Protecting Your Product Design…Forever

By Marvin N. Benn

Intellectual property, no matter how intangible it may seem, is a valuable asset that should be protected. In fact, a company's unique product designs are likely a key element in its ongoing commercial success. With the proper strategy, involving both patents and trade dress registration, smart businesses can protect their designs against copying…forever.

There are two types of patents available in the United States. A utility patent, which has a 20-year term, protects the functional and structural features of a product without regard to how it looks. Design patents, on the other hand, are enforceable for 14 years from the date they are issued and protect the ornamental features of the product without regard to how it functions. To be eligible for a design patent, these features must be novel and non-obvious. Once the patent expires, the design is dedicated to the public, which gives competitors the right to freely practice the invention and copy the design.

Trade dress identifies a producer or the source of manufacture of a product. It also protects exclusive rights over packaging, labeling or display of a product, as well as the total image of a product, such as size, shape, color and graphics. To obtain trade dress protection, the product design feature must be non-functional and inherently distinctive or have acquired secondary meaning through extensive sales and/or advertising such that when consumers encounter the product, they associate it with only one source. A feature is non-functional if it is ornamental, arbitrary or incidental to the overall functional features of the device. Although trade dress is protectable under common law, it can also be registered under the Lanham Act as a trademark, which is renewable every 10 years.

In order to ensure continuous protection of its product designs, a company should consider obtaining a design patent and federal trade dress protection simultaneously. This strategy, while not an absolute guarantee, provides the opportunity for ongoing protection because the trade dress registration is renewable indefinitely, even after the design patent has long since expired. That means competitors hoping to exercise their right to copy a product after a patent has expired should conduct a careful investigation and analysis to uncover any trade dress protections that may prevent such copying.

Marvin N. Benn, Chair of the firm's Intellectual Property practice group, handles all types of IP litigation and protection. He has a broad consulting and license-drafting practice with an emphasis on matters related to patents, trademarks, and computer hardware and software. Marvin can be reached at 312.521.2770 or mbenn@muchshelist.com.

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The Litigation & Counseling Alert contains material of general interest and should not be construed as legal advice or a legal opinion on any specific facts or circumstances. Under professional rules, this alert may be regarded as advertising material.