News & Resources

Publications & Media

“Surface Indicia, Trademarks, and Design Patents — Oh My!”

Inside Counsel By Nicole A. Bashor

In the last two articles, "The case for design patents in manufacturing and industrial technologies," and "Touching the future: Patents on graphical user interfaces on the rise," we explored strategies associated with non-traditional areas of design patent law that companies may use to further bolster their patent arsenal. The final article in this three-part series focuses on a third niche area of design patent law that businesses may utilize to protect surface indicia, including trademarks.

Surface indicia is generally described as "a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture," and consitutes protectable subject matter via a design patent under 35 U.S.C. § 171. One of the key threshold requirements that must be met in order to protect surface indicia via a design patent is association of the surface indicia with a specific article of manufacture. To meet this requirement, an applicant for a design patent must connect the surface indicia to the article of manufacture, and convey this connection to the U.S. Patent Office with some specificity, through one or more drawings, the title, or the specification.

Surface indicia generally implicates a wide variety of products and companies, including computer icons (e.g., U.S. Design Patent D698,816, assigned to Microsoft), patterns associated with a product (e.g., U.S. Design Patent D584,062, assigned to Procter & Gamble), patterns on a clothing article (U.S. Design Patent D700,431, assigned to Nike), and trademarks cloaked as icons (e.g., U.S. Design Patent. D618,251 and D663,316, both assigned to PepsiCo), among other things.

There is certainly no shortage of major companies that are using design patents to protect surface indicia in many different forms, as discussed above. Indeed, businesses of all sizes may be able to leverage some of these forward-thinking strategies to protect surface indicia using design patents.

Protecting computer icons was generally addressed in this column in a previous article, as discussed above, and should strongly be considered by companies in the computer industry, including application developers. Companies in the software industry may be further motivated to utilize design patents to protect icons in the face of the ever growing legal challenges to software patents (see for example, Alice Corporation Pty. Ltd. v. CLS Bank International, which relates to whether software constitutes patent-eligible subject matter and is currently pending in front of the U.S. Supreme Court).

With respect to products, design patents may be a significant advantage to companies with products in certain industries including fashion and clothing, food and beverage, sporting goods, and electronics. Patterns disposed in the actual surface of a consumer product (e.g., cross-hatching on a hammer striking surface and cutouts located in a cover for a dispenser) are protectable, as well as surface indicia applied to a surface of an article of manufacture (e.g., a label on a package). It seems to reason that many companies supply products that include surface indicia that is in or applied to an article of manufacture.

Protecting trademarks via design patent may be a difficult proposition, absent some careful thought and filing considerations. Without getting into the nuances of the patentability hurdles with respect to surface indicia and design patents, one of the threshold requirements to patent surface indicia is that the ornamental feature be "created for the purpose of ornamenting" and may not be a byproduct of functional or mechanical considerations. It can certainly be argued that inclusion of a trademark on a product has an element of ornamentation, but a trademark by its very nature acts to identify the source of a product (i.e., plays a functional role). As such, companies such as PepsiCo have used an alternative mechanism in the form of protecting an icon of a trademark via design patent. The long-term implications of protecting trademarks via design patent are murky, but one advantage may be that the design patent may facilitate the trademark of the company acquiring secondary meaning and/or distinctiveness over the life of the design patent.

Almost every company that sells a product includes a logo, a design, or some other surface ornamentation associated with the product. As such, many of the principles used to protect surface indicia may be leveraged across different business sectors. Ultimately, businesses can utilize the strategies that are currently being implemented in the design patent world to protect important aspects of their business. Importantly, protection of surface indicia via design patent provides a relatively inexpensive, fast, and comprehensive option for companies.