Rejected Trademark Application? Get a Design Patent Instead
The path to registering a trademark can be strewn with landmines. When your trademark application faces difficult rejections, would a design patent make more sense? Before making that decision, keep in mind the 1-year grace period for filing US patents.
Trademark vs. Design Patent Protection: 2D vs. 3D
A brief summary of the differences between trademarks and design patents would help to set the stage. Trademarks typically refer to words or logos which can be displayed on products, packaging or marketing materials. Trademarks, therefore, are two-dimensional in most cases.
Design patents, however, are typically three-dimensional. Unless you’re dealing with a GUI or a two-dimensional graphic design on a product, a typical design patent would cover the three-dimensional of a physical product. You will often see black-and-white line drawings in a design patent that cover the shape of a product.
This 2D vs. 3D distinction is critical when considering a design patent. You will need to show your two-dimensional trademark on a three-dimensional product if you decided to apply for a design patent.
How do you avoid limiting your design patent to a single article of manufacture?
Astute readers will promptly recognize a design patent limitation absent in trademark registrations. By showing the three-dimensional shape of a product, will your design patent limit your protection to only products bearing a similar shape? This is where broken lines in the design patent drawings can play a strategic role. The smart use of dashed lines can broaden the scope of your design patent so that you are not limited to a specific product shape.
What are the different rejections to overcome in registering trademarks vs. patenting designs?
A typical trademark application may encounter rejections for being too similar to a registered trademark or prior trademark filing. In addition, words that describe a characteristic of the covered goods or services may get rejected for being merely descriptive. Such refusals result from the purpose of a trademark which is to indicate the source of a product.
Design patents, however, do not serve a source-indicating purpose. Therefore, what might be unregistrable as a trademark could possibly be protectable as a design patent.
Critical Timelines When You File a Rejected Trademark as a Design Patent
A one-year grace period applies to filing any US patent applications on a product that has already been publicly disclosed or sold. This is not an issue if an Intent-To-Use trademark application was filed for a product not yet shown to the public.
Suppose, however, you filed a use-based application covering a product that was shown a few weeks before filing. About nine months later, the USPTO rejects your trademark application by sending you an Office Action. It is now approximately 10 months since you first publicly disclosed your product. If you want to apply for a design patent, you must file before the 1-year anniversary of your earliest public disclosure date.
What are the differences in protection between trademarks and design patents?
Suppose you successfully obtained a design patent where the drawings show your trademark. What protection are you getting with this design patent? Do not assume your design patent will give you IP rights equivalent to those of a trademark registration.
The standard for trademark infringement is confusing similarity. Design patent infringement, on the other hand, relates to visual similarity. Does the accused product appear substantially similar to your design patent to the eye of an ordinary observer?
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