Business owners with existing product designs or contemplating new product ventures should consider shielding their investments with dual intellectual property protection. Product design has a tremendous influence upon consumer product choice. A distinctively designed product whether it is a cell phone, computer, item of apparel, or even a skateboard, has enormous market superiority over the competition because it invites examination and identifies the manufacturer. Businesses invest vast amounts of capital in research and development as well as advertisement of their product designs. Market research, hard work, and a quality product provide a limited measure of certainty on the return of investment. Intellectual property rights should be considered as a critical safeguard in protecting a business’s investment in their product design. The combination of patent and trademark protection provides a broader level of investment protection then either property right alone could provide. By designing products with built-in patent and trademark protection, businesses can extend property and investment protection indefinitely.

The purpose of a design patent is to encourage creative artistic activity rather than mere changes in item detail. An inventor can receive a design patent for any article manufactured that is new, original and ornamental in design. The criterion for design patentability closely resembles the more familiar utility patent standard. Ornamentality in the design patent replaces the utility or usefulness requirement of a general patent. Ornamentation that is subject to a design patent cannot be a functional aspect of the invention. The feature is functional if it is essential to the use or purpose of the article. For example, the shape and color combinations used in cellular phones are often not essential to the article’s purpose or use, i.e., transmitting information. If the mobile phone’s exterior housing were deemed to be a creative invention the inventor would be entitled to a design patent. Design patents have been granted protecting the shapes of automobiles, computers and bottles, silverware engraving, and lamp characteristics; the list is endless. A design patent affords the patent owner a right to exclude others from making, using or manufacturing the design for a term of 14 years. On the other hand, a trademark or item of trade dress has the potential for unlimited term protection.

A trademark is a word, phrase, symbol, or design, or combination of the same, which identifies the source of the goods or service. A trademark as applied to product design is commonly referred to as “trade dress.” The primary purpose of a trademark or trade dress is to indicate the owner or producer of the commodity and to distinguish it from like articles manufactured by others. Therefore, trademark law protects businesses from confusingly similar goods or services that interfere with the owner’s goodwill of his or her business. Suggestive, arbitrary, and fanciful marks are entitled to trademark registration by virtue of being deemed inherently distinctive, i.e., marks whose intrinsic nature serves to identify their particular source. For example, “the word penguin would be considered suggestive when used to name an air conditioning company and arbitrary when naming a book publishing company. A fanciful mark would be a made-up word like “Penquell” when used by the same book publisher. It is important to note that trademark features, similar to design patents, must be nonfunctional before property rights can exist. Features of trademark or trade dress will be considered functional if they are essential to the purpose of the article or they affect the cost or quality of the article.

Trade dress involves the total image or overall design of the product including, the size, shape, color, graphics etc. Trade dress is a category that originally included only the packaging of a product, but in recent years has been expanded to encompass the design of a product. Trademarks of product designs are entitled to registration if they are inherently distinctive or have acquired secondary meaning. The Supreme Court recently decided that the intrinsic nature of product design, unlike packaging, is incapable of being inherently distinctive. This is because design generally serves to make the product more appealing. Until the proposed design acquires secondary meaning, business owners seeking trademark protection of product designs will initially be limited to a “lower level” registration of the design known as the Supplemental Register. Secondary meaning occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself. Initially, the ornamental features of the iMac computer were not immediately identifiable with Apple Computers. Spurred on by television, magazine and newspaper advertising, consumer recognition increased. As the product’s popularity increased the computer’s teardrop shape and vivid color scheme soon became intimately linked with Apple Computers; an acquired secondary meaning. Protection of a business’s product design begins with registration of the design on the Federal Register.

Federal registration of a design on the Supplemental Register provides four distinct advantages to the business owner in the protection of its mark. First, questions of validity, ownership and infringement of Supplemental Registrations are governed by federal law. This advantage allows the owner of a registered mark to bring a claim of unfair competition along with the claim of infringement. Another benefit of Supplemental Registration is that the registered design can be cited against a later applicant’s attempt to register their mark on the Principle Register. Third, after five years of registration on the Supplemental Register the design is presumed to have acquired secondary meaning for registration on the Principle Register. In establishing secondary meaning, the design patent may be used as a source of protection from others using a similar design allowing the patented design the time needed to acquire secondary meaning. A unique feature of a design trademark is that it can be used to bar a valid patent holder from making his or her patented invention. Although a valid patent constitutes inventive creativity it provides no positive rights to the patent holder. The inventor will be barred from using or making the invention if the invention’s design is likely to be confused with an existing trademark as to its origin of manufacture. Finally, the registered design owner is entitled to use the R in a circle symbol of federal registration. Use of the R in a circle symbol acts as a deterrent to others contemplating use of the registered mark. The principles of dual intellectual property protection are a powerful tool for a business making design product considerations.

Patent protection does not exclude simultaneous trademark protection. Therefore, in the narrow context of a product design an individual can obtain a design patent that protects the item for 14 years during which time the trade dress of the product develops secondary meaning. At that point, trademark protection can continue to protect the design indefinitely. This coexistence of property rights is possible because the good will of the patentee survives the patent. The protection accorded each property right is separate and distinct. Examples of items having this unique dual property protection include, Volkswagen’s patent and trademark of the VW Bug configuration and an Oneida silverware design patent coupled with acquired secondary meaning.

The importance of considering dual property protection in a business’s product design cannot be overstated. Until a particular design has acquired secondary meaning worthy of trademark protection business owners should seek the broadest property protection possible. A patent offers protection for the product while allowing the design to acquire secondary meaning that identifies product with source. Combining patent and trademark rights provides long-term property protection on product design maximizing a businesses return on investment dollars. Business owners should give serious thought to the use of dual intellectual property rights to protect their product market. The success of a business tomorrow may depend on the steps taken today to protect its investment.