Let’s say you came up with a novel design for a boombox or a watch.  Although this newly designed boombox or watch may be ‘inventive’ from the utilitarian standpoint, a utility patent may not protect the physical design of your product as it would protect the corresponding function.  This article considers protecting product designs that may be functional, but also have novel design aspects that may be protected in a design patent.

Do you need a design patent?  Well – how easily can a competitor emerge selling the boombox or watch with a similar design?  Would you like to be  protected from those knock-offs?  A design patent will protect your design and any ‘substantial similar’ designs like it.  The protection will last for 14 years.

In addition to securing a design patent, I would also explore protecting your product designs with a trademark.  Most people know that trademarks can protect a brand name, logo, and slogan… but, in practice, a trademark can protect most anything that identifies a source of a product or service.

When your customer picks up your newly designed product, will he immediately be able to identify that the product belongs to your brand?  As an analogy, consider this: When you look at a Lamborghini,  a Ferrari, or a BMW – you’d be able to recognize that those designs to belong to their respective manufacturers even before you saw the emblem or any marking on the vehicle.

This is where trademark law applies for product designs.  Like a design patent, trademark protection on your design will enable you in preventing competitors popping-up and selling “confusingly similar” designs.  Unlike a design patent, Trademark protection lasts for as long as your company is actively selling the product (for the lifetime of the product!).

Ideally, for unique designs, you should apply for both a design patent and a trademark.  It’s fairly inexpensive.  If you could only afford one, then start out with a design patent since those are much faster to obtain than a trademark on your design, and will allow you protection up-front as you build your brand.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

Source: Smartup Legal