Expert Commentary

Method and Apparatus for Beating the Competition

There are various types of intellectual property rights available to protect product configurations in the marketplace. It is important to remember that product configurations are often protectible, even where utility patent protection is not available, and there is a variety of protection available, with each class of protection having its own strengths and weaknesses.

Intellectual Property
January 2003

The first thing most people think about when they think about a “patent” is a utility patent. A utility patent covers a useful device, process, or manufactured product. An example of such a device is the “user-operated amusement apparatus for kicking the user’s buttocks” covered by United States Letters Patent No. 6,293,874. Another example is the “method of exercising a cat” covered by United States Letters Patent No. 5,443,036. Utility patents such as these protect useful inventions taking the form of apparatuses and methods. After all, who among us doesn’t know of a cat that needs some healthy exercise or a person who really needs a good kick in the buttocks?

While patents on useful apparatuses and methods, or utility patents, are the type of patents you are most likely to think of when you hear the word “patent,” they’re by no means the only type of patent available to protect an inventor’s creations. In addition to utility patents, the patent laws of the United States provide for protection for new plants and new ornamental designs. Although plant patents have their value, they are probably not of particular interest to you unless you are in the plant development business. Design patents, on the other hand, are of interest to any manufacturer or business having a product. In this article, I will be discussing certain advantages, as well as certain limitations, of design patents. In addition, I will be discussing the manner in which design patent protection can be combined with utility patent protection, copyright protection, and trade dress protection in order to fully protect the intellectual property embodied in the product.

Utility Patents

As we have discussed before, a utility patent covers a new, nonobvious, and useful invention which fits within the statutory framework of patentable subject matter. Under the patent law, patentable subject matter includes processes, machines, manufactures, and compositions of matter. In the past, the U.S. Patent and Trademark Office performed the role of “gatekeeper” in order to protect the public from “frivolous” and “immoral” inventions, as well as those inventions not clearly falling within one of the four statutory categories, narrowly defined. Today, the U.S. Patent and Trademark Office has largely abandoned that role, instead focusing on the “novelty” and “nonobviousness” requirements. Properly drafted, a utility patent can be a very powerful asset, granting a legally-enforceable monopoly to the inventor. A drawback to the utility patent is that it is in force for only a limited period, up to a maximum of 20 years, after which the invention enters the public domain.

Design Patents

In contrast to a utility patent, a design patent covers a new and original design having aesthetic ornamentation. In order to be covered by a design patent, a design must be an article of manufacture meeting the ornamentality requirement, in addition to novelty and nonobviousness requirements similar to those for utility patents. In addition, there is a requirement that the “ornamental” features be “nonfunctional.” Similar to the utility patent, a design patent grants a legally-enforceable monopoly to the inventor. Also similar to the utility patent, a design patent is in force for only a limited term of 14 years.

Copyright Protection

Similar to the type of protection provided by design patents, copyrights can expressly protect “works of artistic craftsmanship, insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article shall be considered a pictorial, graphic, or sculptural work 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.”

Copyright protection is similar in nature to design patent protection, but with a number of major differences. Unlike design patents, there is no requirement that the work in question be novel or nonobvious in order to be copyrighted. So long as the creation was original in the mind of the creator, copyright protection can attach to the creation. If you were brought up on a desert island and had never seen Michelangelo’s David, but you created an identical sculpture though sheer chance, your independently-created work could be copyrighted. A work created by knowingly copying the work of another cannot, of course, be protected by copyright. Put another way, the work doesn’t have to be new, it only has to be new to you. In contrast to patent protection, which has a fairly-limited term, copyright protection to an individual author extends for at least the life of the author plus an additional term of years, depending on the year of the original copyright. Also unlike patent protection, no formalities are necessary for legal protection to attach to the work.

Trade Dress Protection

Last, but certainly not least, is trade dress protection. Trade dress is the manner of presentation of a product to the public. In the same way that a company name or a logo can serve as a trademark to identify a company’s goods, the shape of a product can serve the same function—as an indicator of the source for particular goods. In general, trade dress is afforded the same type of protection as traditional trademarks and service marks, provided that it functions as a recognizable source indicator. A source indicator enjoying a high level of consumer recognition is said to have “secondary meaning” in the marketplace.

Similar to design patent protection, trade dress is weakest for those aspects of a product shape that can be thought of as partly or completely functional. When properly maintained, trade dress protection for a product shape has a potentially-infinite term. Many product designs have been held to be protectible as trade dress. Examples include the shape of Life Savers candies, the shape of Goldfish crackers, and the design of a Ferrari Daytona Spyder.

At one time, design patent protection, copyright protection, and trade dress protection were thought to be mutually-exclusive areas of protection. Under the modern case law, these areas of protection are viewed as distinct, and separately-protectible, aspects of a given product. For example, the fact that a given product shape has ceased to be associated with a particular manufacturer may preclude its protection as trade dress. The loss of trade dress protection does not preclude the existence of copyright or design protection. Similarly, a product shape may be identical to, and based on, that of an ancient sculpture in the public domain. The fact that the shape itself is a public domain work, and therefore not subject to design patent or copyright protection, should not necessarily preclude the existence of trade dress protection for that shape.

Patents versus Trade Dress

The existence of a design patent on a product is generally not a bar to trade dress protection. The courts have held, for example, that existence of a design patent on the configuration of a wine bottle is no bar to registration of that configuration as a trademark. In certain cases, the existence of a utility patent may, however, make enforcement of trade dress registration or protection difficult, such as where the inherent function of the invention cannot be separated from its shape.

As noted, because of the potentially infinite term of trade dress protection, courts ruling on the scope of trade dress protection have generally held to the rule that trade dress protection does not extend to purely functional aspects of a product shape. That is not to say that purely functional features can’t serve as source designators. They can and do. Monopolies over purely functional features are, however, considered exclusive to the patent law. To allow a manufacturer to monopolize functional features of a design would be equivalent to granting that manufacturer a patent on that functionality. Congress has made clear in federal law that a utility patent is to extend for 20 years from its filing date. Congress has also made clear that patents are not to be granted on inventions that have already been in the public domain. Trade dress protection on functional features of a product has the potential to frustrate both of these policies. In certain cases, product configurations may have protectible trade dress, even if the configurations incorporate functional features that are covered by utility patents.

In order to limit the potential for trade dress law to swallow patent law, the courts have developed the “functionality” doctrine. This doctrine provides that no person or entity can be allowed to obtain trade dress protection for the purely or primarily useful or utilitarian aspects of a product configuration. Within trade dress law, a “functional” feature is one that possesses sufficient utility that a monopoly on it would hinder competition in the marketplace.

In certain cases, courts have held that even if one or more aspects of a product are found to be functional features, a manufacturer may still be entitled to trade dress protection in its particular design. Thus, the manufacturer may have assertable trade dress rights, even in a case where its particular design has been depicted and claimed in an issued utility patent. This rationale is only applicable, of course, where the same functional advantages are available using an alternate design. If a competitor cannot achieve the same functional advantages using an alternate design, trade dress protection must, by necessity, yield to the fundamental policies of the patent system.

In practice, the value of a design patent or copyright as against trade dress protection generally varies over time. When a product configuration is first introduced by a company, the strength of trade dress protection for that configuration will be relatively weak, owing to its inability to serve as a well-recognized source indicator to the buying public. During this early period, patent and copyright protection can protect the configuration from competitors. As sales of the product expand, and the patented or copyrighted configuration becomes associated with the manufacturer in the eyes of the buying public, secondary meaning, and therefore, trade dress protection will attach to the product configuration, continuing after utility patent, design patent, and perhaps even copyright protection have lapsed. This is a prime example of the manner in which these distinct areas of intellectual property protection can be used together.

Patents versus Copyrights

Patents and copyrights can also coexist. The Copyright Office will apply certain basic criteria in order to determine whether creative work embodied in a utilitarian article can be registered. First, there must be one or more artistic features that can be identified separately, either physically or conceptually, from the utilitarian article. These features must be capable of existing independently from the article as a work of art. In other words, where the product configuration or design has an intrinsic utilitarian function, the Copyright Office must determine whether the form of the product or design is separable from its function. If the form is inseparable from its function, copyright protection cannot be awarded to the product or design.

Examples of product configurations held to be entitled to copyright protection include sculptural lamp bases, belt buckles, ornamental face masks, artwork on clothing, slippers, backpacks, and ornamental mannequins. On the other hand, many products have been held to have no copyrightable features, including an outdoor floodlight, a bicycle rack, utilitarian mannequins, and automobile wheels.

The interplay between utility patent protection on the one hand, and design patent or copyright protection on the other, is relatively straightforward on the surface. A utility patent protects the conceptual utility or function performed by an object, while a design patent or copyright protects the appearance of the object. In the marketplace, a utility patent on an object is generally valued above a design patent or copyright, due to the fact that a monopoly on the functionality of a product generally has more value than a monopoly on a product’s appearance. This is, of course, not always the case.

One particularly interesting aspect of the interplay between patent and copyright arises from the standards of patentability and copyrightability, on the one hand, and the respective standards of infringement, on the other. In general, copyright law is much more “knowledge-based” than patent. What this means is that you can copyright a sculpture that is indistinguishable from a famous sculpture so long as you didn’t know of it, or copy it. That is, your subjective knowledge is very relevant to copyrightability. Furthermore, you are not liable to the earlier creator for infringing his copyright, as you have not copied. Patentability does not incorporate a subjective knowledge element. The relevant inquiry of patentability is: “what does the world know?” Also in contrast to copyright, infringement of a patent does not require knowledge of the patent. Innocent infringement of a patent does not preclude liability. Given these standards, there are likely to be situations in which you can copyright something that you can’t patent.


As always, the above treatment is only a broad overview of the various types of intellectual property rights available to protect product configurations in the marketplace. The points I hope to have made are the following: (1) product configurations are often protectible, even where utility patent protection is not available; and (2) there is a variety of protection available, with each class of protection having its own strengths and weaknesses.

Ken Emanuelson is an associate with the intellectual property section of Gardere & Wynne, LLP. His clients range in size from small startups to established Fortune 500 companies, in various areas of technology, from online commerce to aerospace. His regular practice includes client counseling in all areas of intellectual property law, patent and trademark drafting and prosecution, litigation, licensing negotiation, and infringement analysis. In his prior career as an engineer, Mr. Emanuelson worked for Texas Instruments and Ford Motor Company. His engineering experience included work in semiconductor processing, factory automation, microwave communications, aerospace materials, automotive technology, and superconductive ceramics. Mr. Emanuelson is a graduate of the University of Texas School of Law, where his course of study focused primarily on patent, trademark, and copyright law. He also holds a BS degree in mechanical engineering from the University of Arkansas. He can be reached by email at

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