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.
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.