IP protection for product designs is typically found in a combination of one or more of the following protective mechanisms:

1. Contracts, which are typically used with employees and third parties to prevent loss of novelty, as well as to provide notice of ownership. Contractual protections such as Non-Disclosure Agreements are well-known and heavily used.  
2. Utility patents, which cover the novel and non-obvious functional elements of a conception. This is likely the patent you are most familiar with, including an exhaustive written narrative accompanied by drawings and a series of written claims defining the scope of protection.  
3. Design patents, which cover novel and non-obvious non-functional or ornamental features of a conception. Design patents are receiving much publicity at present as a result of the recent, and ongoing, Apple v. Samsung case.
4. Copyright protection, for original works of authorship. In general, copyright law does not grant protection to utilitarian objects. Section 101 of the Copyright Act provides that the design of a useful article will be protected "only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article". . . including "two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans."  
5. Trade secret protection, for those conceptions, or parts of the conception, that cannot be ascertained or reverse-engineered by the general public. Typically, trade secret protections are most appropriate for methods of manufacture or software, where the operational details are hidden.  
6. Trade dress protections, for non-functional features that have acquired distinctiveness through extensive marketing, and commercial use and acceptance. 

We strongly advocate leveraging two of these protective mechanisms to achieve IP protection of novel, non-obvious and non-functional features of designs: Design Patent protection followed by Trade Dress protection. (Of course, contracts will also be employed, functional features will be covered by utility patents and, where appropriate, copyright protection will be utilized to provide the fullest and broadest IP coverage possible.) The resulting coverage scheme allows non-functional feature IP protection to begin virtually immediately after conception, with continued and unbroken protection theoretically forever, until the underlying product is no longer "in commerce." In short, it can be a beautifully elegant result when properly executed.

Design Patents Coverage and Purpose

Design patents are provided to promote progress in the decorative arts and to reward inventors. Thus, design patents protect features that are primarily non-functional, ornamental elements of an article of manufacture, such as a specific product shape or a particular surface ornamentation. Note that color cannot be protected with a design patent.

For example, an oval-shaped element on the handle of a surgical instrument may be protected under a design patent if the oval shaping is primarily non-functional and is also both novel and non-obvious in view of the prior art. User interfaces on electronic devices are also heavily protected by design patents, e.g., Google's home page or the tiling arrangement on Apple's iPhone.

Design patents require no use of the underlying product in commerce in order to meet the protection threshold, just novelty and non-obviousness, both of which are determined according to the now well-known "Ordinary Observer" test.

Speaking generally, design patents are relatively inexpensive to prepare, file and bring to issuance, as compared with utility patents. Design patents regularly issue within six to eight months of filing, usually without any pushback from the USPTO. With a little advanced planning and placement, a design patent application may be accelerated on the so-called "Rocket Docket" within the USPTO, resulting in likely issuance of the design patent application within three to six months of filing, barring any significant issues during prosecution.

Design patents are granted for a period of 14 years. During this 14-year term, the owner of the design patent enjoys a full monopoly of the patented elements, including the exclusive right to make, use, sell and/or offer for sale the patented device, and may stop infringers on any of those rights.

Trade Dress Coverage and Purpose  

Trade dress is provided to enable a business to identify itself efficiently as the source of a given product through the adoption of a mark, which may be in the form of a slogan, symbol, ornamental design or other visual insignia. Through trade dress protection, the owner may obtain injunctions against others selling confusingly similar products.

Trade dress, like design patents, protects only non-functional product features, but covers more features than design patents: size, shape, color, color combinations, texture, graphics and even particular sales techniques may be subjects of trade dress protection. A surgeon may, for example, come to recognize a device that has a feature with a distinctive pink color and identify that device with the manufacturer of the device as a result.

Unlike design patents, trade dress protection does not depend on the state of the prior art, in other words, novelty and non-obviousness are not requirements to obtain trade dress protection. What is required is "acquired distinctiveness" in the marketplace, otherwise known as "secondary meaning." Generally, this means that the product or design has, through extensive use in commerce, has become associated in consumers' minds with the source of the product or design.

Acquired distinctiveness is typically proven either by certifying that the product has been used continuously in commerce for five years, or by actual evidence of secondary meaning. In some cases, the USPTO may determine that continuous use of the product over five years is not sufficient to establish a prima facie case of acquired distinctiveness. In these cases, supplemental evidence in support of secondary meaning or acquired distinctiveness is required to achieve registration on the Principal Register.

In certain cases where evidence of acquired distinctiveness is not sufficient, registration on the Supplemental Register may be required. While not as valuable as a Principal Registration, the Supplemental Registration still affords significant benefits: the registrant may use the registration symbol ®; the registration is protected against registration of confusingly similar marks; and the registrant may bring suit for infringement in federal court (albeit with some evidentiary issues regarding acquired distinctiveness that must be proved).

Combining Design Patent and Trade Dress Protections

It is a fact that a design patent expires after 14 years. However, during this 14 years, the owner enjoys a full monopoly for the protected design: a significant benefit. But in the patent world, all good things come to an end: expiration of the design patent's term allows the protected design to become part of the public domain, available for all to make, use or sell without restriction, unless additional protective steps are taken.

This is where trade dress protection demonstrates its value in a non-functional IP protective scheme: trade dress protection, once acquired distinctiveness is achieved, is theoretically endless as long as the protected design or product remains in commerce.

It is possible to protect the IP of a particular product continuously throughout its entire lifecycle. The protection begins with the filing of the design patent at a point before marketing and commercialization, through issuance of the design patent and continuing with trade dress protection well beyond the expiration of the design patent, to the point at which the product is no longer in commerce, no matter how many years that product is in commerce.

Stepwise, the process looks like this:

1. The product will be covered under a design patent for 14 years;
2. During this 14-year monopoly period, the owner of the patent may begin marketing the product covered by the design patent;
3. At some point, before the expiration of the 14-year design patent term, aspects of the marketed product begin to meet the threshold of "acquired distinctiveness" in the marketplace, allowing registration of the product's trade dress on the Principal Register.
4. Once trade dress registration is achieved, the subject product enjoys the benefits of trade dress protection theoretically forever, or until the product is no longer in commerce.

Viewed this way, filing a design patent "buys time," 14 years to be exact, for the owner of the product to develop the acquired distinctiveness that is required for trade dress protection.

Practice Tips

During the pendency of the design patent's 14-year term, the forward-looking owner of the patent and marketer of the product will strategically and ruthlessly implement advertising and marketing literature comprising language positioning the product's non-functional features as distinctive. In addition, consumer surveys will be taken at regular intervals to gauge distinctiveness as well as capturing consumer testimonies relating to distinctiveness. Implementation of these strategic steps result in evidence tailored for use in establishing distinctiveness within the USPTO. This, and other strategic steps, help significantly increase the likelihood of success during the Trade Dress registration process.

For more information, please contact your Intellectual Property attorney at Winthrop & Weinstine.