Low Tech IP: Design patent and trademark protection

Design patent and trademark protection for low tech products

So you’re not in the high tech industry. Is IP out of the question then? You may be encouraged to know that IP is not only for high tech products. Low technology products can also have protectable IP in design patent and trademark protection.

While basic differences between utility patents and trademarks are known to many, the line gets murky since between design patents and trademarks. Both IP rights are visual. A patented design is meant to be seen. Trademarks, for the most part, are also meant to be seen and recognized.

What’s the difference between a design patent and trademark?

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 as applied to a product, 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 must also be tied to a product, also known as an article of manufacture. Maintaining a trademark requires ongoing usage whereas design patents can remain valid without any sales of the patented products.

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 continues to use the mark on the pertinent goods or services. A trademark can be abandoned by failure to use the mark with an intent not to resume usage.

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.

Need IP protection for your product?

Reach out to US patent and trademark attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you gain valuable IP rights. Our firm of intellectual property attorneys can help craft an IP strategy that fits your particular product and budget.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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