Can you include a logo in your design patent application?
Let me share a strategy if you’re thinking about filing a design patent application for a new product that might be considered somewhat similar to existing products. Typically, design patents cover three-dimensional shapes without regard to any two-dimensional artwork that might be displayed on any surfaces. It is possible to include a logo in your design patent application for a product. Essentially, you are applying for a design patent on a combination of 2-dimensional and 3-dimensional features.
Need to file a design patent on a product that might share similarities with existing products? Reach out to US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you obtain design patents on borderline cases.
How would a logo help get your design patent application allowed?
In general, design patents protect the ornamental appearance, and not the functionality, of a product. It’s all about the ornamental appearance of the design. You are protecting how it looks, not how it works.
In order to get a design patent, the ornamental appearance of your invention must be sufficiently unique. Adding a logo to your design patent drawings might help make your applied-for design more novel.
Would a brand narrow the scope of your design patent enforcement?
While adding more visual features might help to make your design more patentable, such features could also narrow the scope of design patent protection. For example, say you patented the design of a product that displayed a logo on a surface. The USPTO grants your design patent showing a 3-dimensional product with a 2-dimensional graphic. Would competitors need to include your logo in order to infringe your design patent?
Most competitors have enough common sense to avoid using your logo. In response to the enforcement of your design patent against competitors, therefore, they will argue that their competing products do not have your logo.
How can 2-dimensional designs help you avoid infringing other design patents?
Let’s be clear. If your product looks substantially similar to what is covered by a design patent, then adding a logo will not magically help you escape infringement. Not all cases, however, are that clear. When it is arguable whether an accused product would infringe a design patent, then the addition of two-dimensional artwork to an accused product could tip the scales toward noninfringement.
Design patent infringement can be a bit complicated, but let’s keep the standard simple for now. Basically, the standard for determining design patent infringement is a substantially similar appearance. Does the accused product look substantially similar to what is shown in the design patent?
At its core, design patent infringement is all about a visual comparison. It makes sense, therefore, that visual differences such as logos could help to reduce the risk of infringement.
Trademarks vs. Design Patents: What are the differences in enforcement?
Trademark infringement requires a likelihood of confusion as to the source of the goods or services. In other words, consumers purchase a product under one mark thinking that the product originates from the same source as that of another trademark. Registering a trademark, therefore, requires that the applied-for mark not be confusingly similar to any registered trademarks or prior-filed applications.
In certain cases where a trademark is proving to be especially challenging to register, you might consider filing a design patent application for the product bearing the mark. Be careful with timing requirements. A US patent application must be filed within one year of the earliest date of public disclosure of the invention.
Trademark Application Rejection: Plan B – Apply for a Design Patent?
If your trademark application has been rejected, are you still within one year of your earliest public disclosure of your product?Perhaps you might be eligible to file a design patent application.
Trademark attorneys who are not registered patent practitioners cannot file design patents. Contact patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore innovative strategies to pursue trademark and design patent rights.
