Design patents cover how something looks – its specific shape or configuration. Design patents are used in a variety of industries such as jewelry, clothing, furniture, beverages, shoes, computers, clothing, automakers and others.
Some brands, such as Gucci, have been obtaining design patents for decades. Design patents are often at the heart of many high-profile, high-stakes legal battles between tech companies, such as Apple and Samsung Electronics over smartphones and tablets. Design patents aren’t limited to products. Apple patented the physical layout of its retail stores.
Once the design patent is approved, it gives you protection for the life of the patent, usually 20 years. But what happens if your product design can be licensed for longer?
Here’s a strategy to extend the life of your design patent – combine it with the trademark. What’s the difference between design patent and trademark? The design patent protects the unique look of your product, and a trademark protects design functionality.
Some examples of design patents combined with trademarks include Lego building blocks, Monopoly board game, Dustbuster vacuüm cleaner, and Honeywell’s round thermostat. Oakley uses a design patent to protect the different form and shape of their unique sunglasses. One of the most famous design patents is Coca-Cola’s unique bottle shape.
When should you use this licensing strategy? Here are four top reasons:
- When the licensing opportunities for your design have a longer lifespan than design patent.
- If your product design is in a highly competitive market with a lot of copying or infringing happening.
- Registering both gives you the option to enforce infringement litigation as either a trademark or patent, which can significantly cut your legal costs.
- Design patents typically take longer to issue, and if you’re planning to go to market sooner, than obtaining a trademark while the patent gets approved will protect your design until the patent is approved.
Deciding whether to get both a trademark and design patent comes down to how critical the design is to your product, and whether that design will have a long revenue lifespan. If so, then this strategy offers you the best way to protect and maximize the licensing opportunities for your product design.
Rand Brenner is an IP professional whose passion is helping inventors, startups, and businesses of all sizes use licensing to turn their IP into income-producing products, services, and technologies. His decades of experience run the gamut from medical devices to food technology to consumer products. He’s licensed some of the biggest Hollywood entertainment blockbusters including the Batman Movies (1 and 2), and the number one kid’s action TV show, the Mighty Morphin Power Rangers. Rand speaks about licensing and is a featured speaker at investment conferences, trade shows, colleges, and startup events. He’s a published writer with articles appearing in several prestigious trade magazine including The Licensing Journal, Intellectual Property Magazine, and License India. Rand also mentors at the Cal State Fullerton School of Business and Economics and is a judge for their startup business plan competitions.