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Similarities & Differences Between Trademarks, Trade Dress, and Design Patents

Posted by Isabel Fox | Mar 30, 2022 | 0 Comments


As discussed in previous articles, trademarks are words, phrases, symbols, designs, or some combination thereof used to identify and associate a good with the particular source of that good.[i] Trade dress, like a trademark, serves to identify and distinguish sources of goods and services from each other. Trade dress encompasses non-functional aspects of physical objects such as packaging design,[ii] overall product line designs,[iii] and even building designs[iv] or restaurant décor.[v] Design patents are exclusionary rights to the ornamental design of an invention, and, unlike utility patents, do not protect the functional aspects of the invention.

Similarities & Differences

While trademarks and trade dress each protect the association, in the public mind, of a good or service with a source; patented designs may also, over time, serve that function. Trademarks and trade dress, unless particularly unique and distinctive, may take some time of use to become associated in the public mind with a particular source of goods or services. The use of a marketed patented design can also serve to make that association. In that sense, a patented design can also function as a trademark and as trade dress.

Though trade dress is often considered within the scope of trademarks, obtaining trademark registrations for trade dress can be problematic in some instances. The broad scope of potential trade dress protection - extending to such features as sound, color, smell, product packaging, the look and feel of a mall kiosk, restaurant, office suite, or retail establishment, the color and shape of pill capsules, or golf course hole design, to name but a few examples – can preclude registration of a particular trade dress as a trademark. For example, it would be difficult if not impossible to obtain a registration for trade dress that encompasses the layout, menu design, decorating motif, lighting arrangements, etc. of a restaurant, though individual aspects thereof might be easily registerable. The same could be said of attempts to obtain a design patent for the layout and decorating motif of a retail store.

A significant advantage of a design patent over trademarks and trade dress, however, is that as of the date the design patent issues, the rights associated with the grant of the patent inhere in the owner. It is not necessary to use the design by manufacturing, selling, or offering to sell a product with that design, nor to take any other action to assert the patent rights to stop others from using the design. To obtain and keep legal protection, trademarks and trade dress require use by the mark owner. Without that demonstrated use, there are no rights to stop others from using the mark or trade dress.

On the other hand, an advantage trademarks and trade dress have over design patents is that the term of rights in the trademark or trade dress starts with the use of the mark. Design patent rights do not begin until the patent issues – if ever – which can take 18 months or longer after filing an application.           

Design patents and federally registered trademarks offer protection in the United States throughout the term of the patent or as long as the trademark registration is valid, respectively. Trademark and trade dress protection under common law is geographically limited in scope, but is perpetual for as long as they are being properly used.

A design patent can enhance the scope of protection for a design over that of a trademark registration because it is not limited by the trademark classification system of the USPTO. For example, suppose a trademark registration is granted for a new trade dress design of a household container in Trademark Class 21, which is specifically designated for “household utensils.” Such registration may not preclude someone from using that same design for containers holding pesticides or toxic chemicals (i.e., containers not included within Class 21). However, a design patent would prevent such use on a pesticide container because the patent would be applicable generally to any container of the same design, regardless of what the container held. Furthermore, during the 15-year exclusive use term of a design patent, the public may come to associate the mark (i.e., the design) with the patent owner as a source of product with that design. Such association may help facilitate the registration of the design as a trademark via the path of acquired distinctiveness, which was discussed in more detail in this previous article.

All three forms of intellectual property may be licensed to others for use or outright sold to other parties. For example, franchisors, such as fast-food restaurants, often include licenses to trademarks and trade dress in their franchise agreements.

If an infringement of a trademark, trade dress, or design patent should occur, there are remedies available under federal, state, and common law depending upon the particular circumstances and the registration status of the trademark or trade dress.

How Can Gallium Law Help?

The intellectual property (IP) professionals at Gallium Law are here to help you protect your IP in the most robust ways possible, including trademark, trade dress, and patent protection. We can work with you to register your trademarks and trade dress, as well as take you through the design patent process from start to finish. 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.

[i] “Trademark” is defined at section 45 of the Lanham Act (also known as the US Trademark Act of 1946) as follows:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof—

(1) used by a person, or

2) which a person has a bona fide intention to use in commerce and applies to register on theprincipal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

[ii] E.g., the distinctive spotted boxes used by Gateway, Inc. to package computers for transport.

[iii] Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (For example, while one cannot claim trade dress in the overall design of a children's clothing line, since that overall design is functional and in any event in the public domain, the particular arrangement of  shapes, colors, and materials in the clothing line may be protectible as trade dress.).

[iv] The trade dress design of the Empire State Building is protected as a trademark by several U.S. trademark registrations: U.S. Trademark Reg. No. 2,411,972, No. 2,413,667, No. 2,429,297, and 2,430,828.

[v] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).

About the Author

Isabel Fox

Isabel Fox is a registered patent agent and has been with Gallium Law since 2018. Her practice largely revolves around utility and design patent prosecution; including conducting patent landscape searches, drafting patent applications, and responding to Office Actions issued by the USPTO...


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