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Trade Dress and Design Patents Provide Overlapping Protection for Your Brand

on Tuesday, 23 October 2018 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

When launching a new product line in your business, a key consideration and concern is protecting the brand surrounding the new product. The most obvious way to establish protection over a brand is through a trademark filing, which extends to protect the name and logo of the product. But consider an instance in which the product has distinct features, conspicuous packaging, or just an overall unique image and appearance. For example, the iconic Coca-Cola glass bottle is an example of trade dress for a product. The unique shape and appearance of the bottle creates an automatic consumer association with Coca-Cola. Therefore, the ability to protect the trade dress surrounding a product, such as the Coca-Cola bottle, is valuable to a business.

The United States Patent and Trademark Office permits registration of trade dress, which constitutes a “symbol” or “device,” and generally is taken to cover the “total image and overall appearance of a product, or the totality of the elements, and may include features such as size, shape, color or color combinations, texture, and graphics.” Among other requirements, a trade dress registration requires that the applicant demonstrate that the trade dress is “distinctive” of the underlying product. This means that the trade dress of the product must have acquired what is referred to as “secondary meaning” within the Trademark Act: where consumers will automatically associate the product’s trade dress with the applicant’s brand or business. Distinctiveness is presumed after a five-year period of using the trade dress in connection with the sale of a product, but for a new product establishing distinctiveness may prove difficult. This is where a design patent becomes useful.

Design Patents protect the ornamental design, but not the functionality, of a product, making the design patent very similar in protection scope to that of trade dress. However, the requirements to obtain a design patent are distinct from those of trade dress, and importantly, do not include the requirement of distinctiveness. Rather, a design patent must be non-obvious in light of existing patents and products. This requirement of non-obviousness eliminates the need to show that the product has acquired distinctiveness among consumers.

So, obtaining a design patent that covers the ornamental features of your product gives protection to your brand in the interim period before the product acquires distinctiveness within the meaning of the Trademark Act. Leveraging the protection of a design patent with subsequent trade dress registration provides maximum protection to the brand of your new product.

AriAnna C. Goldstein


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