What is a Design Patent?

By <a href="http://www.knullpc.com/attorneys/Charles Knull

The main category of patents is Utility Patents which protect a new and useful invention. Light bulbs, car engines, and smart phone electronics are things with specific functions that work better than whatever they are replacing. These are protected by Utility Patents

There is another domain of patent law…design.

Design Patents are a relative backwater of patent law. But they are also a unique opportunity to get “Patented” status for a lot less money than a Utility Patent.

What is a Design Patent? It is a patent that is granted on a unique ornamental design for a product or package. In many ways, it is hybrid form of Intellectual Property with aspects of patent, copyright, and even a touch of trademark (due to its interaction with trade dress). They are applied for and examined like patents. And, the result is a real patent with an issue date and patent number (design patent numbers are generally 6 digits preceded by a “D”, like D678,015).

Design Patents are much simpler than a Utility Patent. They consist of only drawings, a sentence describing what each of the drawings is, and a single claim that just references what is shown in the drawing.

There really isn’t a lot for a patent attorney to do other than make sure the drawings and other information in the application meet all of the Patent Office’s formal requirements. The filing fees are cheaper too and expensive negotiations with the Patent Examiner are almost unheard of. Cheap (relatively) and easy.

The scope of protection in a Design Patent is limited. It keeps someone from knocking off the novel elements that make up a product’s look, but that’s it. It doesn’t protect the function at all. And even the aesthetic design protection is really narrow. It is slightly more expansive than exact copying, but not by a lot.

If a Utility Patent is possible for a new product, then a Utility Patent is best. Even a narrow Utility Patent tends to provide more protection and get more respect from competitors than a Design Patent.

But in many product areas and with many business models, aesthetics really are a distinguishing aspect of the new product and having strong protection against direct knock-offs is appealing. A Design Patent can work wonders, and at a fraction of the cost of Utility Patents.

WARNING: “inventor assistance programs” and similar businesses that claim they will help you patent and sell your invention often use Design Patents and Provisional Patents to make it seem like they are patenting your invention for much less money than patent attorneys charge. As you can see from the article above, a Design Patent is not at all equivalent to a Utility Patent. If it sounds too good to be true, it probably is.

Should I Register a Bunch of Trademarks for My Products or Adopt a House Mark?

By Chuck Knull

A “House Mark” is a trademark that is used to identify the source of a line of products rather than a single product. A company can have trademarks on each of its products and also have a trademark that appears on all its products. The latter is the House Mark.

Trademarks began as signs on stores and identifying marks on products. One went to the Red Lion Tavern because one knew about and relied on its quality of bangers and mash and the strength of the tavern’s ales. If another Red Lion Tavern appeared in the village, the first tavern could sue to have the second tavern change its name. As consumer products came about, purchasers of cough syrup, for example, would look for product names they recognized and trusted. The names and labels on these products became trademarks. If someone else came along and tried to sell cough syrup with a name and label that too closely resembled those of an established brand, the second comer could be sued for trademark infringement and unfair competition. When a maker made only one type of cough syrup, then its brand name was both the house mark and the product’s trademark.

Today trademark law is a consumer protection law. A trademark is registered to a person or company that uses the mark to identify its products so that consumers associate the mark with assurances that the quality, whether good or bad, is what is expected from that product. The first user of a mark is the one who has the rights in it so long as they continue to use it in commerce. Under the current law, the Lanham Trademark Act, a first user who has registered its mark can enforce their rights in the mark in federal court and obtain sanctions against the second comer ranging from injunctive relief to the infringer’s profits. If the infringement is found to be is willful, or done with knowledge of the earlier mark, the first comer may be awarded its legal costs and treble damages.

Adopting a Mark. A House Mark offers immense advantages if it is based on a trademark which has been in long use, such as a mark based on a successful product or successful store name. Trademark protection grows in strength over use time through use of the trademark on a service or product, so choosing an already strong name and enlarging the scope of products or services available in association with the mark allows a business to start off strong.

Thus, the best and strongest House Mark is one which is already a famous trademark or service mark, and if a company is fortunate to have such a mark available or be able to license such a mark for use on a new line of products or services, it can be solid gold. An example of this is the Vicks mark which is strong or famous on VICKS VAPORUB and is now being extended to use on vaporizers, thermometers, tissues and other “cold related” products. Currently, the TIDE Brand of laundry soap is being extended into laundermats.

If a business does not have a strong and long used store name, then it should look for a trademark that is a “coined” or an invented word. For example, a retailer with the House Mark QUALITY DRUGS (a “weak” mark until it has been used for years) might concoct a new mark such as QUADRU, which has no meaning in itself and takes a bit of thought to connect to either quality or drugs. If invented terms are not to a retailer’s liking then adopting a House Mark which is “suggestive” of the products on which it will be used is the next best approach. For example, a retailer could use the mark QUALITY HEALTH for dietary supplement products, citing a suggested benefit of the products. The worst type of mark to adopt, especially as a House Mark, would be a “descriptive” mark. If a store or manufacturer used the House Mark QUALITY DRUGS PRODUCTS the mark would merely be describing what the products. Such marks are not enforceable without huge amounts of evidence that consumers only associate the House Mark with the products. And that evidence can be difficult or impossible to gather.

Definitions

Trade Dress. Trade dress describes the packaging of products. Trade dress can operate as a House Mark. Examples of such is the Coke Bottle and the MacDonalds Golden Arch.