Many brand owners are familiar with the value of registered trademarks, which safeguard the goodwill cultivated between mark holders and consumers by reducing confusion as to the source of the associated goods. However, owners may not appreciate another type of intellectual property right that can complement their trademark portfolios: design patents. Below is an overview of the potential benefits of filing design patent applications to protect two types of designs: trade dress and graphical user interface designs.

a. “Trade Dress” Product Designs

A trademark that protects the “look and feel” of a product or its packaging is commonly known as trade dress. Apparel, automobiles, electronics, buildings, and even pizza boxes are examples of product designs that may be granted trade dress protection if they serve a source-identifying function in the minds of consumers. To be registrable, trade dress must be 1) non-functional (defined under trademark law as essential to the use or purpose of the article or affecting the cost or quality of the article) and 2) distinctive (i.e., identifying and distinguishing the relevant goods or services).

In Wal-Mart Stores, Inc. v. Samara Bros.,Inc., the Supreme Court held that product design (unlike packaging) cannot be inherently distinctive. Accordingly, product design owners cannot secure trademark registration on the Principal Register until the design achieves acquired distinctiveness, also known as secondary meaning. A trademark is deemed to have acquired secondary meaning when the mark serves primarily to identify the source of the product, rather than the product itself.

A design patent’s 15-year term can help brand owners exclude others from making or using products that are substantially the same as the patented design during the five years of substantially exclusive use typically viewed as the benchmark timeframe required to demonstrate acquired distinctiveness. Securing a design patent allows owners to stake a claim in trade dress while they acquire secondary meaning through use and advertising. Furthermore, ownership of a design patent is not regarded as evidence of a design’s functionality, as is the case with utility patents.

To be patentable, a design must be 1) ornamental (i.e., not merely dictated by its function), 2) novel (i.e., not publicly disclosed more than a year before a design application is filed and not substantially the same as a prior design), 3) non-obvious (i.e., would not result from an obvious combination of existing designs to a designer of ordinary skill), and 4) sufficiently described to permit a designer of ordinary skill to make and use the design. In the early life of a trade dress design, these criteria may be easier to meet than acquired distinctiveness. 

b. Non-Source Identifying Graphical Designs

In August, the Trademark Trial and Appeal Board issued a precedential opinion in In re Joseph A. Stallard, holding that video game characters are not per se registrable without a showing that they function as trademarks by distinguishing their source. The TTAB affirmed the refusal to register the applied-for mark below, agreeing with the Examining Attorney that the mark as shown on the specimen of record merely identified one character in a video game, rather than distinguishing the source of the Applicant’s goods.

Drawing and Specimen Excerpt of U.S. App. No. 97115036, for the character “Maria” from the video game Target of Desire: Episode 1
An example of a video game character that has been found to function as a trademark is the Pac-Man Ghost, protected by U.S. Reg. No. 6073167

Modern electronic games, operating systems, and other software programs are often comprised of innumerable graphical designs, not all of which will meet the source-distinguishing requirement to qualify for trademark protection. To protect the considerable time and money required to develop those designs and build a valuable design language, brand owners can turn to design patents. A graphical user interface (“GUI”) that fails trademark law’s source identification requirement can still form the basis of a design patent, as in the examples below:

The outer broken lines in each example show an unclaimed electronic device or portion thereof, to satisfy the requirement that patented designs be applied to an article of manufacture. The patent on the left also shows how broken lines and “ghosting” techniques can be used to exempt parts of the GUI from the claim scope of the patent.

The examples above demonstrate how brand owners can use design patents to safeguard intellectual property that does not meet, or has not yet met, the requirements for trademark protection.

This article appeared in the September 2023 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.

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