The Product Design IP Trifecta: Design Patents, Copyrights and Trade Dress

I had a conversation recently with a very fascinating fashion designer from New York City about securing intellectual property protection for her inspirational designer products.  That conversation has inspired this blog post, for more than one reason.  Although this post was inspired by a NYC fashion designer, it would still be relevant for designers and manufactures of various types of products from furniture and automobile parts to salt and pepper shakers.
A common question asked by clients is “how can we protect our product designs from knockoffs?”  Generally, those options include various types of intellectual property protections, including copyright registrations, trademark registrations, common law trademark protection and/or design or utility patents.  Due to the arcane nature of intellectual property laws, most owners of intellectual property rely upon the expertise of intellectual property attorneys to ensure they maximize their protection and don’t lose valuable rights due to missteps or failure to timely act.
If your company is about to launch a new line of jewelry, toys, industrial containers or shoes, how might you go about protecting those products from “copycat” knockoffs by competitors or Chinese manufacturers?  If your intellectual property attorney advises that a design patent is available, should you and your attorney stop there?  Or would it be prudent to also consider copyright and trade dress protection for your designs?  “If I have patent protection, why should I worry about copyrights or trademarks?  After all isn’t patent protection the “best” type of intellectual property?”  There are a number of reasons why copyright registration and trade dress protection for product designs would enhance and compliment design patent protection.  Those reasons include the length of protection afforded by design patents, copyrights and trademarks (or in this case “trade dress”) and what aspects of products may be protected by each. 
While design patents last for fourteen years, trade dress protection may endure in perpetuity – or at least as long as the product design is put to use -- and copyright protection generally endures for the life of an artist plus seventy years and for an anonymous work, a pseudonymous work, or a work made for hire, ninety-five years from the year of first publication or 120 years from the year of creation, whichever expires first.
Summary of Coverage and Purposes of Design Patents, Trade Dress and Copyrights
Design Patents
Design patents protect ornamental, non-functional, designs of functional products, such as ornamental features of earrings, vehicle hubcaps, chairs, containers (e.g., original Coca-Cola bottle), and computer icons.  Design patents prevent others from legally manufacturing, importing, selling or using the patented design for 14 years. 
One benefit of a design patent over trade dress protection is that a design may be patented without ever having commercially used the design.  Trade dress protection for a product design, however, is only available after the product has been put to commercial use and only once the product design itself has achieved - what is known as - “acquired distinctiveness;” meaning that consumers have come to associate the shape of the product itself or an aspect of the product design as identifying its source.  One benefit of design patent over copyright is that in order for a product design to be eligible for copyright protection, the design feature must be conceptually separable apart from the product’s functional aspect.  If the product design is that of the shape of a handbag, for example, obtaining copyright protection is likely not an option.  If, however, the handbag features an original ornamental picture or design, then copyright protection should be available for that aspect.
Trade Dress
Trade dress protection may be available for a product shape, but only if it has achieved acquired distinctiveness and is not considered functional.  A product design is considered functional, from the perspective of trademarks, if the design is considered essential to the use or purpose of the product or if the design affects the product’s quality or cost of manufacture.  Thus, as long as the product shape functions as a source identifier (e.g., it has achieved acquired distinctiveness) and it is not “functional,” trade dress protection should be available under the Lanham Act – even if the trade dress itself has not been federally registered.
One advantage of trade dress over design patent protection is that trade dress protection, once achieved, will generally endure forever, as long as the product design is put to use, while design patents endure for only 14 years. 
A strategy employed by some product designers is to seek design patent protection for their product designs and then, during the 14 year monopoly term, carry out a branding strategy (i.e., “look for advertising”) that seeks to create the prerequisite acquired distinctiveness of the design itself in order to acquire trademark – or trade dress – rights in the design.  Then once the design patent expires, trade dress rights would prevent competitors from legally creating the same designs if their use would cause a likelihood of consumer confusion as to the source of the parties’ respective products.
The majority of courts have held that design patents rights and trade dress rights may peacefully co-exist for the same product, since patent and trademark laws carryout different purposes.  Some courts, however, have questioned that position. 
In Kohler Co. v. Moen, Inc., 29 USPQ2d 1241 (7th Cir. 1993), Kohler sought to oppose trademark/trade dress registration for one of Moen’s designs of a faucet handle on the basis granting such trademark protection for a once-patented product design conflicts with existing patent laws.  In rejecting Kohler's arguments, the court said “[T]he trademark owner has an indefinite term of protection, it is true, but in an infringement suit must also prove secondary meaning and likelihood of confusion, which the owner of a design patent need not do; there is therefore no necessary inconsistency between two modes of protection.”  The court also stated that “while a patent creates a type of monopoly pricing power by giving the patentee the exclusive right to make and sell the innovation, a trademark gives the owner only the right to preclude others from using the mark when such use is likely to cause confusion or to deceive."  

Copyright allows the author of original works to prevent others from copying it for a term of the author’s life plus 70 years.  With respect to achieving copyright protection for aspects of product design, the design itself must be a separable element from the product’s functional use; meaning that the design be of an artistic nature and not dictated by the function of the product.  In other words, copyrights protect against the copying of non-functional aspects of created works.
So when it comes to seeking intellectual property protection for your product designs, you will want to consider not only design patent protection, but also look at the long-term (beyond 14 year patent term) by federally registering any copyrightable aspects and creating a branding strategy aimed at achieving trade dress protection.  
To see how these different types of intellectual property rights may play out in a suit for infringement, take a look at the recently filed case of Mint, Inc. v. Shokomoko and, Inc. (filed in the Southern District of NY) involving the salt and pepper shaker depicted above (on website).