In the United States, protection of a product design is primarily by way of design patent, while in most other countries, product design is typically protectable by a registered design right. Although the laws governing design patents and registered designs may at first glance appear to be substantially similar, these laws often vary among different countries and regions. For example, the laws governing design patents and registered designs may differ as to whether protection can only be obtained for an entire article or for particular features or parts of an article, the extent of protection available for replacement parts of an article, and the permissible ways in which a design may be presented in an application.

Ladas & Parry has extensive experience in not only drafting and prosecuting design patents within the United States, but also in drafting and prosecuting design registrations in other jurisdictions. Moreover, longstanding relationships with professional draftspersons and other IP associates from around the world enables us to serve as a single point of contact for clients interested in obtaining design registrations in multiple countries and regions.

In the United States, copyright protection for product design requires that a product have expressive (i.e., “aesthetic”) features that can be identified and exist independently of its utilitarian aspects. Architectural works, fabric design, wall paper, and jewelry are examples of the types of products that may be protected by copyright in the United States. In other countries, the limitations that exist in the United States on copyright protection for product design are less severe, and copyright protection may therefore be available more broadly. For example, the European provision for unregistered design rights permits actions to be brought for the copying of a product irrespective of its artistic merit for a period of three years from the first sale of the product. Moreover, in some countries, copyright protection and design patent protection can exist simultaneously in the same design, and prints and labels protected by trademark may also be protected by copyright.

Our extensive knowledge in worldwide IP practice enables us to provide expert advice on whether copyright protection may be suitable for a particular product design in a particular jurisdiction, and whether copyright protection may be obtained in addition to other means of protection so that comprehensive coverage can be acquired by clients interested in maximizing the protection of their product design.

In the United States, registration of trade dress, including three-dimensional trademarks for protecting product design, is possible when the design has acquired secondary meaning such that it indicates the source of the product by identifying and distinguishing the product from those manufactured and sold by others. The United States Patent and Trademark Office distinguishes trade dress for product designs from trade dress for product packaging designs, which, by contrast, can be considered inherently distinctive and need not always prove that it has acquired secondary meaning.  Under U.S. law, as well as under the law of other countries, a trademark cannot be functional; however, the definition of functionality varies from country to country. Also, in many countries, unfair competition laws may provide a remedy against those who “slavishly imitate” a product on the market, and may thus offer an alternative route to the protection of product design.

Whether a design embodies functionality such that registration of a trademark covering the design would be precluded or whether a trademark may be registered for a design that is already embodied in a utility and/or design patent are some of the issues that must be resolved when considering trademark protection for product design. Moreover, determining the best strategy for protecting product design, such as by initially seeking design patent protection and then later seeking trademark protection once a product is introduced to the public, is often a critical part of launching a new product for sale.

Ladas & Parry, as an IP law firm with extensive knowledge and experience in securing IP rights worldwide, has expertise in resolving these and other issues for clients interested in exploring whether trademark registration would be suitable for their product design in a particular jurisdiction.

Labels and logos are often the first thing a consumer sees when looking at a new product and are therefore a critical feature of a product’s design. Labels and logos are not only capable of being protected by a registered trademark, but also by a design patent or registered design, and sometimes by copyright protection. We provide our clients with expert advice on the most suitable means for protecting a particular label or logo in particular countries or regions such that the broadest and most comprehensive protection can be obtained at the best value.