Non-Functional IP: Design Patents, Trademark/Trade Dress, and Copyright

The non-functional aspects of products, packaging, displays, store décor, features of software and electronics that are seen by a user, and other items can be protected by one or more of three overlapping types of IP in the U.S.:1 design patents, trademark/trade dress, and copyright. These protections should be utilized strategically, preferably with the ongoing assistance of skilled legal counsel.

Design Patents

Design patents can protect designs that are embodied in or applied to an article of manufacture such as products, packaging, displays, and graphical user interfaces and animated images embodied in or applied to an article of manufacture (e.g., operating system or cellphone). Specific examples of issued design patents are this handheld electronic device, this beverage condiment dispenser, and this graphical user interface.

Only an ornamental design can be claimed by a design patent, although the design may applied to or embodied in an item in which the ornamental and functional aspects are inseparable. Also, to be patented a design must be new and non-obvious over the prior art, which applies much as it does to utility patents.2 And the design patent application must be filed within one year of the applicant’s first public disclosure or sale of an item embodying the design.

Design patents last fifteen years from their date of issuance and are usually desirable for product designs that are anticipated to have a reasonably long shelf life. They require the same type of examination as utility patents, though the time from filing to issuance is generally faster and the costs are significantly lower. Also, damages are somewhat easier to prove for infringement of design patents than for utility patents. In many situations design patents can be easier to obtain than trade dress protection.

It is possible, though ill-advised, for someone to seek a design patent without help; otherwise a registered patent attorney is required. A reputable attorney experienced with design patents should be consulted to give you the best chance of obtaining a design patent with a strong claim.

Trademark/Trade Dress

Trademark law can protect letters, words, phrases, logos, shapes, forms, colors, layouts, graphics, and various other devices used to identify the source of goods or services. The mark or “trade dress” may reside for example in or on a product itself, its packaging, associated displays, store décor, or advertising. Unlike design patents, the term of a trademark is indefinite.

Also unlike design patents, trademarks/trade dress do not require novelty – for example, you can use a trademark that someone else registered and then abandoned, if it meets the various requirements for registration. Trade dress such as a product configuration or packaging cannot be registered if it is functional, however, meaning that a feature of the trade dress is “essential to the use or purpose of the article or if it affects the cost or quality of the article.”3 A design is generally functional if it was the subject of a utility patent; conversely, being the subject of a design patent is evidence of non-functionality.

The U.S. Trademark Office has two registers: Principal, and Supplemental. The Principal Register is much more potent. To be registrable on the Principal Register, a mark or trade dress must be distinctive in relation to the goods or services. There are two types of distinctiveness: inherent, and acquired.

For word marks and the like, inherent distinctiveness – and eligibility for the Principal Register – is based on whether the mark is arbitrary, fanciful, or suggestive in relation to the goods or services, as opposed to merely descriptive or a generic term for them. Generic means the purchasing public understands the term as the common or class name for the goods or services; generic marks cannot be registered on either register. Merely descriptive means the mark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Though merely descriptive marks are not inherently distinctive, such marks can be registered on the Principal Register upon proof of acquired distinctiveness. This can be done with evidence of the applicant’s prior similar trademark registrations, a statement that the mark has become distinctive of the goods or services based on at least five years of continual use, or other relevant evidence such as surveys.

As to trade dress, product configurations are usually not inherently distinctive, and it also can sometimes be difficult to prove that one has acquired distinctiveness. It is generally easier to establish distinctiveness with product packaging.

State laws generally protect unregistered trademarks, but the federal system (the Principal Register) provides exclusive national ownership and other benefits. It’s therefore usually advisable to seek federal registration, assuming there is or will be use of the mark or trade dress in interstate commerce. It is also desirable to file for incontestability after the mark has been registered for five years, as this has benefits in precluding certain challenges to the trademark’s validity. The mark or trade dress should also be recorded with U.S. Customs for various benefits.

Filing an application for federal registration of a trademark often may be handled by the applicant with some guidance from an attorney initially and subsequently when the application is acted on by the Trademark Office. For trade dress and any substantial office actions, a good trademark attorney should be enlisted to pursue the registration.

A federal trademark application can be filed before you actually use an intended mark or trade dress in interstate commerce, with what is called an “Intent To Use” application. Examination will proceed on this basis, but registration will not be made until a statement attesting to actual use is filed. Trademark examination is significantly faster than patent examination.

It is also important to ensure that you don’t infringe on other parties’ trademarks. Your mark or trade dress should not cause any mistake or deception with respect to another source of similar goods or services, and it should not tarnish or blur the distinctive nature of a famous mark or trade dress. An attorney can help you in searching and determining the likelihood of confusion or dilution of other parties’ marks.


Copyright law is available to protect original works of authorship including literary, dramatic, musical, and artistic works. This may include computer software, architecture, photographs, patterns on clothing, jewelry design, packaging graphics, and ornamental features on products. A minimum degree of creativity must be present,4 though the bar to meet that requirement is not very high. The work also must be fixed in a tangible medium to be protected.

A useful item is only protectable by copyright to the extent that its literary or artistic aspects are physically or conceptually separable from its useful aspects. In the case of graphics on packaging, for example, this separation is easy to make because the words and images on the packaging are not integral to the function of the packaging.

In order to exploit copyright protection the copyright owner must register the copyright with the Copyright Office, which is a straightforward matter of paperwork. Registration must be made within three months of first “publication” of the copyrighted material in order to receive critical benefits, and it is also advisable to place a notice of the copyright on the item. It is also important for copyright owners who are not the author of the work to have clear evidence of their ownership, such as a work for hire agreement or an assignment of rights.

The term of a copyright is the life of the author plus 70 years, or for works made for hire it is 95 years from the date of first publication.5 Once registered, a copyright does not need to be renewed. As with trademarks/trade dress, copyrights should be recorded with U.S. Customs for various benefits.

Holistic Strategy

It’s best to develop product design, IP protection, and marketing campaigns holistically. In many if not most cases, two or all three of the types of IP discussed above may be applicable and can be protected together in connection with one item. Strategy is best handled by skilled legal counsel, including a registered patent attorney if design patents are involved.

  1. This Primer does not address foreign protection. Other countries and regions generally have similar trademark and copyright systems, but many have slightly different forms of protection in place of the U.S.’s design patent system such as Canada’s Industrial design law and Europe’s Community design. The availability of and requirements for receiving the benefit of U.S. filing dates in overseas filings is another reason to address IP as early as possible, and to consult with a skilled IP attorney in the process.
  2. Infringement of a design patent results in automatic disgorgement of the infringer’s profits; however, if the design does not apply to the entire article at issue, damages may be limited to the component to which the design applies.
  3. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10 (1982).
  4. The creativity requirement roughly translates into a requirement of a minimum degree of elaborateness of the original material.
  5. Copyright term is a bit more complicated than stated above, but the exceptions do not apply to ordinary cases.