MARKSCOUNSEL

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Name: Eric Wachspress
Location: CHICAGO, Illinois, United States

I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at ericwachspress@sbcglobal.net, by phone at 773.934.5855 or by mail at 1727 N. Natoma Ave., Chicago, IL 60707 USA

Friday, October 20, 2006

PRODUCT DESIGN PROTECTION & TRADEMARK LAW

As a business, you want to be able to protect your product de­signs. That’s because an attractive, dis­tinctive product design can attract buyers, increase sales and enhance your goodwill. But that same distinctive de­sign, once copied by a competitor, can become commonplace, siphoning off sales and prospective customers.

How can you protect your distinctive prod­uct design? One way is through trademark law. Trademark law makes it possible to obtain indefinite exclusive rights to a non-functional product design as long as that design is not the subject of a patent (except a design patent), is not advertised or promoted as improving the function, operation or ease of use of the product, is not the result of a simpler or more inexpensive manufacturing process, is not essential to the use or purpose of the product or affects the cost or quality of the product.

If a product design meets these condi­tions, and the product bearing the design is used in interstate or foreign com­merce, the design can be registered in the United States Patent and Trademark Office on the Supplemental Register. A Supplemental Registration will put sub­sequent applicants and others on notice that you are claiming trademark rights to your design, and later applicants will be barred from registering confusingly sim­ilar designs for related products. If, additionally, you can prove to the satisfaction of the United States Patent and Trademark Office that your product is distinctive, it may be regis­tered on the Principal Register. A trade­mark registration on the Principal Register is prima facie evidence of your ownership of and exclusive right to use the registered design and it can be used to get the Customs and Border Protection Agency to stop the im­portation of competing products featuring your design. It will also place subsequent applicants and others on notice that your design is claimed as a trademark and bar later applicants from registering confus­ingly similar designs in the U.S. Trade­mark Office.

In order to prove to the satisfaction of the United States Patent and Trademark Office that your product is distinctive, you will need to submit to the Office examining attorney sales figures and advertising ex­penditures for your product containing the design. You will also need to submit examples of your product advertising that highlights the design. These examples should call attention to your design in a manner which will cause customers to recognize it as your trademark. If, however, your advertising instead draws attention to any functional fea­tures of the product design, it will likely defeat your quest for trademark protec­tion.

Should your sales figures and advertis­ing expenditures prove sufficiently sub­stantial; if they include advertising and promotion in relevant trade and custom­er publications and at trade shows, and if this advertising draws attention to your design, you will be able to obtain recog­nition and protection of your design as a registered trademark. Examples of distinctive designs which have been protected as trademarks in­clude the external design for the receiver portion of a Browning automatic shotgun, the shape of a plastic spray dispenser and the round design of the Honeywell ther­mostat as well as the configuration of McDonald’s original golden arches.

A U.S. trademark registration is valid for a period of ten years and can be renewed for future ten year periods of as long as you continue to use the trade­mark in interstate or foreign commerce on the products that are described in the registration certificate.

Remember that prior to filing an application to protect a product name, logo or design, a search should be undertaken to determine if a mark or design similar to the one that you are seeking to protect has already been applied for or registered.

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