Nath letterhead

Legal Protection of Product Design in the United States
by
H. David Starr, Esq.
The Nath Law Group
I.
Introduction
Product design is a big business. Companies make substantial investments in creating
unique and memorable designs for their products to set their products apart from their
competitors. From the shape of the Volkswagen Beetle to the Coca-Cola bottle, a product design
may form a significant part of the company’s identity.
Designs that improve the performance of the product, of course, may be protected by a
utility patent. However, a design that serves another purpose, such as source identification or
aesthetic appeal, would not be eligible for utility patent protection.
In many countries, including Japan, product design is protected by an independent legal
regime. In the United States, by contrast, different aspects of product design are separately
protected by design patent, trade dress and copyright law. What all three forms of protection
share is their concern in excluding de facto utility patent protection for “functional” aspects of a
product design.
At the most basic level, design patent law protects what is new, original and ornamental
about a particular product design; trade dress law protects what is distinctive or memorable about
a particular product design from a design standpoint; and, copyright law protects the artistic
expression embodied by a particular product design which could exist by itself apart from the
product.
A single product design could conceivably be protected by all three forms of protection.
For example, the overall shape of a lamp could be protected by design patent and trade dress, and
its design features by copyright protection. More often, though, there exist various considerations
that make one form of protection more practicable or advantageous than another. This article
will discuss the relative advantages and disadvantages of the three forms of protection, and the
steps necessary for securing protection.
II.
Design Patent Protection
A.
What is a Design Patent
A design patent may be obtained for an original ornamental design of an article of
manufacture. The patent statute simply provides that: “[w]hoever invents any new, original and
ornamental design for an article of manufacture may obtain a patent therefore, subject to the
conditions and requirements of this title.” 35 U.S.C. §171.
1
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
A design patent is directed to the appearance of an article of manufacture. This is in
contrast to a utility patent which is directed towards features of utility of the article. A patented
design is ordinarily claimed in the design patent application by the words “as shown”, that is, by
its drawing. As the federal appellate court responsible for appeals of patent litigation succinctly
stated: “[i]t is the drawings in the patent, not just one feature of the claimed design, that define
the patented design.” Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371
(Fed. Cir. 2006). Under the U.S. Patent and Trademark Office (“PTO”) regulations, the title of
design must designate the particular article. Under the U.S. patent rules, only one claim is
permitted with each design patent application. 37 C.F.R. §1.153(a).
Unlike the twenty year term for a utility patent, the term of a design patent is fourteen
years from the date of grant. In addition, there are no maintenance fees to be paid for design
patents. After the term expires, the ornamental design passes into the public domain, and is
available for copying in the absence of some other form of protection, such as copyright or trade
dress protection. 35 U.S.C. §173. Compared with other forms of protection – utility patent, trade
dress and copyright - this is a relatively short term. As discussed below, in the case of copyright,
the term commences at the creation of the copyrighted work and lasts generally the life of the
author plus seventy years. As for trade dress, protection for a product design is not limited by a
term so long as the substantive criteria are met, and the trade dress is continually used. However,
considering the shelf life of many products, this term is more than sufficient.
Like utility patents, design patent protection only exists where a patent has been appliedfor and granted by the PTO. Also like utility patents, design patent rights may be forfeited if the
patent is not timely applied for. For example, an original and ornamental design is not eligible
for patent protection if the design was patented or published by anyone anywhere in the world
more than one year before the applicant’s date of filing in the United States, or was in public use
or on sale by anyone in the United States more than one year before the applicant’s U.S. filing
date. 35 U.S.C. §102(b).
This application procedure stands in contrast to trade dress and copyright protection. In
those cases, protection may be obtained without any formalities or registration. However, as
discussed below, registration of trade dress and copyright will provide a number of very
important legal benefits and advantages. Similarly, the “one-year bar” concept of a design patent
is unique to the patent form of protection. On the other hand, also as discussed below, certain
rights and remedies may be forfeited or lost in the case of copyright and trade dress protection as
well.
Moreover, there is a certain amount of risk and unpredictability involved with the design
patent application procedure. There is no guarantee that the design patent will ultimately be
granted, or that it could take a number of years and a large amount of money to secure the patent.
B.
Requirements for Protection
In order to obtain a design patent, the design sought to be protected must be nonfunctional, non-obvious and novel. A design patent may be invalidated if it can be shown that the
design is functional or is obvious.
2
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
In the litigation context, functionality of a design may be asserted as an affirmative
defense for invalidating a design patent. Once granted by the PTO, a design patent confers a
presumption of validity. Invalidity of a design patent for functionality must be established by the
elevated standard of “clear and convincing” evidence. 35 U.S.C. §282; L.A. Gear, Inc. v. Thom
McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993).
Because the functionality inquiry for trade dress closely resembles the functionality
inquiry for granting a design patent, a design patent is also presumptive evidence that the
claimed ornamental design is not functional for trade dress purposes as well. In re MortonNorwich Prods., Inc., 671 F.2d 1332, 1342 n.3 (CCPA 1982).
On the other hand, “[a]n article of manufacture necessarily serves a utilitarian purpose,
and the design of a useful article is deemed to be functional when the appearance of the claimed
design is ‘dictated by’ the use or purpose of the article. If the particular design is essential to the
use of the article, it can not be the subject of a design patent.” L.A. Gear, Inc. v. Thom McAn
Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)(citations omitted).
Showing that the individual features that comprise the ornamental design are individually
functional does not necessarily prove functionality of the entire design. Rather, the courts have
required that the overall appearance of the article be considered in its entirety in determining
whether the claimed design is primarily ornamental or primarily functional. Id.
Further, the existence of alternative designs that accomplish the same functions is
considered to be evidence of non-functionality. “When there are several ways to achieve the
function of an article of manufacture, the design of the article is more likely to serve a primarily
ornamental purpose.” Id.
Accordingly, in the L.A. Gear case, an appellate court affirmed the finding of the district
court that the patented overall design of an athletic shoe was not functional and therefore
primarily ornamental. This finding was based on the availability of alternative designs which
could perform the functions of the individual elements. Id.
Furthermore, like utility patents, a design patent may only be granted for non-obvious
designs. In other words, the differences of the overall design between the claimed design and the
references must be unobvious to the patent examiner. A finding of “obviousness” may also be
asserted in the litigation context as an affirmative defense to invalidate a design patent.
Obviousness is determined from the “viewpoint of a designer of ordinary skill or capability in
the field to which the design pertains.” Id. at 1124. “The first step in the analysis, when the
subject is design, is whether there is a reference to something in existence, the design
characteristics of which are basically the same as the claimed design in order to support a
holding of obviousness. Thus not only the individual elements, but the ornamental quality of the
combination must be suggested by the prior art.” Id. (quotations and citations omitted).
C.
Infringement
3
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
In order to show infringement of a design patent, the patentee must satisfy both the
“ordinary observer” test and the “point of novelty” test.
“The ‘ordinary observer’ test requires comparison of the two designs from the viewpoint
of the ordinary observer to determine whether the patented design as a whole is substantially the
same as the accused design.” Lawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1384
(Fed. Cir. 2006)(citations and quotations omitted). In other words, two designs are substantially
the same if an ordinary observer, giving such attention as a purchaser usually gives, would be
deceived by the resemblance that would result in a mistaken purchase. Specific differences
between two designs may not negate the overall resemblance between two designs. L.A. Gear,
Inc. v. Thom McAn Shoe Co., 988 F.2d 117, 1125-26 (Fed. Cir. 1993)(citations omitted).
Under the “point of novelty” test, a court must determine whether the accused device
appropriates the novelty in the patented device which distinguishes it from the prior art. Lawman
Armor Corp. v. Winner Int’l, LLC, 437 F.3d 1383, 1384-85 (Fed. Cir.), clarified by
supplemental opinion, 449 F.3d 1190 (Fed. Cir. 2006)(citations and quotations omitted). “The
purpose of the ‘points of novelty’ approach is to focus on those aspects of a design which render
the design different from prior art designs. ‘New’ designs frequently involve only relatively
small changes in the shape, size, placement, or color of elements of old designs. It is those
changes in and departures from the old designs that constitute the ‘point of novelty’ in the
patented new design.” Id. at 1385-86 (citations and quotations omitted).
The overall appearance of a design itself is cannot be a “point of novelty”. However, in
appropriate circumstances, a combination of several design elements may constitute a “point of
novelty” even though the individual elements considered in isolation would not so quality.
Lawman Armor Corp. v. Winner Int’l, LLC, 449 F.3d 1190 (Fed. Cir. 2006)
As discussed below, the “ordinary observer” test resembles the trade dress as well as the
copyright infringement inquiry in that overall similarity of the compared product designs is a
relevant component. On the other hand, novelty is a requirement particular to patent protection.
In sum, design patent protection may be useful for a Japanese company when launching a
newly designed product. The design, however, must meet the “novelty” requirement in order to
obtain design patent protection. On the other hand, keep in mind that copying that does not copy
the novel aspects of the design may be found to be lawful. Furthermore, the delay and risk
involved in the application procedure must be accounted for. Therefore, the design patent
application should be filed early, before the product enters the U.S. market if possible.
III.
Trade Dress Protection
A.
What is Trade Dress
“The concept of trade dress encompasses the design and appearance of the product
together with all the elements making up the overall image that serves to identify the product
presented to the consumer.” Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d
4
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
Cir. 1997). Unlike a design patent or copyright, for a product to have trade dress protection, it
must be sold to someone else.
A claim of trade dress may refer to the packaging of the product, or to the overall
appearance and design of the product itself. To establish protectable trade dress in the case of
product design configuration, the claimant must establish that its trade dress has “acquired
distinctiveness”, and that the overall trade dress is “non-functional”. To enforce trade dress
rights, the trade dress claimant must establish that there exists a “likelihood of confusion” among
consumers between the claimed trade dress and the infringed trade dress.
There is no registration requirement with respect to trade dress protection. However, a
registration for trade dress of a product design at the PTO is possible and confers a number of
legal benefits. For instance, the claimant will be entitled to presumptions of distinctiveness and
non-functionality based thereupon in the litigation context. However, unregistered trade dress is
entitled to the same protections, but not the same presumptions as registered trade dress so long
as the claimant carries its burden of establishing non-functionality and acquired distinctiveness
through litigation. 15 U.S.C. §1125(a)(3)(functionality).
Although trade dress refers to the “overall image” and a claimant may refer to visual
images of the products sought to be protected, the claimant seeking trade dress protection will
often be required to articulate the elements that constitute the claimed trade dress so that issues
of functionality, distinctiveness, and overbreadth may be properly evaluated and proper
injunctive relief may be fashioned. This requirement is especially pertinent where a claimant
seeks to protect a line of products, such as a line of lawn furniture, jewelry, or clothing. See e.g.,
Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997)(line of lawn
furniture); Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001)(line of jewelry
products); Samara Bros. v. Wal-Mart Stores, 165 F.3d 120 , 129 (2d Cir. 1998), rev’d in part,
529 U.S. 205 (2000).
As noted, in contrast to design patent and copyright protection, trade dress protection for
a product design is not limited in term. Trade dress protection subsists so long as the substantive
criteria of acquired distinctiveness and non-functionality, which are discussed below, are met.
However, once obtained, trade dress protection may be lost or “abandoned”. Like
trademark protection, trade dress protection may be abandoned in one of two ways. The first is
through lack of use where it can be shown that use of the trade dress was “discontinued with
intent not to resume such use.” 15 U.S.C. §1145. The second way to lose protection is through a
loss of significance as a source identifier such as through widespread and unobjected public
usage of the trade dress by competitors. In such cases, the trade dress is said to have become
“generic” and in the public domain.
B.
Acquired Distinctiveness
In a landmark decision of recent years, the United States Supreme Court held that product
design falls into the category of marks that can never be “inherently distinctive”. That is, the
Court found that the primary goal of a product design – even the most unusual of product designs
5
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
such as a cocktail shaker shaped like a penguin - is not to identify the source of the product, but
rather the goal of the design is to make the product more appealing or to useful. Samara Bros. v.
Wal-Mart Stores, 529 U.S. 205, 213 (2000). Thus, it held that “acquired distinctiveness” or
“secondary meaning” is required in the case of product design. Id. at 216.
Simply put, the proponent of the trade dress has to show that consumers have actually
come to identify a particular product design with a particular source. A determination of
“acquired distinctiveness” or “secondary meaning” generally involves consideration of a number
of factors, such as the non-exhaustive list of factors used by the U.S. Court of Appeals for the
Second Circuit: 1) advertising expenditures; 2) consumer studies linking product appear to
product source; 3) sales success; 4) unsolicited media coverage of the product; 5) attempts to
plagiarize the trade dress; and 6) length and exclusivity of use. Thompson Medical Co. v. Pfizer,
Inc. , 753 F.2d 208, 217 (2d Cir. 1985). However, no single factor is determinative and every
element need not be proven. Id. The time for assessing secondary meaning is the date when the
alleged infringement commences.
Because acquired distinctiveness is difficult to prove from the outset, trade dress
protection is not generally available for new product designs. This stands in contrast to design
patent and copyright protection which have no such distinctiveness requirements and, as such,
are better forms of protection for new products.
C.
Non-Functional
Trade dress protection may not be claimed for product features that are functional.
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 27 (2001). As noted above, the
functionality inquiry for trade dress protection closely resembles the functionality inquiry for
design patent protection. In general terms, a product feature is functional, and cannot serve as
trade dress, “if it is essential to the use or purpose of the article or if it affects the cost or quality
of the article.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
Importantly, the functionality inquiry is concerned with those protectable features that
constitute the claimed trade dress, not on the overall usefulness of the article of manufacture. For
example, a bottle of any design serves the function of holding liquid. However, a particular bottle
shape may be non-functional if it confers no utilitarian advantages or manufacturing cost
efficiencies over other bottle shapes. As a federal appellate court observed: “[t]he issue is not
whether a product is functional, but whether this particular shape and form of the product which
is claimed as trade dress is functional.” Disc Golf Assoc., Inc. v. Champion Discs, Inc., 158 F.3d
1002, 1008 (9th Cir. 1998)(quoting McCarthy on Trademarks and Unfair Competition §7:70 at 7146 (emphasis original)).
In making the functionality determination, most courts evaluate a number of factors to
decide whether the claimed trade dress is functional. The factors typically include: (1) the
existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising
materials in which the originator of the design touts the design’s utilitarian advantages; (3) the
availability to competitors of functionally equivalent designs; and (4) facts indicating that the
design results in a comparatively simple or cheap method of manufacturing the product. See
6
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
Valu Eng’g v. Rexnord¸61 USPQ2d 1422, 1425-26 (Fed. Cir. 2002)(citations omitted). In
addition, because non-functionality is a prerequisite to protection, the existence of a design
patent entitles the trade dress claimant to a presumption of non-functionality.
D.
Infringement Test - Likelihood of Confusion
In order to show trade dress infringement, the claimant must show that there exists a
“likelihood of confusion” between its claimed trade dress of the product and the defendant’s
design. This is the same standard that is used in trademark infringement cases. Courts usually
evaluate “likelihood of confusion” by referring to a number of non-exhaustive factors. The list of
factors employed by the U.S. Court of Appeals for the Second Circuit under its Polaroid
decision is typical: 1) the existence of actual confusion; 2) the relative sophistication of the
buyers; 3) strength of the claimed trade dress; 4) degree of similarity between the trade dresses;
5) degree of relatedness of the products; 6) the likelihood that the prior owner will expand into
the alleged infringer’s product market; 7) the infringer’s good faith in adopting its own trade
dress; and 8) the quality of the infringer’s product. Polaroid Corp. v. Polarad Elecs. Corp., 287
F.2d 492, 495 (2d Cir. 1961).
Different factors will be entitled to varying degrees of weight depending upon the
circumstances. Often, no single factor will be determinative. However, some courts have found
that product designs may be found to be so dissimilar such that confusion is not likely.
In some respects, the “likelihood of confusion” infringement standard resembles the
“ordinary observer” infringement inquiry used for design patent infringement. However, as
mentioned above, the concept of novelty is irrelevant to trade dress infringement.
Moreover, in contrast to design patent infringement cases, the marketing conditions under
which the consumer encounters the product is highly relevant. Particularly, whether the
defendant has prominently labeled his own product may be an important consideration in
evaluating potential consumer confusion. In assessing the overall impressions of products, “the
presence and prominence of markings tending to dispel confusion as to the origin, sponsorship or
approval of the goods in question is highly relevant to an inquiry concerning the similarity of the
two dresses. When prominently displayed it can go far towards eliminating any possible
confusion.” Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046 (2d Cir.
1992).
For example, in one case involving popular athletic shoes, a federal appellate court
affirmed a finding of design patent infringement, but reversed a finding of trade dress
infringement. The appellate court’s findings were based, in part, on the fact that both the plaintiff
and the defendant clearly and conspicuously marked their athletic shoes with their respective
brand names. Accordingly, the appellate court found that consumers would not be confused as to
the source of the shoes because of the conspicuous labeling of the products. L.A. Gear, Inc. v.
Thom McCan Shoe Co., 988 F2d 1117 (Fed. Cir. 1993).
In sum, trade dress protection typically is most useful in cases where the product design
is very memorable and the product has been sold and well promoted in the United States. The
7
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
requirements of acquired distinctiveness and non-functionality should be carefully considered
before asserting a claim of trade dress protection.
IV.
Copyright Protection
A.
What is a Copyright?
Copyright law provides perhaps the most limited form of protection in the case of product
design. Copyright protection is available for “original works of authorship fixed in any tangible
medium of expression.” 17 U.S.C. §102.
Copyright law by statute expressly excludes “useful articles” from protection, but
extends to separable original elements of expression. “Useful articles” are defined for copyright
purposes as “an article having an intrinsic utilitarian function that is not merely to portray the
appearance of the article to convey information”. Chosun Int’l Inc. v. Chrisha Creations, Ltd.,
413 F.3d 324, 327 (2d Cir. 2005). This limitation is based on the well-accepted “notion that
functional items are eligible for the relatively long-term protections of copyright, as opposed to
the more temporary rights provided by the Patent Act.” Id.
Copyright protects the artistic or ornamental aspects of an industrial design under the
broad category of “pictorial, graphic or sculptural works”, so long as these aspects are physically
or conceptually separable from the product itself. 17 U.S.C. §102. “For this reason, one may not
copyright the general shape of a lamp, because its overall shape contributes to its ability to
illuminate the reaches of a room. But one can copyright the fanciful designs imprinted on, or
carved into the lamp’s base, so long as those designs are unrelated to the lamp’s utilitarian
function as a device used to combat darkness.” Chosun Int’l Inc. v. Chrisha Creations, Ltd., 413
F.3d 324 at 328. So in the case of a lamp, if the design features in the base of the lamp are
physically separable from the functional aspects, copyright protection is permitted.
In order to be “conceptually separable”, the courts have required that the design elements
be identified independent of functional considerations, and, if the design elements reflect a
“merger of aesthetic and functional considerations”, then copyright protection is not available.
Brandir Int’l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1143 (2d Cir. 1987). For
example, the design elements on a belt buckle were held to be conceptually separable and
protectable where the design reflected purely aesthetic choices, independent of the buckle’s
function of holding up pants. Kieslestein-Cord v. Accessories By Pearl, Inc. , 632 F.2d 989, 99293 (2d Cir. 1980). On the other hand, the design of a bike rack was held to be unprotectable
because the aesthetic and functional considerations were not conceptually separable. Brandir
Int’l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987)
B.
Requirements for Protection
Any copyrighted expression must be “original” to the author. Although the amount of
creative input by the author required to meet the originality standard is low, it is not neglible, and
designs existing in the public domain are not eligible for copyright protection. Thus, one federal
district court recently held tile designs were not sufficiently original to merit copyright protection
8
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946
where only trivial differences existed between the claimed tile designs and public domain tile
designs. See e.g., Walker & Zanger, Inc. v. Paragan Indus., Inc., 2006 U.S. Dist. LEXIS 87261
(N.D. Cal. December 1, 2006).
If the originality requirements are met, the copyright protection exists upon the creation
of the work and endures for a term excluding during the life of the author and 70 years from the
author’s death. 17 U.S.C. §302. For works made for hire, the copyright endures for a term of 95
years from the year of its first publication or 120 years from the date of creation, whichever
expires first. Id.
Although copyright protection exists upon creation, for U.S. nationals, registration of the
copyright is required in order to bring an infringement action. 17 U.S.C. §411. Moreover,
statutory damages and attorney fees are only available for acts of infringement subsequent to
registration. 17 U.S.C. §412. Thus, registration confers a number of important legal benefits. The
application procedures for obtaining a copyright are quite simple and inexpensive when
compared with obtaining a design patent, Likewise, copyright application procedures are quite
simple and inexpensive compared with trade dress application procedures.
C.
Infringement
For a claim of copyright infringement, a plaintiff must establish (1) the ownership of a
valid copyright, and (2) unauthorized copying of the protected expression of the copyrighted
work. Copying may be shown through direct evidence or through circumstantial evidence
showing that the defendant had access to the original work and the infringing work is
“substantially similar” to the original work.
In sum, copyright protection is quite limited in the case of product design protection. It
should only be considered where pure ornamental or aesthetic features are contemplated for the
product design. However, the availability of recouping attorney’s fees and obtaining statutory
damages for infringements after registration may make it an important consideration.
V.
Conclusion
In conclusion, whether introducing a product with a new design into the United States or
enforcing an existing product design, the forms of protection available to the product design
should be carefully evaluated by U.S. counsel. The particular circumstances will dictate the
forms of protection potentially available for the product, and failure to secure rights could result
in a waiver of those rights or a waiver of potentially available remedies in enforcement.
9
WASHINGTON DC AREA
112 S. West Street • Alexandria, Virginia 22314
Tel: 703.548.NATH • Tel: 703.548.6284 • Fax: 703.683.8396
SAN DIEGO
12264 El Camino Real, Suite 400 • San Diego, CA 92130
Tel: 858.792.8211 • Fax: 858.792.8946