Moisan Legal P.C. Blog

Saturday, November 1, 2014

Protecting Your Product Design

By: Aaron Riedel

Intellectual Property 

 This post is Part 3 in a series on the basics of protecting your business’s brand. Read Part 1 and Part 2.

 Once you have the idea for your product, your business will likely spend hours of time designing the product’s features and appearance. Many of these features may be purely functional (those that perform a specific task or facilitate the product’s use), which are protectable by utility patents. Other aspects of your product may be purely aesthetic and non-functional.

This post will focus on the basics of protection the aesthetic and non-functional aspects of product design. (Part 2 of this series detailed how you business may protect the non-functional aspects of your product’s packaging under trade dress protection.)

What Constitutes Product Design Trade Dress

Trade dress protection can also extend to the non-functional and aesthetic elements of product design. This means the visual appearance, design and shape of a product.

Just like a trademark (and trade dress for product packaging), product design trade dress must be (1) distinctive, and (2) non-functional, to be eligible for protection.

 To be distinctive, the product design trade dress must identify you and your company as the source of the product instead of other competitors. Thus, a distinct shape, coloring, and appearance can identify only you as the source of your products. However, a significant distinction between (1) symbols and words that act as a trademark and product packaging trade dress, on the one hand, and (2) product design trade dress on the other hand, is that product design trade dress can never be inherently distinctive. In other words, product design trade dress is not automatically eligible for protection. Rather, product design trade dress must acquire secondary meaning (consumer recognition by the relevant consuming public). A company can prove secondary meaning by evidence of amounts spent on advertising and marketing, sales figures, length and exclusivity of use of the product design trade dress.

There can be, depending upon the size of your company and your advertising budget, challenges in building secondary meaning. For one, it may be difficult for a start-up to spend large amounts of money on an effective national ad campaign.

To be non-functional, the aesthetic portions of your product design trade dress cannot have a use/function. In other words, if an aesthetic elements of your product increases consumer’s ability to do something, it would not be protectable. On the other hand if the coloring and shape has no purpose other than to be aesthetically appealing, the coloring and shape would be eligible for trade dress protection.

Importance of Product Design Trade Dress

Just like your trademarks (whether it’s your business’s brand names or design logos), the design of your product(s) can act as a way to identify you and your company as the exclusive source of your product(s). The importance of the brand recognition among the consuming public cannot be overstated – the more the public identifies you as the creator of your product, the chances of increased sales and notoriety can increase exponentially.

Thus, there are several key takeaways for businesses who design, create and sell products. First, as your business develops new product lines, that your company consider the ways in which your design and production teams can include protectable features from the beginning of product creation and roll-out. Second, establish whether your company can create and build secondary meaning in the your product design trade dress. Third, if your company can afford to effectively promote the product design trade dress, ensure that your advertising and marketing teams continuously promote the product design trade dress as a means of identifying your company as the source of the product. This can be done by directing and encouraging customers to look for and identify your product by its distinct shape, appearance, and coloring.

Finally, and most importantly, remember that a range of intellectual property rights may be exist in your product’s design that may be more easily protectable. For example, copyright protection can extend to artistic patterns and designs on the product, design patents (to be discussed in Part 4 of this series) can be gained for certain combinations of design elements, and utility patents can be acquired for the functional portions of your product’s design.

For any questions regarding intellectual property protection, feel free to contact Aaron Riedel at

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