It is perfectly legal to pursue simultaneous protection for a design as a trademark or trade dress and a design patent for that design. Each form of protection serves different purposes. As mentioned in previous articles, trademarks and trade dress serve to identify a source of goods, while design patents protect ornamental designs by preventing others from using, making, selling, or offering to sell an object with the patented designs. Ultimately, there is value in securing trademark protection for both the mark owner and the public at large. The mark owner gains value from the public recognition and association in the public mind with the goods and services (in the case of a service mark) provided, and the public benefits by being able to distinguish between the various sources of a good or service.

Design patents also provide value to both the patent owner and the public. The patent owner is afforded the opportunity to benefit, for the life of the patent, from their patented design for financial gain and recognition, and the public is benefited by, perhaps, being able to use the design following termination of the patent (15 years for patents filed on or after May 13, 2015). The use of "perhaps" arises from the possibility that over the term of the patent the public may have associated the patented design with the source of the products upon which the design appears. In other words, over time the patented design may function as a trademark, in which case the mark could have perpetual legal coverage—rather than the limited term granted for design patents.

The best course of action upon launching any business, product, or service is to identify any intellectual property (IP)—such as trademark, trade dress, and/or potentially patentable design—that will be used on your product and/or in the course of conducting business. Once you identify your potential sources of IP, it is advisable to perform a trademark clearance search as well as a patent search to avoid infringing someone else's trademark or patent, as applicable.

If the trademark or trade dress is cleared for use by the clearance search, then the ™ symbol should be utilized immediately in an appropriate manner in conjunction with the good or service being offered. Simultaneously, serious consideration should be given to seeking federal trademark registration(s), which, once issued, allow you to use the ® symbol to indicate your registered trademark(s). In addition, following the patent search, a design patent application should be filed for any new, non-obvious, ornamental features of the product design.

How Can Gallium Law Help?

Drafting and filing trademark registration and design patent applications can be a complex process with several nuanced rules, and we recommend working with an IP professional to draft and file these applications. The IP professionals at Gallium Law have substantial experience in trademark and design patent applications, as well as conducting trademark clearance and patent searches, and we look forward to working with you to ensure the protection of your IP. Please contact us at any time to schedule a meeting to discuss your IP and what types of protection may be best for you.

*The information provided in this article is not legal advice and should not be relied on as such. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.