Design Protection


For many companies, product design ownership is key to gaining or maintaining competitive advantage. Knowing the best intellectual property avenue to use for product design protection, however, can be complicated and even daunting. Design patents, product configuration trade dress, industrial designs, and even copyrights may provide for potential protection. These various intellectual property “tools” are utilized less often for designs than they are for other types of IP assets, such as traditional word/logo trademarks or utility patents.

How Crowell & Moring Can Help

Our lawyers assist clients with obtaining, managing, and enforcing design patents, trade dress, copyright, and other design protection frameworks. Lawyers in our trademark, patent, and copyright practices work together to recommend and assist clients in implementing appropriate strategies and solutions for design protection. We also have substantial experience before the International Trade Commission with regard to Section 337 matters. And because the ITC provides for a shorter proceeding than bringing a case before a district court, companies are increasingly turning to the ITC to enforce their designs and other IP, especially with regards to preventing the importation of counterfeit goods, imitation products that infringe design protections, and other abuses. Our lawyers with experience in these diverse strategies and venues seamlessly work together to coordinate and execute our clients’ design protection objectives.

Because the need for—and importance of—protecting designs continues to grow as companies focus on differentiating their design “brand” from competitors, understanding the various levers available to protect designs has become mission-critical. And, although the courts have recently discussed the interplay between trade dress and patents (both utility and design), the optimal IP protection for your key designs may still be a bit unclear and confusing. Crowell & Moring can provide clarity and strategic advice about which tools in your IP toolkit may best serve your goal of design protection. Our interdisciplinary approach to handling design protection matters also allows us to effectively train and advise our clients’ patent and trademark in-house counsel and support personnel on how to communicate and collaborate for effective product protection throughout the development and commercial life cycle. This includes coordinating strategy and preparing design protection materials for use in other jurisdictions around the world, many of which have different formal and/or substantive requirements that must be addressed early to preserve enforceable rights under the relevant local laws for each such location.

More About Design Patents

Design patents in the U.S. have been around since 1842, and were created to protect the ornamental design of articles of manufacture. The process for obtaining a design patent is often faster than for obtaining a utility patent. Design patents are typically less expensive and time-consuming to obtain compared to utility patents, and they provide owners with exclusive rights for 15 years from the date of issue in the U.S. and most non-U.S. jurisdictions. Moreover, a design patent can be a powerful enforcement tool against knock-offs readily mistaken for the patented design, and damages can be significant—up to the total profits of the infringer. Provided they are pursued before public use or sale, design patent rights can readily be extended to other jurisdictions around the world. In addition, obtaining a design patent can be a good first step in gaining product configuration trade dress protection.

Product configuration trade dress provides rights in the “source-indicating” aspects of product design as long as those design elements are distinctive and non-functional. Although challenging to obtain in the first instance, as both distinctiveness and non-functionality can be difficult to prove, trade dress rights can provide owners with the advantage of potentially perpetual rights throughout the product life of their key designs.

Industrial Design protection is a preferred tool for IP protection in Europe as the rights are relatively easy and inexpensive to obtain, and those rights have proven effective in enforcement actions. Moreover, design owners are allowed up to 100 design variations in one international application, which can serve as a powerful deterrent against knock-offs and may prove advantageous in enforcement actions.

Copyright, which protects original works of authorship fixed in a tangible form, can provide exclusive rights in the pictorial, graphic, or sculptural features of product designs when those features can be conceptually separated from the useful aspects. Copyright registrations are relatively easy and inexpensive to obtain and provide long periods of exclusivity. Further, statutory damages for copyright infringement are a strong deterrent to those who consider copying design elements protected via copyrights registrations.