15 Tips: What is the Difference Between a Design Patent and a Trademark?
As the subject matter experts over at runrex.com point out, while most people understand the importance of taking steps to protect inventions and creative design, most of them end up being confused about what type of intellectual property protection is required for them. And even for those with an understanding of the subject, you will find that their understanding is mostly as relates to utility patents. When it comes to design patents and trademarks, most people don’t know that much about them, and things get even more confusing when you have to compare the two. This article, through the following 15 tips, will look to help with that, by highlighting the difference between a design patent and a trademark.
- What is a design patent?
As is discussed in detail over at guttulus.com, there are three main types of patents: utility patents, plant patents, and design patents. A design patent is a patent that protects new, original, and ornamental design for a useful article of manufacture. It offers protection for an ornamental design on a useful item.
- What is a trademark?
A trademark on the other hand protects any words, names, symbols, or devices used in commerce to identify and distinguish a particular source of goods or services from another source as is explained over at runrex.com.
- Why the confusion between the two?
According to the subject matter experts over at guttulus.com, the difference between say a design patent and a utility patent, or between a utility patent and a trademark is pretty obvious. Things get confusing when you have to compare a design patent to a trademark. This is because, just as a patented design is meant to be seen, trademarks, for the most part, are also meant to be seen and recognized.
- Differences in the types of protection provided
One of the fundamental differences between a design patent and a trademark is in the type of protection provided. This is because, from discussions over at runrex.com, the purpose of a trademark is to identify the source of a product or service and to distinguish the source from those of other products that do not bear the same trademark. Design patents on the other hand protect the ornamental appearance of a unique-looking design as applied to a product, which can either be two-dimensional or three-dimensional.
- Registration with the USPTO
Another difference between the two is that while design patents require granting by the USPTO, trademarks do not need to be registered. This means that, while a mark registered with the USPTO confers exclusive nationwide rights, a trademark owner may have common law rights to use and enforce an unregistered mark.
- Validity
As is revealed in discussions on the same over at guttulus.com, every trademark must always be associated with at least one particular product or service. Similarly, design patents must also be tied to a product, which is also known as an article of manufacture. This brings us to another difference between the two because, while ongoing usage is required to maintain a trademark, design patents can remain valid without any sales of the patented products.
- Enforcing
These two also differ when it comes to determining infringement as covered over at runrex.com. Trademark infringement hinges on trademark priority, which means it requires a finding of likelihood of confusion between two marks where the accused infringer does not have earlier trademark usage. Design patent infringement on the other hand requires an accused design to appear substantially similar to a patented design in the eyes of an ordinary observer.
- Process of determining infringement
On a related note to the point above, the way you can think of trademark infringement is to ask whether consumers might get confused into thinking that an accused product with an allegedly infringing mark originates from, or is affiliated with, the source of the rightful trademark. On the flip side, the test for design patent infringement doesn’t require any assessment of confusion as to the source of the product. Instead, as explained over at guttulus.com, design patent infringement requires a side-by-side visual comparison of the patented design to the accused design.
- Length of protection
Another aspect that differentiates these two is the length of protection. As outlined over at runrex.com the term of a design patent is 15 years from the date it was issued. On the other hand, a trademark has no expiration date so long as the owner continues to use the mark on the pertinent goods or services.
- Time constraints
It is also worth pointing out that if you have already publicly disclosed your invention, you might not be able to apply in foreign countries, but you can still file for a US patent within the one-year grace period. As far as trademarks are concerned, however, there is no hard deadline set in stone, and you can use an unregistered trademark for years and still have the option to file a trademark application.
- One is granted, another is registered
There is also a difference between the two when it comes to the semantics on how each is obtained. As far as design patents are concerned, as is true for all other types of patents as covered over at guttulus.com, they are granted. On the other hand, trademarks are registered by the USPTO.
- Renewal
Another difference between the two is that while trademarks can be renewed as covered in detail over at runrex.com, something that you will need to do every 10 years after the first renewal if you have a registered mark, a US design patent lasts for 15 years and cannot be renewed.
- When to file for a design patent
Given the discussion above, it is important to know when to file a design patent application. As discussed over at guttulus.com, if your design is industrial, which means it is on a manufactured article or object, and as such it is purely aesthetic and doesn’t alter the way the object works, then you are better served applying for a design patent. You should note that if a new design actually alters the way the object works, improving the function of the object, then you should consider utility patent protection.
- When to register a trademark
On the other hand, if your design is a logo or other representation of words or symbols that you use or will use to identify your brand or company in commerce, then according to runrex.com, you should apply for a federal trademark.
- Applying for both
It is also worth pointing out that design patents and trademark rights are not mutually exclusive and both rights may be available to you depending on the nature of your product. The strategy you should consider following when looking to use both to protect your product if it has a unique appearance, is to first file a design patent application, ideally before launching, and then file a trademark application either before or shortly after the product launch.
Hopefully, this article will help you know what the difference between a design patent and a trademark is, with more on this topic to be found over at the highly regarded runrex.com and guttulus.com.