Industrial designs are the aesthetic appointments that make finished goods attractive. For instance, the functionality of Apple’s iMac® does not depend on its unusual combination of a personal computer and video screen in a single artfully formed unit, but it certainly is both appealing and distinctive, and that is value worth protecting. However, at the intersection of form, function, art and engineering certain unique problems arise that render the proper choice of intellectual property (IP) less than certain.

Selecting the right form of intellectual property is usually a straightforward task for an IP attorney with a trained eye. Novels should be copyrighted, inventive new widgets should be patented, and brand names should be trademarked. But industrial designs typically have elements of all of the above. The iMac, for instance, has a look that is so distinctive it is instantly clear to the average consumer that similarly designed products come from the same source, which is the function of a trademark. On the other hand, the iMac’s artistic elements are also creative ideas fixed in a tangible medium of expression, which creates copyrights in the design. And those same artistic, i.e. ornamental, elements may also be protected under a design patent. So which form of protection, or combination thereof, is ideal? The answer depends on your business goals, and the specific facts of each case. Your analysis should begin by considering the advantages and disadvantages of copyrights, design patents, and trademarks as they relate to industrial designs.

Copyrights accrue automatically as soon as you fix a creative idea in a tangible medium of expression.[1] That is to say, as soon as you create a drawing, a sculpture or an artfully formed iMac chassis you, or the company you are working for, instantly have copyrights in the creation, i.e. the expression. Importantly, only purely ornamental and non-functional elements can be covered by copyright.

Although copyrights accrue automatically, you do not automatically have a federal copyright registration, which is necessary to sue in federal court and to obtain enhanced or statutory damages.[2] Cost is minimal. The government fee is only $35 to file a basic electronic application with the Copyright Office’s new eCO system, or $40 to file a paper application. Attorney preparation time will add a relatively small amount to the total bill, as the amount of work required is very small. For a rather small sum you obtain exclusive rights to the expression for the life of the author plus 70 years.[3] Alternatively, where a company is the author, the copyright lasts for 95 years from the date of publication, or 120 years from the date of creation.[4]

Trademark law can also be used to protect purely ornamental and non-functional elements of industrial designs and can do so indefinitely; however, the protection is less immediate and the scope of coverage is substantially different from that of copyright.[5] Unlike copyright, the standard for trademark infringement is whether use of a design by another is likely to cause confusion in the market place as to the source of goods sold in connection with the design.[6] In one sense, this standard can impart somewhat broader protection because infringing use need not be an exact copy; it only needs to be confusingly similar. On the other hand, if an exact copy of your industrial design is applied to goods that are so different from your own that an ordinarily prudent consumer would not be confused then no infringement exists. Additionally, trademark infringement can only occur in the context of commerce. Therefore, trademark law cannot be used to stop others from copying your design for personal use or other non-commercial uses.

Another very important distinction is that in cases where the industrial design is merged into the product itself you will usually need to use the design in commerce for at least five years before claiming trademark rights. The reason for this is that the US Supreme Court has ruled that, as a matter of law, product designs cannot be inherently distinctive, distinctiveness being a threshold requirement for any trademark.[7] Therefore, the usual procedure is to file a trademark application to the Supplemental Register where distinctiveness is not required. Then, according to the Lanham Act, after five years the supplemental registration can be used as prima facie proof of distinctiveness in an application for a federal trademark.[8]

Design Patents
Ornamental elements of industrial designs may also be protected under a design patent, provided they are novel and not obvious.[9],[10] However, in contrast to copyright and trademark law, the design only must be “primarily ornamental” rather than exclusively so; that is, it may also be incidentally functional.[11] Accordingly, some features of a design that may be excluded from protection under copyright and/or trademark law may be within the scope of a design patent. While this may be the only form of protection available to some elements of a design, the term of a design patent is only fourteen years from the date of grant.[12] Company’s requiring longer lasting protection should consider using a design patent in conjunction with another form of IP protection, i.e. copyright or trademark.

Several general guidelines can be gleaned from the foregoing advantages and disadvantages:

* If your product life cycle is short, e.g. one or two years, then trademark protection is unlikely to be a viable option in cases where the industrial design is merged into the product itself. This is because in most cases the process of obtaining a registration, particularly achieving the prerequisite distinctiveness, will be longer than the product life cycle itself. In such cases copyright and/or design patents are likely to be better choices.
* If the industrial design is not merged into the product itself, but rather comprises packaging, labeling, etc. then trademark protection may be an option even when the product life cycle is short.
* If your product life cycle is short and your design is not purely ornamental, or the ornamental elements are inseparable from the product’s function, then a design patent is likely to be the only viable option, provided the requirements for a design patent are met.
* If the industrial design will be used long-term to build a brand or corporate identity then a trademark is a good choice. However, in cases where the design is merged into a product, it will need to be supplemented with protection that comes into effect more quickly. You will need to exclude others from using your design while you build trademark rights. This may be done with a copyright and/or a design patent depending on whether the design elements are purely ornamental, primarily ornamental, novel and/or nonobvious.
* If it is important to prevent copies from being made regardless of whether they are used in commerce then a copyright and/or a design patent should be used.
* If you intend to aggressively enforce your exclusive rights, and your design is amenable to more than one form of intellectual property protection then it is usually advantageous to pursue all available options.