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.

[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.