Thursday, September 13, 2012

Product Design as a Trademark

One of the more enjoyable aspects of my work is working with clients to determine whether and how intellectual property protection is available to their ideas. For the most part, protectable ideas have function or significant creativity. How and to what degree an idea has function and significant creativity is important to both intellectual property protection and to marketability. The best ideas generally have both, while market flops usually lack one or both.
There are four types of intellectual property protection. Regular patents protect ideas that have function and are thus in some way related to a definable product. Trademark protects the public aspects (name, logo, etc.) associated with the product or service, but not the product or service. Copyright protects the creative aspects of an idea, which may be incorporated into or related to a product, but like trademark, copyright does not product the actual product. Trade secrets and contracts protect ideas as long as the owner asserts proper care over the keeping the idea a secret.
The products of industrial design, unfortunately, generally lack novelty (newness), or are combination of off-the-shelf goods that work as expected (which is called obviousness), or have too much function, so that patent and copyright protection are not available. In addition, a product must be put into the marketplace to make money on it, so the owners of the most product ideas can't keep the product a trade secret, and make money.
In large part, the appearance of these design related ideas and products is developed by people with academic training and work experience in the design arts, and often an eye for attractive and marketable designs. Design artists, however, rarely get intellectual property protection for one or more of the reasons above. These reasons are in significant part due to a protection void that exists because of a public policy decision made many years ago. The gist of the policy is that artistic protection of products would stifle competition, while the absence of artistic protection would drive innovation through building on unprotected ideas.
To a degree, both premises are correct. Patents protect the idea and ALL derivatives for 20 years, which is effectively an entire generation, while copyright protects the idea and ALL derivatives for a lifetime, plus 70 years, or up to 120 years, depending on ownership at the time of creation. Not surprisingly, some persons at Stanford Law School called this protection FOREVER. See "A Fair(y) Use Tale" at 6:08. One example might be if the design of the Model T had had patent or copyright protection, the pace of automotive design would have slowed so much that we might be driving Edsels.
So fortunately for the public, the products of industrial design art are not protected. But, fortunately for designers and the companies, the dichotomy of protection is twisted in two ways. These are through design patents (a type of patent), and trade dress (a relative of trademark).
While regular patents protect function, design patents reveal and protect only the design of the product. The first iteration of many products had design patent protection - gloves, shoes, bottles, cars, eyeglass and sunglass frames, a computer mouse, a Batman-like costume, purses, and electronic devices. The limitations of design patents are that the design must still meet the novelty and non-obviousness requirements, function is not protected, protection lasts only 14 years, and color distinctiveness is generally not approved.
Though Samsung lost its design patent infringement (Apple, 2012), the iPhone design patent expires in 2020. This does not mean though, that the iPhone design might not protected. As noted above, trade dress is a relative of trademark in providing protection to the public aspects associated with the product or service. The distinction is that trademark applies to names, phrases, images, logos and sound (such as the Intel tune, the AOL mailman, and the MGM lion), which can be protected from first use. Trade dress is quite difference in that it is the appearance seen by the public that gets protection, and protection generally requires five years of use before the owner can even file for registration.
Most of the public would recognize trade dress when seeing it. That recognition, in fact, is the requirement for protectable trade dress. Say for example, it is night, you and the family are hungry and looking for a place to eat, but you are also in a hurry and driving too fast to read the signs (but the police are not looking, so don't worry).
You first see a place with a horizontal band of an orange, green and red stripe across the doorway, but you don't stop because you know it is a 7-Eleven. Then, you see a place with a horizontal band of a red, yellow and green stripe across the doorway, but you don't stop because you know it is a Taco Bell. Then you see a big guitar with a circular pattern and stop - at a Hard Rock Cafe!
These are the features of trade dress - the specific ARRANGEMENT and COLOR the public aspects associates with a product or service to the maker. Another way of looking at trademarks and trade dress is that sufficient differences mean a different company - such as the different color bands between 7 Eleven and Taco Bell, or a huge oboe in front of restaurant means the place is not a Hard Rock Cafe! Which brings us to a recent and interesting case.
As stated above, a new design of shoes can the protected by a design patent, but the patent expires after a fixed time. Has the shoemaker then lost protection? Not if in the 14 years of patent protection, the shoemaker made the effort to make sure the public associates the shoe design to the shoemaker. Then, the shoe design becomes protected trade dress.
For example, in 1992, Christian Louboutin introduced and started a line of shoes with a red sole. By 2008, Christian Louboutin had so many red sole shoes that the Trademark Office granted him two registrations for red colored shoe soles.
Consequently, when Yves Saint Laurent began producing red shoes (soles and upper), Christian Louboutin saw red in more just his shoes.
Generally in court cases, one side wins, and the other side losses. Louboutin vs. Yves Saint Laurent has the rare distinction of a win by both sides. Recall that trade dress applies to the specific ARRANGEMENT and COLORS the public aspects associates with a product or service to the maker. Unlike trademarks (words, phrases, images), the Louboutin registration is for the product (red soles) which is a rare registration, so some people thought (and Yves Saint Laurent was hoping), the registration would be overruled. The court, however, upheld the registration, so win by Louboutin, but the court also recognized that the Yves Saint Laurent shoes have both red soles and a red upper. The court said the Yves Saint Laurent design was different enough that the public would recognize the difference, so win by Yves Saint Laurent.
Which just about closes this story, except for a question and conclusion. The question is whether Apple will lose iPhone design protection when the patent expires? The likely answer is no, unless Apple drops the whole line. That is because after the required five years (2006 - 2011), Apple filed for and received trade dress registration for the iPhone design!