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Protecting and enforcing design rights: United States

By Christopher V Carani and Dunstan H Barnes, McAndrews Held & Malloy, Ltd

Legal framework

The appearance of an object or article of manufacture may be protected in the United States under three separate, but sometimes overlapping, IP regimes:

  • design patents;
  • trade dress; and
  • copyright.

As all three rights aim to protect the outward visual appearance of a product, none protects any underlying functional purposes, qualities or characteristics of the product. Understanding the intricacies of and interplay between these rights is critical to developing and enforcing a strategic design IP portfolio in the United States.

Design patents most closely resemble rights afforded in other jurisdictions under the name ‘registered design’, ‘industrial design’ or ‘design model’. Design patents are governed by the patent law statute, codified in 35 USC §§ 101 and following. Significantly – and unlike in almost all other design right systems – the US Patent and Trademark Office (USPTO) conducts a full substantive examination of a design application, including a search for and analysis of relevant prior art. Design patents must satisfy many of the same requirements as utility patents, including novelty, non-obviousness and sufficient disclosure. In contrast to utility patents, which protect functional ideas and concepts, design patents protect the outward aesthetic appearance of products.

Protection for the appearance of a product may additionally arise under trade dress laws, which are nested within US trademark laws. Trade dress rights may arise when the distinctive, non-functional appearance of a product serves as a source identifier. Trade dress rights can arise under common law through use in commerce and can also be formalised through registration with the USPTO. Like trademark protection, trade dress protection lasts for as long as the product is used in commerce. Because trade dress rights can potentially exist in perpetuity, the requirements of distinctiveness and non-functionality are stringently applied.

Copyright generally does not extend to protect useful or functional products (eg, a lamp or belt buckle). That said, protection may be available for any artistic aspects of the useful product that are physically or conceptually separable from the underlying product. In contrast to design patents and trade dress rights, copyright protection protects only against third-party copying; independent creation is a valid defence. Rights in a copyrightable design arise as soon as the design is fixed in a tangible medium of expression, but the design must be registered with the Copyright Office in order to be enforced against an infringer.

Unregistered designs

There is no protection under the US patent law statute for unregistered designs. However, a designer may have unregistered rights under the trade dress and copyright regimes.

Trade dress

Unregistered trade dress rights may arise under state or federal law. Under federal law, the basis for protection of unregistered trade dress rights is Section 43(a) of the Lanham Act (15 USC § 1125(a)), which provides protection against any person that uses in commerce a design in such a way that the use “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person”. Unregistered trademark rights are established not at the USPTO, but rather through an enforcement proceeding. The party asserting trade dress rights bears the burden of establishing the rights.

Copyright

As soon as a copyrightable design is fixed in a tangible medium of expression, it is automatically protected under copyright law. Although copyright protection does not extend to useful articles (eg, clothing, furniture, machinery, dinnerware or lighting fixtures), it may extend to any pictorial, graphic or sculptural authorship that is physically or conceptually separable from the utilitarian aspects of the underlying useful article. For example, while a chair is considered a useful article, any intricate woodworking or carvings on the chair would be protectable. However, to be enforced in court, a copyrightable design must first be registered.

Registered designs

Design patents

Design patents protect the ornamental appearance of an article of manufacture. The ornamental appearance of an article includes the article’s shape or configuration, the surface ornamentation applied to the article or both. A design patent must be novel, non-obvious and ornamental. For novelty, prior art will be considered as any disclosures that were publicly available prior to the design patent application’s effective filing date. As a limited exception (grace period), disclosures made by the inventor one year prior to the effective filing date will not be considered prior art. Designs that would have been obvious to a designer at the time of filing the design application will not be patentable.

Lastly, a product appearance must be ornamental. Notably – and unlike under trade dress law – the design need not be non-functional. A product appearance that is dictated solely by the product’s underlying technical function is said to lack ornamentality and is thus not protectable under the design patent statute. The policy behind the requirement is to guard against the rare situation in which a design right on a product’s appearance would also necessarily monopolise the product’s underlying function (eg, a ball bearing). Notably, the standard is not merely that the design is dictated by the product’s underlying technical function, but rather is much more restrictive – that the design is “dictated solely” by the product’s underlying technical function. Thus, as long as there are alternative appearances that can achieve the underlying technical function of the product, the appearance will not be deemed to be dictated solely by the underlying technical function of the product.

Trade dress

Applicants can formally register their trade dress with the USPTO. From a strategic standpoint, it is often preferable to establish trade dress rights pre-emptively in the non-adversarial context of a proceeding before the USPTO, rather than waiting to establish the rights in litigation. As part of registration, the applicant must show that the design either is inherently distinctive or has acquired distinctiveness (secondary meaning). In addition, the applicant must show that the trade dress is non-functional, which requires that the trade dress not be essential to the use or purpose of the article or affect the cost or quality of the article.

With respect to distinctiveness, the law distinguishes between trade dress for product packaging versus trade dress for product configuration. Distinctiveness in product packaging may be shown by establishing that the design is inherently distinctive or by showing acquired distinctiveness. In contrast, product configuration (ie, the shape and appearance of the product itself) cannot be inherently distinctive and thus requires a showing of acquired distinctiveness.

Copyright

Registration is required to enforce the copyright. Registration also provides for statutory damages and the possibility of attorneys’ fees.

Procedures

Domestic design patent applications

To obtain a design patent, an applicant must submit to the USPTO an application that includes:

  • images (eg, line drawings, computer-aided design drawings or photographs);
  • figure descriptions;
  • a single claim;
  • an inventor’s oath or declaration; and
  • associated filing fees.

Although dependent on the filing entity’s size, the filing fees (ie, search fee, filing fee and examination fee) are currently $760 for a large entity. Discounts are available for smaller entities.

The images may be either in black and white or in colour. Partial designs are permissible. Broken lines are used in the images to illustrate environment or portions of the product that form no part of the claimed design (see Figure 1). Different styles of broken lines (eg, dot-dash lines) may be used – for example, to indicate boundaries, enlargements or areas of indeterminate length.

Figure 1: D676,312 (threads of a screw)

Icons and graphical user interfaces (GUIs) may be protected, as long as they are associated with an article of manufacture (eg, a display screen; see Figure 2). GUIs may be protected in a static form (as a single figure) or animated form (as a series of transitional images; see Figure 3).

Figure 2: D690,718 (display screen with colour GUI)

Figure 3: D765,703 (display screen with transitional GUI)

Most often, there is little text in a design patent application other than the required figure descriptions and an explanation of the meaning of any broken lines used in the images.

Design patents have a single claim, which is a statement claiming the ornamental design for the specific article of manufacture, as shown and described. The scope of protection of the design patent is defined by the images.

The USPTO will conduct a substantive review of the application. As of April 2016, the average timeframe is 13.7 months from filing until receiving a first office action and 19.7 months from filing until issuance.

A design patent filed on or after May 13 2015 lasts for 15 years from the date of issuance (design patents filed earlier last for 14 years). No maintenance fees apply over the life of the design patent.

Continuation and divisional practice is available in the United States. For example, at any time while a parent application is pending, an applicant can elect to pursue a different scope of protection in a continuation application by converting solid lines into broken lines or vice versa (see Figure 4).

Figure 4: Left – d596,616 (earphone, parent); right – d675,194 (earphone, child)

Since utility patents and design patents derive from the same statute, a design patent application may claim priority to a non-provisional utility patent application, provided that the drawings in the utility patent application sufficiently disclose and describe the claimed design and vice versa. Notably, a design patent application may not claim priority to a provisional application.

Hague international design applications

Since May 2015 it has been possible to designate the United States when filing an international design application under the Hague Agreement. A Hague filing may be filed indirectly with the USPTO or directly with the International Bureau. Under either route, the application will be formally examined by the International Bureau to confirm that it complies with the applicable formal requirements.

After review, the International Bureau will accord the international design application a date of international registration and publish the registration. The applicant may request immediate publication after registration or deferred publication of up to 30 months from the filing date (or priority date, if applicable). Deferment is not possible if a designated country does not permit deferred publication. Under US law, there is no formal mechanism to defer publication. Normally, a US design patent application will be published only if it proceeds to issuance.

Following publication, the USPTO will review the international design application under US patent law. If the USPTO determines that the applicant is not entitled to a design patent under US patent law, it will send notification of refusal to the International Bureau. The applicant may then reply directly to the USPTO. The USPTO can be strict in its drawing requirements. As such, there are certain suggestions available for overcoming issues with drawings, which should ideally be addressed before the initial Hague filing to avoid subsequent issues with potentially introducing new matter. Firms with experience of the issues that arise during prosecution before the USPTO tend to be in the best position to assess how best to proceed.

Trade dress registration

To register a trademark, including a trade dress registration, an applicant must submit to the USPTO an application and associated filing fee. Depending on the application and how it is filed, the filing fee is typically between $225 and $375. The USPTO will examine the application to ensure that it meets the minimum filing requirements before assigning an application serial number. An examining attorney will then conduct a substantive review of the application, which in the case of a trade dress application will likely include consideration of the asserted distinctiveness and non-functionality of the trade dress. Depending on the findings, the USPTO may decide that the mark should not be registered and thus issue one or more office actions. If there are no objections to registration or the applicant can overcome all outstanding objections, the examining attorney will approve the mark for publication in the Official Gazette. If no parties oppose the registration, the mark will proceed to registration.

Copyright registration

To register a copyright in a design, an applicant must submit to the Copyright Office an application, the filing fee and a deposit of a copy of the work. Depending on the application and how it is filed, the filing fee is typically between $35 and $85. The Copyright Office will examine the application and deposit to ensure that they comply with the copyright rules and regulations. If they do, the Copyright Office will assign a registration number and issue a certificate of registration.

Enforcement

Design patent claim construction

A design patent protects only the particular ornamental design claimed by the inventor and allowed by the USPTO. It protects the overall ornamental visual impression of the claimed design. It does not protect the broad general design concept of the accused product. To decide whether an accused infringer infringed a design patent and whether the patent is valid, it is essential first to understand what the claim of the design patent covers.

The scope of the claim is defined by the drawings in the design patent, not just by one feature of the claimed design. The scope of the claimed design encompasses its visual appearance as a whole and in particular the overall visual impression that it creates. All features of the design patent as a whole must be considered, not merely isolated portions of the claimed design. Since a claimed design is better represented by its drawings than a description, a detailed verbal claim construction should not be attempted. However, any features shown in broken lines in the drawings and described in the specification as disclaimed should be excluded from the claimed design. Failure to show features in broken lines signals inclusion of such features in the claimed design. The drawings are supplemented by the associated description and prosecution history of the design patent.

Design patent infringement

The applicable test for infringement – the ‘ordinary observer’ test – dates back to the 1871 Supreme Court decision in Gorham v White, as confirmed by an en banc Federal Circuit in 2008 in Egyptian Goddess v Swisa. The ordinary observer analysis involves determining whether the overall appearance of the patented design is substantially the same as that of the accused design in view of the prior art. Satisfaction of the ‘point of novelty’ test is no longer required.

Ownership changes and rights transfers

Rights in a design patent vest initially with the inventor of the design patent, but are freely assignable to other individuals or entities. Assignments should be recorded with the USPTO. Rights holders may also license all or some of the bundle of rights in the design patent to other entities.

Similarly, copyright initially vests with the author of the copyrighted work, but may be freely assigned or licensed to other individuals or entities.

Trade dress rights are freely assignable, but in order to maintain the rights, commercial use of trade dress must continue.

Related rights

Apart from design patent, copyright and trade dress rights, consumer fraud violations under state law can be asserted where an accused entity is engaged in conduct that would lead a consumer to believe that he or she is purchasing goods from a different entity and this confusion is caused through the actions of the accused entity. Such a situation can arise through deliberate counterfeiting, but also in commercial situations where a retailer is selling confusingly similar goods interchangeably.

McAndrews Held & Malloy, Ltd

500 W Madison

34th Floor

Chicago IL 60661

United States

Tel +1 312 775 8000

Fax +1 312 775 8100

Web www.mcandrews-ip.com

Christopher V Carani

Partner

ccarani@mcandrews-ip.com

Christopher V Carani is a partner at McAndrews Held & Malloy, Ltd. He practises in all areas of IP law, including patents, designs, trademarks and copyrights. He is a well-recognised authority in the field of design law, having published and lectured extensively on the topic. He has significant experience leading design litigations and has worked with clients to secure over 2,000 design rights in both the United States and over 70 countries worldwide. He is currently on the faculty of Northwestern University School of Law as an adjunct professor teaching IP law. He obtained his JD from the University of Chicago Law School. He also holds a BS in engineering from Marquette University.

Dunstan H Barnes

Associate

dbarnes@mcandrews-ip.com

Dunstan H Barnes is an associate at McAndrews Held & Malloy, Ltd. Although he practises in all areas of IP law – including designs, utility patents, trademarks and copyrights – he specialises in design law, and has considerable experience in drafting and prosecuting design applications and conducting design-focused investigations. He graduated magna cum laude from Chicago-Kent College of Law, where he was president of the Intellectual Property Law Society, a notes and comments editor for the Chicago-Kent Law Review and a submissions editor for the Journal of Intellectual Property. He holds an MEng in materials science and metallurgy from the University of Oxford and a PhD in biomaterials science from the University of Cambridge.

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Issue 70