Protecting the “look” of Your Products
Some products aren’t patentable in the conventional sense. For instance, a new handgun might use proven concepts and mechanisms, even if it’s designed from the ground up. Sometimes, inventors are surprised at the kinds of innovations that can be patentable, but in some cases, there isn’t anything patentable (I’m always happy to give my opinion on that question).
Design Patents – Knock-off Protection for Distinctive New Products
Even new products without functional innovations can still be protected when they have distinctive designs. Even the non-functional and ornamental aspects of a design can be protected. Design patents are a good way to protect against knock-offs and similar designs, and are a relatively low-cost solution. They’re not as powerful as regular (“utility”) patents, because they don’t protect the functional concepts, but they can be a smart way to protect new products that have a distinctive look. At the very least, they force your competitors to create their own designs that look different from yours.
Sometimes, a product may have patentable functional features, and also a distinctive design, so we can protect it both ways.
Trade Dress – Protection for Recognized Designs
When a product has been on the market more than a year, it’s too late for a design patent. But older designs can be protected under trademark law if they’ve come to be recognized as associated with the company producing them. This is known as “trade dress” protection. Familiar examples are the shapes of Channel perfume and Coca-Cola bottles. Even without the brand name, they are recognized by consumers. Most gun enthusiasts can recognize the shape of a Glock pistol, even a new model they’ve never seen before, because Glock has a familiar shape and design themes. This is “trade dress” (which I think of as a “design trademark.”)
The good news about trade dress is that it never expires as long as it keeps being used, and that it can be used to protect older designs that it’s too late to protect with a design patent. The bad news is that showing that your design is recognized by consumers is a high hurdle. Trade dress registration isn’t just a rubber stamp, it’s a process that includes showing evidence of the success of the product, and even potentially market survey evidence showing consumer recognition. You can imagine a survey of gun owners would show that they recognized the shape of a Tommy gun, but might not be able to identity the brand of a revolver, even if it’s a Smith and Wesson.
Because design patents are relatively low cost and straightforward to secure, I often advise clients releasing new products with distinctive designs (such as a new pistol) to seek the benefits of design patent protection. It’s a good way to protect against knock-offs, and forces your competitors to creating their own designs that are less likely to be confused with yours. It can sometimes make sense to file a design patent application for just about every new product. And if more than a year has gone by, trade dress may be an option.
Design protection usually requires a case-by-case analysis, so give me a call to discuss what kind of protection might be best for your new (and old) products.