What's Better? Trade Dress Protection or Design Patent Protection? Episode 132

What Is Trade Dress?

Let’s start with a couple of definitions. Trade dress falls under the same laws as trademarks. It protects the characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. So, it’s about the design and shape.

But isn’t that what design patents are about—protecting design and shape? Yes, it is, which is why it can get tricky deciding which is better or which one is right for you.

What Is a Design Patent?

In a design patent, you are protecting the appearance—not the structure or functionality. It has to be ornamental, not functional. A court is going to look to see if your design is essential to how the product works.

For example, if you have a new coffee cup handle, the handle is functional. But if you have an interesting look to your handle, you may get protection for that appearance. A court will also ask whether there are alternative ways to make the product. If the answer is no, then you’re not likely to get patent protection, or it will be very limited.

To get design patent protection, the design must be an article of manufacture, ornamental, new, and not obvious over existing prior designs.

Requirements for Trade Dress

For trade dress, the design must serve as a source identifier, be distinctive in the marketplace, be used in commerce, and be primarily non-functional. The non-functional requirement is applied more strictly in trade dress law than in design patent law.

To get protection for trade dress, it must be inherently distinctive—unless it has acquired secondary meaning. Inherently distinctive means it must be unusual and memorable, conceptually separable from the product, and likely to serve primarily as a designator of origin. Secondary meaning refers to situations where the design may not be inherently distinctive, but over time, consumers have come to associate that particular look with your brand.

Examples Where Trade Dress Is More Suitable

Some categories are clearly better suited for trade dress—such as the look of a store or packaging.

Apple has trade dress protection on its Apple Stores. It doesn’t really matter if you place a chair in a different location or add one extra table—you still know the Apple Store look when you see it. It’s distinctive, and Apple has a trade dress for that.

There’s a famous case from 1992 called Two Pesos, Inc. v. Taco Cabana, Inc., where two Mexican restaurants had very similar décor, including particular colored stripes, distinctive outdoor umbrellas, and a certain kind of buffet style. These types of things, especially for restaurants, really fall under trade dress—not design patents.

Why Not Use a Design Patent for Store Layouts?

With a design patent, you’re comparing the drawings in the patent application to what someone else is doing. A person must think they are substantially the same—meaning they resemble the drawings in your design patent.

If the stores tried to get a design patent, they’d need to submit drawings of a specific layout. If someone created something similar but changed table shapes—say, from rectangular to circular—they might avoid infringing because the real-life setup no longer matches the drawings. Trade dress, by contrast, is more holistic because it’s based on consumer confusion.

In the above example, if someone replaced rectangular tables with oval tables, there’s a good chance that people would still walk in and say, “Oh, I thought this was an Apple Store.”

Consumer Confusion and Trade Dress

For trade dress, there must be consumer confusion—meaning the average consumer would likely be confused about the origin of the product if another product appeared in a similar “dress.”

Another product category that often falls into trade dress is packaging with a distinctive color scheme. For example, Tiffany’s jewelry boxes might be ordinary boxes, but their unique “Tiffany Blue” color is trade dress. That wouldn’t work well as a design patent because design patents generally don’t protect color—only ornamental features.

If color is essential, like the red soles of Christian Louboutin shoes—that’s trade dress.

Why Color Is Not for Design Patents

If consumers see a red-soled shoe where the rest of the shoe isn’t red, they’re likely to think it’s a Louboutin shoe. You couldn’t get a design patent for just the color of the sole. I’ve never seen a design patent that includes color, and I’m not even sure if it’s allowed.

Even if you could get a design patent, someone would need to copy the entire shoe shape and features—not just the sole coloration.

Some shoes are so iconic in their 3D shape that they may qualify for design patents, but that wouldn’t help much if you’re trying to protect just the color on the bottom when the sole shape could vary.

Differences in Infringement Tests

For infringement, the legal tests differ. In trade dress cases, the main question is: are consumers likely to be confused as to the source of the goods?

Courts will look at the similarity of the designs, the sophistication of consumers, and the similarity of the goods and market impact. Trade dress infringement is about whether consumers are confused as to the origin of the product.

If the design isn’t very distinctive, you may need to prove secondary meaning. This could require testimony, consumer surveys, extensive marketing, or sales history to show consumers associate the design with your brand.

Design Patent Infringement

For a design patent, we look at whether the allegedly infringing product is substantially similar to the patented design from the perspective of an ordinary observer. We don’t consider market impact or consumer confusion—it’s a side-by-side comparison of the patented drawings and the product.

It’s not about whether a consumer is confused in the marketplace. It’s more like: if you hold up the design patent drawings next to the product, would an ordinary observer think they are the same?

Manufacturing and Use in Commerce

Another big difference is whether you are actually making and selling the product.

Trade dress is about identifying the source of goods, so you must be making and publicly selling the product to claim trade dress rights. If you’re not selling it, there’s no consumer confusion—and no trade dress infringement.

But with a design patent, you can still get protection even if you never manufacture the product. A design patent is valid based on the drawings alone.

Let’s say you thought of a cool new vase. You never made the vase, but you filed a design patent application and received the patent. If someone copied your drawings and made that vase, you could sue them for design patent infringement—even though you never sold a product.

You couldn’t sue for trade dress infringement, though, because you never put the product into the marketplace.

Design Patent Example: A Curly Segment on a Vase

Let’s take that vase example further. Suppose most of the vase is a standard shape, but one small section has a unique curly design. You file for and receive a design patent on that ornamental curly segment.

If someone else makes a vase that copies that curly segment exactly, you might be able to sue for design patent infringement—even if consumers don’t associate that design with your brand. It might play no role in where consumers think the vase came from, but if a side-by-side comparison shows that the curly segments are the same, that’s enough for design patent infringement.

Length of Protection

Another difference is how long protection lasts.

Trade dress protection can theoretically last forever, as long as the design continues to be used and continues to act as a source identifier for consumers.

Design patents, by contrast, only last 15 years from the date of grant.

When You Can File

There’s also a difference in timing.

To get a design patent, the product must be new. If you’ve been selling your product for over a year, you generally can’t get a design patent anymore.

But that’s not the case with trade dress. You could be selling your product for years and then file for trade dress protection. In fact, the longer you’ve been selling it, the easier it is to argue that consumers associate the look with your brand. You can even get some trade dress rights without registering, though registration is helpful.

Damages

It may be easier to get higher damages awarded under design patent law compared to trade dress, based on how the laws are written and interpreted. But I’m not going to go into those details in this episode.

Which One Is Right for You?

Sometimes, the answer is simple. If you’re trying to protect the overall look or concept of a store, or a specific color scheme, or the appearance of packaging that may vary depending on what’s inside but follows a general theme, then trade dress is probably for you. Knockoffs may not look exactly the same but could still confuse consumers.

If you have a very particular, exact shape of something—like a specific kind of cell phone, a vase, or a mug—then that’s something likely more suited for a design patent.

There are gray areas, and in some cases, you can file for both trade dress and design patent protection. Consider trade dress especially if you’ve been in the marketplace for a while and can show that people associate a certain look with your brand. And depending on how long you’ve been selling your product, it may already be too late to get a design patent.

I’m Adam Diament, and until next time—keep on inventing.