Suppose that you have a unique design for your product but no patent protection in the United States? Can you protect your product design to prevent a competitor from producing the same or similar design? Is there anything you can do?
Let’s say you created a unique design for a product such as a smart phone. The three-dimensional configuration of the smart phone is decorative and not functional. You have had success selling that smart phone with the unique design in interstate commerce in the United States. However, you did not file for a design patent and the time period has passed for obtaining patent protection. You now want to protect that design to prevent a competitor from reproducing that same or similar design for their smart phone and trading off your success and goodwill. Is there any other form of intellectual property protection that you can use to prevent a competitor from using the same or similar design?
YES! Trademark protection may be your answer. A trademark may be the visual aesthetic shape or outward configuration of a product. In the United States, no trademark shall be refused registration unless it, as a whole, is functional. There are several factors to consider when determining whether a product design is functional. The factors considered are the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered, advertising by the applicant that touts the utilitarian advantages of the design, facts pertaining to the availability of alternative designs, and facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
In our example, the issue is whether the three-dimensional configuration of the smart phone, appears to be a functional design for such products. Since there is no design patent to cover the three-dimensional configuration of the smart phone, you must be able to factually support that your advertising does not suggest the shape of the outward configuration of the smart phone has utilitarian advantages and that the particular shape of the outward configuration of the smart phone can be any suitable shape. In addition, you must be able to factually support that your competitors have a limitless set of alternative designs for an outward configuration of a smart phone and that the cost of producing the shape of the outward configuration of your smart phone does not differ significantly in method or cost from the manufacture of an outward configuration bearing any other alternative shape.
Numerous cases have held features that are non-functional are entitled to trademark protection in the United States. Examples of such features held non-functional include: the triangular shape of a cake of chemical; the side configuration of a grain semi-trailer; an inverted-Y design formed by sewn tape on JOCKEY® shorts; the front grille of a ROLLS-ROYCE® auto; a round wall thermostat; ZIPPO® cigarette lighter; a parking meter shape; a shower head spray nozzle; a candy bar wrapping shape; the rounded bottom of a guitar; the appearance of a FOTOMAT® film kiosk structure; the shape of a gun; a sole shoe pattern; the design of a sport shoe; the shape and appearance of the head of a golf club; the shape of a multi-function pocket tool; the design of luggage; the appearance of a recliner chair; a folding table; a high-design desk lamp; an insulated beverage server; a hand-held kitchen mixer; a lawn spray gun; a barbecue grill; a fishing reel; a fishing lure; a C-clamp tool; and the shape of a FERRARI® classic auto.
In the instant case, let’s suppose you can factually support that your trademark is not functional. Your trademark, or any feature(s) of your trademark, has not been the subject of a design or utility patent or patent application. Your advertising does not suggest that the shape of the outward configuration has utilitarian advantages. The particular shape of the outward configuration on the smart phone can be any suitable shape. Your competitors have a limitless set of alternative designs for the shape of an outward configuration of a smart phone. The cost of producing the shape of the outward configuration of your smart phone does not differ significantly in method or cost from the manufacture of an outward configuration bearing any other alternative shape. Therefore, for your trademark, the visual aesthetic appearance or shape of the outward configuration of the smart phone is not essential to the use or purpose of the smart phone and does not affect the cost or quality of the smart phone.
Since the design of your smart phone is not functional, you can obtain trademark protection and registration in the United States. Once you obtain your trademark registration, you can sue in federal court to stop your competitor from producing your trademarked configuration for the smart phone.