Design Trademark vs Patent Protections

[mplucker]

What is the name of your state (only U.S. law)? IL

I would like to know the protections afforded by a design trademark and at what point should something else be considered, such as a patent. Without going into my particular situation, let's just say that, hypothetically, I'm creating a new design for a beer bottle, a shape that is unique and nothing quite like it exists on the market. If I want to prevent competitors from creating and selling a bottle with the same shape, would a design trademark be sufficient to prevent this occurrence? I only care about the final shape of the bottle and not the manufacturing process by which the bottle is created. I'm unclear as to the protections afforded to a design trademark vs. a design patent and in what cases should each one be considered.

Thanks.

 

[quincy]

What is the name of your state (only U.S. law)? IL

I would like to know the protections afforded by a design trademark and at what point should something else be considered, such as a patent. Without going into my particular situation, let's just say that, hypothetically, I'm creating a new design for a beer bottle, a shape that is unique and nothing quite like it exists on the market. If I want to prevent competitors from creating and selling a bottle with the same shape, would a design trademark be sufficient to prevent this occurrence? I only care about the final shape of the bottle and not the manufacturing process by which the bottle is created. I'm unclear as to the protections afforded to a design trademark vs. a design patent and in what cases should each one be considered.

Thanks.

By "design trademark," I assume you are talking about "trade dress." The distinctive Coke bottle shape is offered trade dress protection, for example (and a design patent). A design patent could be applied for if the shape is new, original and ornamental, and the shape is not to improve the functionality of the product (a utility patent could cover the functional aspects).

Trade dress and design patents both can protect your unique design from use by others, and both trade dress and design patents can be easy to obtain for a product with a distinctive shape.

But the process for obtaining a patent can be time-consuming and costly. And trade dress must not only have the distinctive shape to gain protection but its use by others must lead to consumer confusion (or the likelihood of confusion). The shape must identify the product the way a trademark does.

I recommend you take your specific product to an IP attorney to discuss the pros and cons of both trade dress protection and patent protection, and to see which fits your product best.

 

[mplucker]

Thanks for the response. That helps clarify my confusion between the trade dress and design patent.

 

[quincy]

There are more differences, of course, than I mentioned, which is why I recommend you sit down with an IP attorney who can take a look at your product, detail all of the differences for you, and then advise you accordingly.

One difference I did not point out is the time period for which the design can be protected under the laws. For a design patent, the shape would have protection for 14 years before the patent expires. With trade dress and under trademark law, the shape can be protected from infringers for as long as the product is in use in commerce, so there is potentially protection forever.

Good luck with your creation, mplucker. Thank you for the thanks.