Introduction

Designers who are empowered with knowledge of intellectual property laws can leverage their creativity into patents, trademarks, and copyrights to protect their work and gain competitive advantages. Not all patents, trademarks, and copyrights are created equal, however. Designers should strive for strong intellectual property rights, and doing so requires a baseline understanding of the differences between these forms of protection. Through explanations and examples, this chapter provides an overview of the protections available and offers guidance on preserving and maximizing one's rights under the different protection schemes.

24.1 “Design” in Intellectual Property

To understand how designs may be protected, it is important to set aside preconceived notions of what a “design” is. Designers, artists, museum curators, academics, and others have long debated what design is and how to distinguish design from decorative arts, sculpture, engineering, drawing, or other creative endeavors. In the real world, designs include both functional components and aesthetic elements. For example, a new “design” for a smartphone might include software for improved usability including streamlined menu navigation and search capability in the user interface, and may additionally stylize the contours of the phone and the aesthetic appearance of the buttons and text in the interface.

“Design” in the intellectual property context, refers only to the aesthetic or ornamental appearance of an object or interface. This is because what is considered a design in intellectual property law must be nonfunctional. Functional aspects of newly designed products are considered “inventions”—not designs—that can only be protected by a “utility” patent. Utility patents are what most people think of when they hear the word patent—for example, Thomas Edison's patented lightbulb filament. Lesser known is that design patents can separately protect “any new, original, and ornamental design for an article of manufacture”—basically, any aesthetic industrial design. Copyright law protects “the design of a useful article,” recognizing that at least some designs are akin to graphic and sculptural works of art. A product design or interface can even be a protectable trademark, like the classic Coca-Cola bottle shape where the aesthetic appearance alone signifies the brand of the product—you do not need to see the “Coca-Cola” name on that bottle to know what kind of soda it contains.

Returning to the hypothetical phone discussed earlier, that “design” includes an invention—the improved user interface and search navigation software—and a design—the stylized contours of the phone and the aesthetics of the buttons and interfaces. The former can be protected only by a utility patent, and the latter is a design that might be protectable as a design patent, a copyright, or a trademark. Although many believe that good design has form following function without excess ornamentation, protection for a design is most limited where the form follows or is influenced by functional considerations.

Henceforth, this chapter will refer to a “design” as including only those nonfunctional aspects of products and interfaces that are protectable by design patents, copyrights, and trademarks. All forms of intellectual property protection for designs are different and can serve different purposes.

24.2 Utility Patents

The purpose of the patent system, as proscribed in the United States Constitution, is to “promote the progress of…useful arts, by securing for limited times to…inventors the exclusive right to their…discoveries.” A patent is a quid pro quo bargain with the government—in exchange for sharing your technological innovation with the world (by filing it with the patent office, which later publishes it), you are given a limited-time “exclusive right” to the invention. That limited-time right, or the patent term, is 20 years from the date the patent application was filed. Patent rights are strong in that you can infringe a patent without even knowing the patent exists.

The “exclusive right” of a patent is not an affirmative right to make, sell, or use your patented invention, as is often assumed. For example, you could patent a dangerous weapon or illicit substance subject to regulatory control by the government, but those regulations would not allow you to produce your invention. Rather, a patent gives you a right to exclude others from making, using, selling, offering to sell, or importing your invention. For any invention that you are legally allowed to make, use, or sell, a patent is a way to obtain an economic advantage by keeping your competitors out of the market.

Under Section 101 of the Patent Act, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” This broad scope of patent-eligible subject matter encompasses nearly any kind of technological innovation. To obtain a patent on such subject matter, the invention must satisfy essentially two types of requirements, which I will refer to as the innovation requirements and the disclosure requirements. Before addressing the innovation or disclosure requirements, however, the crucial role of patent claims must be understood.

The Role of Patent Claims

A maxim of patent law is that “the name of the game is the claim.” To determine whether an invention is innovative or sufficiently disclosed, one must look at how the invention is claimed. Every utility patent concludes with a series of one or more claims—single-sentence descriptions of the scope of one's invention and how all the components relate to each other to make a whole inventive concept. For example, imagine a world where no chairs existed and three inventors designed a chair, a rocking chair, and a stool, respectively. Their claims might look like Table 24.1.

Ex. 1 (Standard Chair)	Ex. 2 (Rocking Chair)	Ex. 3 (Stool)
A chair comprising: a seat; four legs extending downward from the seat; and a back extending upward from the seat.	A chair comprising: a seat; four legs extending downward from the seat; a back extending upward from the seat; and two curved rockers attached to the legs.	A chair comprising a seat; and four legs extending downward from the seat.

Each claim recites the essential elements of the chair type. Every element of the claim is also referred to as a “limitation” because it narrows the scope of the coverage. For a claim to be infringed by a competitor's product, that product must include each and every element of a claim. Thus, a shorter claim with fewer elements is more likely to be infringed. In the example here, the stool claim is the broadest claim. The owner of a patent with this claim could exclude others from making any chair that includes a seat and four legs, including the chair and rocking chair shown above. By contrast, neither the chair nor rocking chair claims would be infringed by the stool because the stool lacks the “back” and “rockers” that are part of the other two claims.

Importantly, in this example, the inventors of the chair and rocking chair could also have drafted claims encompassing only the seat and legs—the essence of the chair. The additional “back” and “rockers” limitations are optional features not required to describe the core inventive concept. Thus, when claiming an invention, inventors achieve the broadest possible protection by including as few elements as are necessary to capture the inventive features.

As discussed below, however, the trade-off for a broad claim is that it might be more easily invalidated. A vital strategy for utility patent protection is therefore to always “spread your bets” by including claims of different scopes in your application. Some can be broader to capture more infringement, and some can be narrower to better withstand validity challenges. In the chair example, the inventor of the rocking chair could have included all three of the above claims in an application, since the rocking chair subsumes all three chair embodiments. Every invention can and should be claimed with varying degrees of scope—doing so effectively requires precisely identifying which aspects of an invention are core and which are optional alternatives.

24.3 Design Patents

Design patents cover “any new, original, and ornamental design for an article of manufacture.” This generally encompasses the shapes and contours of products, surface ornamentation, and the appearances of graphical user interfaces.

As part of the patent system, design patents are governed by most of the same rules discussed above. The definition of prior art and the one-year grace period is the same. The right to exclude is also the same, except that the term is 15 years from issuance instead of 20 years from filing (14 years from issuance for design patents filed before December 18, 2013). Design patents are subject to the same disclosure and innovation requirements, although the standards for how those requirements are satisfied differ given the fundamentally different nature of designs.

Rather than verbal descriptions, claims in design patents are dictated by the drawings in the application. In fact, virtually the entire patent consists of drawings—what you see in the drawings is what is covered by the patent. Some exemplary design patent drawings are shown below, in Figure 24.1.

The test for design patent infringement asks whether an ordinary purchaser of the patented designed object, who is familiar with the prior art, would find the overall appearance of the patented design to be substantially the same as the design in an accused infringing product. This test is essentially a side-by-side comparison of the patent drawings with the accused product.

It has been famously said that “design patents have almost no scope.” Compared to utility patents, which cover conceptual notions of inventions regardless of the precise form of the product, design patents cover only the ornamental appearance of the product, as shown in the drawings, and do not extend to any functional features of the underlying article.

The threshold ornamentality requirement insists that the appearance of the product be “a matter of concern” at some point during the useful life of the article—that is, between the creation of the article and its ultimate destruction, loss, or disappearance. For example, a hip prosthesis can be ornamental if it is displayed in promotional materials or shown in trade shows even though it is intended to be invisibly placed inside a human body, but a replacement car engine part ordered by part number only does not indicate that the appearance of the part is a matter of concern.

Because patented designs by definition are embodied in functional objects, the object will include some functional features and some ornamental aesthetic design choices. To the extent the form of the article is dictated by function, however, the design features cannot be protected and are discounted (i.e., treated as if absent) when analyzing whether a design patent is infringed. Only those features that are designed independently of functional constraints are protectable by design patents. This is not to say that every functional piece of an object cannot include a protectable design, however. For example, every button on a device is “functional,” but the creative choices of where to place the button and how it should be sized, shaped, or styled can constitute a protectable design for the button. Only design choices that are dictated by function are best understood as being unprotectably “functional,” such as the shape of an airplane wing, which can only be one shape in order to provide sufficient lift. To be clear, airplane wing shapes are the proper subject of utility patents, just not typically design patents.

Like inventions, designs must be novel and nonobvious to be patented. Because the scope of a design claim is generally quite narrow, it is both rare to infringe a design patent and hard to find prior art that will invalidate it. The novelty requirement is essentially the same as the infringement test—the design cannot already exist in a single piece of prior art such that an ordinary purchaser of the object would find the overall appearance of two designs substantially the same. Obviousness allows for modification or combination of the prior art to make the claimed design, and would render a design invalid if it would have been “obvious to a designer of ordinary skill who designs objects of the type involved.” This involves first finding a “primary” prior art design that is “basically the same” as the patented design, and then looking to other designs that are “so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.” Whether two similar designs can “suggest” specific feature combinations and modifications can be a difficult and subjective question to answer. Suffice it to say a design is more nonobvious the less it looks like any of the prior art.

The written description, enablement, best mode, and definiteness requirements for design patents are all satisfied by the submission of a sufficient number of detailed drawings to fully disclose and clearly show the design. The drawings are typically line drawings that include various views (usually front, rear, sides, top, bottom, and perspective) and surface shading to indicate contours and dimensions as clearly as possible. An insufficient number of drawings or an unclear surface shading can preclude or limit patent protection. For example, a circle in a drawing may represent a hole, a concave portion, or simply surface ornamentation—without appropriate shading, the patent office and the public will not be able to discern the nature of the circular feature.

Just as utility patent claims can be broader by including fewer verbal limitations, design patent claims can be broader by including fewer visual limitations. Specifically, a design can be patented fully or partially, such as the fully claimed Fender guitar design and the partially claimed Nike shoe design shown in Figure 24.1. Because the guitar is drawn entirely in solid lines, another guitar is unlikely to infringe unless it includes essentially every design feature of the guitar. A dissimilar arrangement of knobs or body shape may avoid infringement entirely, which highlights how narrow design protection can be and how easy it can be to avoid design patent infringement. The shoe design, however, shows the most prominent design features in solid lines and the remainder in broken lines, thus claiming only the key features of the design. This patent is far broader and would be infringed by any shoe that includes the claimed features, regardless of what the remainder of the shoe looks like. The two Apple graphical user interface design patents shown above also include only certain icons and design elements in solid lines. The lesson here is that design patents are best wielded against direct knock-off products, and should have the drawings focus on the features that are nonfunctional, most distinctive, and likely to be copied.

24.4 Copyrightable Designs for Useful Articles

The copyright system exists to protect original artistic works. While copyrights last much longer than patent terms, generally the life of the creator plus 75 years, the protection is in many respects weaker. A fundamental tenet of copyright law is that it does not protect ideas or high level abstractions, only the expression of those ideas that are reduced to a “tangible medium of expression” (e.g., on a canvas, in a book, or on a compact disc). Unlike patents, which prohibit infringement even if the infringer has no knowledge of the patent, copyright infringement generally protects against copying. Short of an admission that the infringer copied someone's artistic work, copying can be proven by showing that the infringer had access to the copyrighted work and that the infringing work was substantially similar. The owner of a copyright can prevent others from unauthorized copying and distribution, and even from making “derivative works”—“a work based upon one or more preexisting works…in which a work may be recast, transformed, or adapted.” If someone independently creates a copyrighted work, or both works are copied or derived from common public domain sources, there is no copyright infringement. While the threshold to prove copyright infringement is in some respects higher than that for design patent infringement, the ability to prevent derivative works adds some flexibility and breadth to the scope of a copyright beyond that of a design patent.

Traditional forms of fine art like drawings and sculptures have long been protected, but the Copyright Act also makes protection available for a “design of a useful article” if “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” This notion of “conceptual separability” means that the design cannot be strongly influenced by functional considerations. Where form follows function, it can be difficult to obtain copyright protection. Applied art, rather than industrial design, tends to be most protectable. For example, a table lamp base shaped to look like a female figurine was deemed conceptually separable and thus protectable under copyright. Similarly, belt buckles stylized to appear like pieces of jewelry were also deemed conceptually separable. By contrast, store mannequins and an undulating bicycle rack were too influenced by functional concerns to be viewed as copyrightable designs.

Unlike patent protection, copyright protection exists simply by virtue of the creation of a protectable work. Registering one's work with the Copyright Office is not required, but doing so within three months of first publicizing the work does afford the copyright owner certain benefits such as the right to file a lawsuit, to collect statutory damages for infringement, and to potentially recover attorneys' fees incurred in a lawsuit. While it can cost several thousand dollars to file utility or design patent applications, a basic copyright registration costs as little as $35. With or without a registration, the owner of a copyrightable design may affix the © notice symbol, along with the creator's name and the year, to add some marketing and deterrent value to the copyright.

24.5 Trademark Rights for Product Design

Trademarks protect distinctive elements such as words or symbols that signify a specific source or brand of a product. The “Coca-Cola” name or the Nike swoosh symbol, for example, are two of the most famous and valuable trademarks in the world. Owning such trademarks gives those companies the right to prevent others from using their names and symbols in a manner that would be confusingly similar to the relevant consumers.

While patents and copyrights are limited-time rights, trademark rights can be perpetual in duration since they arise from use of the trademark in commerce. As long as Nike keeps selling its products and using its swoosh logo, Nike can sue any company for trademark infringement that sells products using the same or a similar logo in a manner that might cause consumers to attribute a non-Nike product to Nike. As a trademark owner, Nike would in fact have an obligation to “police” its mark and go after others who are using it on other shoes or apparel, for example. A trademark owner who fails to police its rights could “abandon” and lose those rights.

Since the purpose of trademarks is to help consumers identify particular sources of products, only distinctive words, shapes, or symbols can be given trademark protection. Nobody can own the exclusive right to call a product by its generic name or merely describe the product as it is.

For example, made-up names like Xerox or arbitrarily used names like Apple for a computer company are presumptively distinctive. A suggestive name like “Dove” for soap is also presumptively distinctive since it implies certain features of the product (fresh, peaceful scents) in a particular way that not all soap makers need to be able to do in the marketplace. By contrast, the generic word soap is reserved for all who sell soap products and cannot be appropriated by any individual entity as a trademark. Finally, there are descriptive trademarks such as “SoftSoap” that describe the product. These types of trademarks straddle the line because there is a risk of letting a single entity own the right to use that descriptive term—soft—to describe soap, but at the same time consumers have come to recognize that references to SoftSoap point not to any soap that is soft but to the particular brand of the Colgate-Palmolive liquid soaps. Thus, descriptive trademarks are unprotectable if they are “merely descriptive” but can become protectable if it can be shown that the mark has “secondary meaning” or has attained “acquired distinctiveness.”

An ornamental or aesthetic design for a product can be trademarked, but only if the design is not dictated by its function and the product's appearance has secondary meaning or acquired distinctiveness. Perhaps the best example of acquired distinctiveness in a product design is the curved Coca-Cola bottle shape, which is both a bottle shape and an indicator that inside the bottle is a Coca-Cola product. At first, the bottle shape was just a bottle shape, but eventually consumers would come to recognize that the shape indicated that the bottle contained a Coca-Cola product. The recognition occurred without even seeing the Coca-Cola name printed on the bottle. This kind of acquired distinctiveness for a product design is rare since most of the time a product design or user interface contains no deeper meaning.

If a product design is to serve as a protectable trademark, the owner of the design must be able to prove secondary meaning, which is no small task. Such proof typically requires some combination of (1) multiple years of continuous and exclusive use of the design in the marketplace, (2) survey evidence showing that consumers recognize the design as a brand, (3) third-party articles or publications discussing the distinguishing nature of the design, and (4) concerted advertising efforts to show that the design or design feature is being treated as a brand. On the latter point, what is called “look for” advertising can be an effective way to quickly build up acquired distinctiveness. A good example of this “look for” advertising is the Solo cup brand “Squared” cup advertisements, which prominently direct customers' attention to the square-shaped bottom of the cups on the product packaging so that customers are sure to notice the distinctive feature.

Trademark rights arise when a protectable trademark is used in commerce in the United States. Registration of a trademark with the US Patent and Trademark Office is not required. Once a mark is used, one can rely on “common law” trademark rights. These rights can be signified with a “TM” symbol to provide some marketing and deterrent value. Common law rights are limited to the geographic area in which the mark is being used, however. Thus, if a third party later uses the same mark elsewhere, common law rights cannot be used to prevent such use. Generally, the first to use a trademark has superior rights in the mark, but relying on common law rights can lead to this kind of exception.

A federal trademark registration can give presumptive use of the mark as of the application date nationwide, avoiding the common law geographic limitation and preventing later users from limiting the superior rights of one's earlier use date. A trademark registration affords additional rights as well, such as the ability to obtain certain presumptions of trademark rights and additional remedies, and also allows the owner to affix the trademark registration symbol® onto the product. To obtain a registration for a product design, however, one must demonstrate to the satisfaction of the Trademark Office that the design has acquired distinctiveness.

24.6 Legal Overlap, Trade-Offs, and Strategic Considerations

A “design” can encompass inventions, aesthetics, artistry, and a brand all at the same time. If your design comprises a functional invention, utility patent protection may be appropriate. If patent protection is desired, the sooner one can file the application with the US Patent and Trademark Office, the better, since it provides a hard cutoff date for prior art. Moreover, the Patent Office can take years (typically one to three years) to process an application and issue a patent, so earlier filing means earlier patent rights.

As for nonfunctional design features, there are important choices to be made. A design can be the subject of a design patent, copyright, and/or trademark all at the same time, but there are trade-offs to each type of protection, and they can serve different purposes. If your design is more of the “applied art” type of design, copyright protection is likely the most cost effective and appropriate, although in some respects it is a weaker right than a design patent. A design patent would be suitable for both applied art and industrial design subject matter, but the cost is significantly greater and the protection does not last as long. If the nature of the design is primarily artistic and is likely to have economic viability beyond a 15-year design patent term, copyright is a great option.

Where protection is needed quickly to keep competitors at bay, copyright is the fastest since it requires no registration for the design to be protected. A design patent provides stronger protection and covers more design subject matter, but is slower to obtain since it can take the Patent Office a year or two to fully examine and issue the patent. Thus, if the subject matter would be copyrightable and time is of the essence, it may be sensible to seek copyright and design patent protection for the same design. Including the copyright © symbol and/or a “Patent Pending” mark will provide additional deterrence to keep competitors away while the design patent remains pending.

Trademark protection is something that will infrequently be sought for product designs since most of the time a product design is intended only to be a product design and not a brand. In those rare instances where a product design is intended to serve as a trademark, building up acquired distinctiveness fast must be the focus because without acquired distinctiveness there are no trademark rights in a product design. Whether asserting common law rights or trying to get a federal trademark registration for the product design, proof of acquired distinctiveness will be crucial. Since one of the best ways to attain such acquired distinctiveness is to have a period of exclusivity using the design in commerce, one helpful way to speed up the process is to file a design patent application and/or copyright application before starting to build up the acquired distinctiveness. Again, including the copyright © symbol and/or a “Patent Pending” mark will provide additional deterrence while the design patent remains pending. This strategy can keep competitors out while sales and marketing efforts help the product design become associated with a brand by consumers. A trademark registration application is less costly than a design patent application, and typically makes it through the examination process more quickly.

24.7 Conclusion

There are many more complex considerations when setting an intellectual property strategy, but understanding the basic rules, requirements, and pitfalls discussed above is a great start for any designer to leverage into valuable competitive advantage. Having an appreciation for the various protection options will allow designers to maximize intellectual property protection and fulfill short-term and long-term business objectives.