Design patent protection versus trademark protection

Why compare differences between design patents and trademarks? It seems that most folks have some understanding of basic differences between utility patents and trademarks. With design patents and trademarks, the line gets murky since both types of IP are visual. A patented design is meant to be seen. Trademarks, for the most part, are also meant to be seen and recognized. If you have come up with a new design that might be worthy of a design patent, chances are that you are also thinking of trademarks. So, let’s delve into the differences between these IP rights.

Design patents and trademarks differ fundamentally in the types of protection provided. The purpose of a trademark is to identify the source of a product or service, and to distinguish that source from those of other products that do not bear the same trademark. A name or phrase cannot be trademarked in a vacuum without reference to specific products or services. Design patents protect the ornamental appearance of a unique looking design, which can be two-dimensional or three-dimensional. Design patents require registration with the USPTO whereas trademarks do not. While a mark registered with the USPTO confers exclusive nationwide rights, a trademark owner may have common law rights to use and enforce an unregistered mark.

Every trademark must always be associated with at least one particular product or service. Design patents, on the other hand, do not require any connection to a sold product. In fact, you can own a valid design patent without selling anything.

Differences in enforcing design patents vs trademarks

Determining infringement differs between trademarks and design patents. Trademark infringement requires a finding of likelihood of confusion between two marks where the accused infringer does not have earlier trademark usage (aka trademark priority). Design patent infringement requires that an accused design appear substantially similar to a patented design in the eyes of an ordinary observer.

A helpful way to think of trademark infringement is to ask whether consumers might be confused into thinking that an accused product with an allegedly infringing mark originates from, or is affiliated with, the source of the rightful trademark. On the other hand, the test for design patent infringement does not require any assessment of confusion as to the source of the product. Instead, design patent infringement requires a side-by-side visual comparison of the patented design to the accused design.

Design patent expiration vs. length of trademark term

The term of a design patent is 15 years from the issue date. A trademark, on the other hand, has no expiration date so long as the owner continuously uses the mark on the pertinent goods or services. A trademark can be abandoned by failure to use the mark.

Timing considerations in applying for design patents and trademarks

Being first is critical in filing design patent applications. A patent applicant must file first with the US Patent Office before others. If you already publicly disclosed your invention, you might not be able to apply in foreign countries, but you can still file for a US patent within the one year grace period.

Filing a trademark application earlier than others gains several advantages, including being first in line for examination by the Trademark Office. There is no hard deadline, however, for applying for trademark registration. In fact, you can use an unregistered trademark for years and still have the option to file a trademark application.

Applying for both design patent and trademark registration

Design patents and trademark rights are not mutually exclusive. Both rights may be available depending upon the nature of your product. If you are introducing a product with a unique appearance, here’s a proposed strategy and timeline:

  1. File a design patent application ideally before launching (i.e., first date of public disclosure); and
  2. File a trademark application either before or shortly after the product launch.
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.