature of the mark, the drawing of the mark should be in color. In the absence of color claim, the mark should only be shown in black and white (with no gray shading). If the mark is three dimensional, one drawing is still needed for the application. It would be necessary to specify the mark’s three-dimensionality in the application.
The goods and/or services for which the trademark will be used must be identified when filing a trademark application, and protection is limited to those goods and/or services. If a trademark is registered for use with ice cream confections, the trademark owner usually cannot prevent others from using it on lawn mowers. For the mark to be effective, we would also need to know what goods and/or services it is used for.
A patent draftsman can produce suitable patent drawings from a prototype, or if that is not possible, from a set of good photos or CAD drawings that show how the product works.
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