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.
Selling stuff in special packaging is a type of trade dress, which is a trademark. 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.
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. 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:
|Expiration||Expires after 15 years.||No expiration. It can last forever.|
|Requirements||Has to be “novel”.
Has to be “non-obvious”.
It must not be useful.
|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.
 “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.]
 Manual of Patent Examination Procedure Section 1502 citing 35 U.S.C. Section 171.
 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.
 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.
 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.