Lewis Roca Blog

When a company wants to protect the appearance or configuration of a product, trade dress intellectual property protection most immediately comes to mind. This is sensible. But, other types of protection, copyright and design patents, can each provide their own unique advantages.

Trade Dress: Perpetual Protection

Trade dress rights provide protection for product appearance and configuration when those attributes have come to identify the source of the product. The types of product attributes that trade dress rights cover is extremely broad. Color, sound, even smell can all be protected as a trade dress. Trade dress rights, however, are difficult to obtain and provide limited remedies for enforcement. In the case of product configurations, trade dress is not considered to be inherently distinctive, thus trade dress can only be registered upon proof of secondary meaning i.e., that the relevant consuming public has come to associate that shape, color, sound, or smell of a product as only coming from a single source. Red soled shoes are only made by Louboutin. Green-gold dry cleaning press pads are only made by Qualitex. So too can common law trade dress rights only be enforced upon a showing of secondary meaning. Unlike other forms of product protection, trade dress looks at the product’s appearance or configuration as a whole, meaning that smaller subset of the presentation might not be protectable as trade dress.

The most frequent outcome of trade dress litigation is injunctive relief. Some courts hold that the irreparable harm required for an injunction is automatically found upon a finding of infringement, unlike patents and copyrights. Monetary damages are rare. In the Ninth Circuit, willfulness is required for an award of profits. Awards of attorney's fees are even rarer. Per the Lanham Act, awards of attorney's fees are limited only to "exceptional" cases. However, if the infringing use of the trade dress rises to the level of a "counterfeit" and the plaintiff's trade dress has been registered prior to the alleged infringement, the plaintiff has the potential to receive treble damages, or up to $2,000,000 in statutory damages. However, not every infringement is a "counterfeit." A counterfeit mark is defined by statute as "a non-genuine mark identical to or substantially indistinguishable from a mark that is in use and registered on the USPTO’s principal register for the same goods and services." Another benefit of trade dress rights that all other forms of intellectual property lack is the potentially infinite duration of protection. Trade dress rights last as long as the trade dress is not abandoned or does not become generic. Trade dress registrations can be registered with United States Customs.

Copyrights: Not just for Books and Music

If an aspect of the appearance of an object is separable from its utilitarian purpose (such as a figure of a dancer that is used as the base of a lamp) that aspect can be protected under copyright law. Copyright law comes with a number of advantages. First, a copyright is not something that rights holders actually have to apply for in order to obtain protection. Copyright protection vests as soon as a work is embodied in a tangible medium of expression. That said, a plaintiff in a copyright litigation must file for a copyright registration, and obtain a decision regarding the registration from the Copyright Office before filing suit against an alleged infringer. However, the Copyright Office does not need to grant the registration before the plaintiff files suit. They can reject the registration, in which case the plaintiff bears the burden of proving that the work is copyrightable and owned by the plaintiff during the course of the litigation.

The remedies for copyright infringement are powerful as well. If a copyright owner had obtained a copyright registration for the product before the alleged infringement occurred, the copyright owner might be entitled to an award of attorney's fees and up to $150,000 per copyrighted work that was infringed. Copyright owners can also register their copyright with United States Customs. This will allow customs agents to seize infringing goods as they are being imported in the United States.

Until recently, copyright law was not as commonly used for product configuration protection, except in extreme cases like the aforementioned dancer lamp. However, the Supreme Court's recent decision in Star Athletica v Varsity Brands, 137 S.Ct. 1002 (2017) broadened copyright protection for works of art that are incorporated into a useful article. The work of art is eligible for copyright protection, if the feature can be perceived as:

• a two-dimensional work of art, separable from the useful article;
• the feature would qualify as a protectable pictorial, graphic or sculptural work either on its own, or fixed in some other tangible medium of expression; and
• if it were imagined separately from the useful article into which it is incorporated.

The duration of the protection lasts for the lifetime of the author plus 70 years. Or, in the case of a corporate author, 120 years.

Design Patents

Design patents are one of the more obscure forms of protection available for products, but arguably one of the more powerful. Design patents protect the ornamental features of a product. A design patent can protect a much smaller subset of a product that might not be otherwise copyrightable or protectable as trade dress, absent extraordinary evidence of secondary meaning. As an example, the authors have obtained design patent protection for a single, small, pill-shaped divot in the side of a vehicle wheel. This is not something that would likely be copyrightable or protectable as trade dress. So too can a design patent protect designs such as the pattern of a wheel tread. Design patents are generally much easier to prosecute than utility patents, and are far less expensive. They lack a substantive specification, other than drawings, and contain a single claim: "The ornamental design for [a widget], as shown and described." Design patents last fifteen years from the date of issuance, and do not require maintenance fees, unlike trademarks and utility patents. Savvy rights holders use this 15-year exclusivity period to establish the required secondary meaning for trade dress rights once the design patents expire. This allows some form of protection to continue indefinitely.

Damages awards are also much easier to obtain for design patents. Once infringement has been found, the design patent owner can choose to recover the infringer's profits. And these profits can be substantial. In the recent billion-dollar Apple vs Samsung litigation, the vast majority of the damages award was for infringement of Apple's design patents. As with copyrights and trade dress rights, the design patent owner may also obtain equitable relief in the form of an injunction. New on the horizon is a bi-partisan bill that would allow owners of a design patent to register that design patent with United States Customs, just like a trade dress or copyright registration.

What is best for me?

The obvious question of "What is best for me?" depends on the product appearance or configuration that you want to protect. If it is the overall aspect of the product, then a combination of copyright, trade dress, and design patent will provide maximum protection. If it is a small feature of the product, a design patent might be the only way to go. If it is a characteristic of the product like its color, smell, or sound, then trade dress is likely your only option. Regardless of what you want to protect, using all available tools at your disposal is critical to protecting your rights.

If you would like to learn more about how we can protect your product's appearance or configuration, please contact Tom Daly at TDaly@lrrc.com or Drew Wilson at DWilson@lrrc.com.