Trade Dress and Design Patents

You’re starting a tea company. To set yourself apart from the competition, your teas come packaged in lightbulb-shaped containers.

How do you make sure that no one else sells tea that way?

You can protect it as trade dress, get a design patent, or do both.

Trade Dress

Selling stuff in special packaging is a type of trade dress, which is a trademark.[1] That makes sense, because the whole point of trade dress is to allow customers to identify the source of a product, which is what a trademark does. You know it’s a:

  • CocaCola® brand soda by the shape of the bottle;
  • Maker’s Mark® brand whiskey by the red wax dripping down the top of the bottle;
  • McDonald’s® brand hamburger by the golden arches on the building.

Design Patent

Usually, intellectual property can be protected in only one way, but you could also get a design patent for your lightbulb-shaped container.  A design patent protects the way an article looks.[2] Some famous products that have patented design elements are:

  • Oakley® sunglasses;
  • a Eames® chair;
  • Beats by Dre® headphones.

Making a Decision

So, should you get a design patent or register the lightbulb-shaped container as a trademark? It depends. Not all trade dress is patentable and not all design patents can be the subject of a trademark. For example, if you’ve been selling tea in the lightbulb-shaped container for a year, you can NOT get a design patent, but you’re in great shape to get a trademark.

Here are some other important differences:

Patent Trademark/Trade dress
Expiration Expires after 15 years. No expiration. It can last forever.
Requirements Has to be “novel”.[3]

Has to be “non-obvious”.[4]

It must not be useful.[5]

Can’t be “confusingly similar” to another trademark.

Can’t be functional.

How do rights come about? Granted by patent office. Start using it to sell goods or services.

 

 

Shout out to Cody B for the suggestion for this post.

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[1] “Trade dress constitutes a ‘symbol’ or ‘device’ within the meaning of §2 of the Trademark Act. Trade dress originally included only the packaging or ‘dressing’ of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the ‘total image and overall appearance’ of a product, or the totality of the elements, and ‘may include features such as size, shape, color or color combinations, texture, graphics.’” Trademark Manual of Examination Procedure Section 1202.02 [Citations omitted.]

[2] Manual of Patent Examination Procedure Section 1502 citing 35 U.S.C. Section 171.

[3] It can’t be something that was in a prior patent, or in a printed publication, or in public use or for sale or otherwise available to the public.

[4] It has to be an invention that wasn’t obvious to a designer having “ordinary skill in the art”. So, if it’s packaging, it has to be something that isn’t obvious to someone who is skilled in creating packaging design.

[5] If the packaging shape is useful in protecting the product in some way (for freshness, against breakage, to fit better while shipping or on store shelves, etc,), then you can’t get a design patent. You might be able to get a utility patent, though.

Why Isn’t My Lawyer More Like Amazon®?

It’s boring and barely worth mentioning that we’ve seen a revolution in the way we buy everything from movies to mattresses. It’s equally boring to point out that the changes have increased availability and reduced the cost everything from banking to Brussel sprouts.

And, yet, the business model for the delivery of legal services remains mired in the 20th century, even though an update is desperately needed. Better access to less expensive legal services would be a huge boon to:

  • an entrepreneur starting her business on a shoestring;
  • a debtor behind on his payments and getting threatening phone calls;
  • anyone being discriminated against at work.

Legal aid and pro bono legal services don’t begin to scratch the surface of the need for more accessibility to legal services at lower prices.

Existing online services aren’t really filling the need.

Companies like LegalZoom® have streamlined the mechanical aspects of some business law services, but even in that narrow niche of legal services, they don’t deliver what people really need. For example, LegalZoom will file a certificate of incorporation with the Delaware secretary of state in order to form a Delaware corporation but they can’t:

  • Tell you whether you should be forming a limited liability instead of a corporation;
  • Tell you whether you should form your entity in your home state because the benefits of a Delaware entity aren’t worth the cost given your circumstances;
  • Tell you whether there are other steps you have to take to achieve your goal of limiting your personal liability.

The obvious answer is for LegalZoom to bump up its level of service but it can’t. That would mean it was “practicing law,” which it’s NOT allowed to do. State law allows only lawyers to deliver legal advice and counsel. LegalZoom will hook you up with a lawyer, but that’s just a fancier path to the traditional means of delivering legal services.

Lawyers are not well suited to disrupt the industry.

“Okay,” I hear you say, “if companies like LegalZoom can’t do it, surely the lawyers will see the opportunity and jump on it.”  Don’t hold your breath.

  • Lawyers are invested in the status quo. They think it’s working pretty well for them. (They’re wrong.)
  • Lawyers focus on day-to-day billable hours. They rarely look up from the dashboard to see the horizon rushing toward them.
  • The level of risk entrepreneurs deal with every single day is well beyond the risk profile of most lawyers. Future lawyers arrive at law school with a mild aversion to risk. They then spend three years reading cases where everything went wrong in the worst possible way. That’s followed by years hearing from clients only when something bad happened. A client has never called me to tell me that the custom software they contracted for was finished on time, on budget, and with all the functionality promised. Being a lawyer means being paid to sit in a chair and be paranoid.
  • Investors and normal disrupters can’t participate. Lawyers can deliver legal services through professional entities (PC; PLLC; PLP; etc.) but no one is allowed to own an interest in those entities except the lawyers who are actually practicing law through the entity. That means no outside investors. The lawyers would have to put their own money on the line to build the tools, which brings us back to that risk-aversion thing.

How bad is it?

Before I left the firm where I had practiced for almost 20 years, I was put in charge of working with a website developer to redo the firm’s website. The website was and would remain an electronic brochure. It had no functionality. Clients could NOT use the website to access their files, pay their bills, or even make an appointment. It was a series of pages with pretty pictures and copy. The firm had fewer than 20 lawyers.

It took a year. One entire year to create a small online brochure.

I don’t have specific data that shows my experience is typical, but I’ve certainly not spoken to a lawyer who says that my experience isn’t the norm.

The tools built by lawyers are unlikely to be user-friendly.

I first had the idea for online delivery of trademark registration legal service while I was at my old firm. I never even suggested it. If a simple electronic brochure took a year, building a functional website that delivers legal services would have taken a decade.

Beyond that, the resulting site would have been unusable because it would have been covered with warnings and disclaimers. Don’t believe me? Here’s the first page of the electronic filing system of the U.S. Trademark Office.

Picture1

There are 1,631 words on this page, only 30 of which are functional.[1] The other 1,601 words are warnings, instructions caveats, and CYAs.

If I had tried to build Beeline while at my old firm, this is what every page of my website would look like.

Removing the barriers to entry is unlikely.

The obvious answer is to remove the barriers to entry.

Look at the trouble Tesla® is having removing or amending statutes that protect car dealerships. Deregulating the delivery of legal services will be harder because legislators are often lawyers, who are very disinclined to deregulate their own profession.

If you still think deregulation is the answer, I know this awesome bridge across the East River that might interest you.

Apart from removing barriers to entry to the legal profession, is there a path to delivering robust legal services with the seamlessness of Seamless®?

What will work?

Changing the way that legal services are delivered would bring all the benefits to that industry as have been achieved by other industries: Lower cost, faster delivery, greater accessibility, and fairer administration of justice.

It would also benefit lawyers. Lawyers are essentially brain whores: We sell off access to our brains in quarter hour increments. Unfortunately, only one client can use our brains at a time and we have only so many brain-hours to sell.

When I built Beeline, I turned my twenty years of experience into an online expert system The result is that multiple people can use my brain at the same time. That means lower prices for clients and higher incomes for lawyers.

What’s required is for just one lawyer in each area of expertise to decide to make it happen:

  • One lawyer with deep and broad expertise in an area of law: Knowing from experience what questions people ask; knowing how to balance competing client needs in order to choose from different available solutions; knowing what confuses people the most and how to explain and guide a client past the difficult bits.
  • One lawyer willing to take input and advice from others on non-legal aspects of the website: design, flow, usability, etc.
  • One lawyer willing to risk her own capital to build the tool and launch and grow the practice.

I took me four months of 11-hour workdays to create the documentation for the Beeline website. It took over 1,000 person-hours to code the documentation. It continues to take many hours of marketing and promotion to build the business.

I’m not really that different from other lawyers. I was just privileged enough to be in a position to make it happen in one small corner of the legal world. I encourage others in my profession to take the plunge.

 

[1] These are the functional words:

Trademark Electronic Application System

Please select one of the filing options below.

TEAS Reduced Fee

TEAS Regular

Is an attorney filing this application?

Yes

No

Use previously-saved data.

Choose file

Cisco Sysco

Sysco Corporation has been using SYSCO since the early 1970s.

Cisco Technology, Inc. started using CISCO in the 1990s.

CISCO sounds exactly like SYSCO.

Why is that OK?

For long-time readers, you know the answer has to do with those darn du Pont factors.  Here are the two du Pont factors that are considered the most important:

  • The similarity or dissimilarity of appearance, sound, and connotation of the marks.
  • The relatedness of the goods or services.

The first of the two key factors is a problem for Cisco Technology, Inc. The marks are identical in sound. It’s kinda interesting that the words look quite different but the complete identity of the sound is what’s going to control here. I can’t start a band and call it GHOTI* without running afoul of the band PHISH.

It’s the second bullet that gets Cisco Technology off the hook. It’s hard to imagine two more different areas of endeavor:

Distributing food products to restaurants and other foodservice companies.                       vs.Developing, manufacturing and selling networking hardware and telecommunications equipment

I find it very hard to imagine a restaurant owner called Cisco Technology to order eggplant for her moussaka. I find it equally hard to imagine her calling Sysco to buy a new router.

And that’s why it’s OK.

 

 

 

Shout out to Julie W. for the suggestion that led to this post.

Photo by Raysonho @ Open Grid Scheduler / Grid Engine [CC0], from Wikimedia Commons

*GHOTI = FISH if you pronounce GH as in “rough”; O as in “women”; and TI as in “friction.”

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