Do I Need A Design Patent, A Copyright Registration Or A Trade Dress Registration (Or An “All Of The Above” Strategy)?
You have created a product that has a unique and original design. Now what – how do you obtain intellectual property protection for the design? Your design may be eligible for a design patent, a copyright or trade dress protection (or maybe all three!). Here’s a brief primer on these three important forms of protection:
Design Patents: A design patent protects new, original and ornamental aspects of an article for manufacture and can cover either the overall appearance of the article or specific design elements. Design patents only protect non-functional elements of an article. A functional element, which is not protected by the design patent, is an element that is essential to the use or purpose of the article. A design patent grants the owner the right to prevent others from making, using, selling, offering to sell or importing any article that embodies the design protected by the patent. The test for infringement is a pretty simple one: Would an ordinary person who buys and uses this design, and who is familiar with this type of design, confuse the allegedly infringing design with the patented design?
A design patent requires much more upfront work and costs to obtain protection than a copyright registration or trade dress registration but provides an extremely strong form of protection. A design patent remains in effect for 14 years after the date of issuance.
Copyright: A copyright protects an original work of authorship fixed in any tangible medium of expression. In order to be original, the work must be an independent creation and must possess at least a minimum level of creativity. The amount of creativity necessary for copyright protection is very low, and often is described as “modest” and “very slight.” A difficulty that often arises in obtaining copyright protection for product configurations is that the copyright only protects the design elements of the product design and not the functional and utilitarian elements of the design. Consequently, the design elements must be able to be identified separately and must exist separately from the functional and utilitarian elements of the product configuration. This is known as the “conceptual separability” requirement. If a product’s design and function cannot be separated, copyright protection is not available.
An item infringes a copyright if the accused item is “substantially similar” to the copyrighted work. This is a simple test to state but often can be a difficult one to apply.
A copyright registration is not required for protection but is highly desirable because the registration provides significant benefits and remedies if infringement should occur. A copyright registration is inexpensive and can be obtained fairly quickly. A copyright generally remains in effect for the life of the author plus an additional 70 years, and does not have to be renewed.
Trade Dress: A particular aspect of a product configuration, or the overall configuration of the entire product, may be protected as trade dress (which essentially is the same as a trademark, but applied to a product configuration). A product configuration can qualify for trade dress protection if the configuration attains what is known as “secondary meaning.” The concept of “secondary meaning” is a short-hand way of saying that the particular configuration has come to be recognized by consumers as an indicator of the source of the product. Think the Coca Cola bottle.
The test for trade dress infringement is whether a competitor has adopted a similar trade dress that causes a “likelihood of confusion” in the minds of consumers. In other words, infringement exists when a consumer is likely to be confused into believing that the product of the infringer originates with or is sponsored by the legitimate owner of the trade dress.
A product configuration acquires trade dress protection through use. Registration is not required but is highly advisable and confers a number of benefits to the owner of the registration. The trade dress may be registered with the US Patent and Trademark Office. It cost more money and takes more time to obtain a trade dress registration than a copyright registration, but generally less time and money than a design patent. Trade dress protection does not have any specific term – the protection exists for as long as the product is sold. A trade dress registration must be renewed every 10 years.
As can be seen, design patents, copyrights and trade dress each have different requirements for protection and different costs involved to obtain protection. A business that has developed what they believe is a strong product design or configuration should consider all forms of protection as appropriate to provide a strong deterrent against infringement.
We recently came across a very interesting and valuable article in Forbes Magazine in which the author discusses her experiences and insights about retaining legal counsel to represent her. The article can be found here: http://www.forbes.com/sites/amyanderson/2013/06/04/nothing-is-more-expensive-than-a-cheap-lawyer/
This article is a must-read for all entrepreneurs and anyone who is running a business, has just started a business or is thinking about starting a business. As the author explains, one of the biggest mistakes she made early on as an entrepreneur was hiring cheap lawyers or not using an expensive lawyer nearly enough, thinking she was saving money for her business. But over the years, the school of hard knocks taught her just how expensive cheap legal help can be.
The author learned early on that while “Heaven would be a world where the need for lawyers didn’t even exist – where everyone could be trusted to uphold their word, where no one would ever have misunderstood expectations in their agreements, and where a simple conversation could settle any dispute that arose. But we aren’t in heaven – not yet anyway – and we certainly aren’t living in a perfect world, so the cold hard truth is that when push comes to shove, you better be hoping to heaven you have a great lawyer there to have your back.”
The author also explains what in her opinion defines a truly great lawyer: “I finally came to learn, after many years of trial and error, what the definition of a truly great lawyer is: A truly great lawyer is one who will start the contract draft out fair and balanced, rather than trying to make a one-sided agreement with the hope the other party will just sign without reading. A lawyer who is looking to take advantage of the other party is not the kind of lawyer you want because business is about ongoing relationships, not churning and burning from one client to the next. A great lawyer is also one that will help you get a deal done! They will educate you on what terms you need to be more reasonable on as you negotiation with the other party, pointing out which points are truly important to have kept in the agreement and which points are really not worth fighting over. A lawyer who will help you find a balanced win/win for both sides, while making sure that no one takes advantage of you, is the best kind of lawyer there is, and they are worth every dime you pay them, regardless of their hourly rate!”
In the final analysis, the only regrets of the author when it came to legal bills and lawyers was either not spending enough money to hire the good ones, or the times I thought I was saving money by hiring the cheap ones. As she says, “Go ahead and make as many lawyer jokes as you want to (because let’s face it, some of them are just plain hilarious!), but never forget that nothing will be more expensive to your company than hiring cheap lawyers, and nothing will be more painful than hiring the wrong ones.”
This article is dead on as to what we have learned in our 28 years of representing clients and, in the process, interacting with opposing lawyers of every imaginable type. We have always modeled ourselves to be “truly great” lawyers of the type described in the article. And we could not agree more that businesses simply cannot afford (both money-wise and business-wise) to hire less than competent lawyers just to try to save a few dollars.
It is with great pleasure that we announce and celebrate the 10th anniversary of The Affinity Law Group! On June 1, 2003, Greg Goonan formed The Affinity Law Group to provide an option to those clients who wanted more personalized and more cost-effective representation than available at most other firms. It has been our honor and privilege to provide creative and effective representation to our clients over the past 10 years. We thank our clients, friends and colleagues for their support, and look forward to many more years of providing the highest level of dedicated representation to our clients. Please visit our website at www.affinity-law.com for more information.