Developing and managing an intellectual property portfolio can provide your business a competitive advantage in today’s marketplace by increasing your business value and attracting investment and partnership opportunities, among others. But it can be complicated if you have a hard time determining whether a given intellectual property asset is a trademark, patent or copyright.

Among the different intellectual property types, two common but difficult-to-distinguish types are trademark and copyright. 

Do these legal concepts overlap? 

Generally, trademark and copyright are distinguishable by principle. Copyright protects original works while trademark protects distinctive marks. In other words, a trademark is for the business name or logo; while, copyright is for marketing materials, such as product photos.

But nuances in the law are inevitable. An intellectual property may be both copyrightable and trademarkable, such in the case of a product design.

Since a product design functions either or both as a source identifier and/or as an original creation intended for marketing purposes, it may qualify either or both as a trade dress and/or a copyright of a separable design feature on a useful article.

Product design as a trade dress

A product design is registrable as a trade dress. TMEP 1202.02. 

According to Wikipedia, trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. 

Some examples of a trade dress are:

• the design of a product (i.e., the product shape or configuration);
• the packaging in which a product is sold (i.e., the “dressing” of a product), 
• the color of a product or of the packaging in which a product is sold, and the flavor of a product;

To illustrate further, the bag design below(Fig 1) is registered as a trademark or trade dress. 

Note, that the bag design is not a business name or logo but a product design which is nevertheless registrable as trademark or trade dress. 

When not registrable as a trade dress

A product design cannot be registrable as a trade dress if is “essential to the use or purpose of the article or if it affects the cost or quality of the article.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). TMEP 1202.02(a)(iii) (A)

For instance, the Board affirmed registration refusal of the motorcycle design (Fig 2) because the particular design is functional.

In the same vein, the Board refused registration of the “half-moon shaped pull-tab (Fig 3) of an inner container seal”.

The Board had this to say:

“…all of the elements of Applicant’s design affect the performance of Applicant’s pull-tab as a method for removing Applicant’s seals, and that the combination of these design elements results in a design that is, as a whole, functional.” 

Product design as a separable feature of a useful article  

Likewise, a product design is copyrightable as a separable feature of a useful article. Compendium of U.S. Copyright Office Practices, Third Edition, 924.3(F) (the copyright law only protects separable “pictorial, graphic, or sculptural features” that are “incorporate[d]” into the design of a useful article. 17 U.S.C. § 101)

In the case of Mazer v. Stein, the respondent registered a pair of statuettes, which were intended to be used as table lamps “with electric wiring, sockets and lamp shades attached.” 347 U.S. at 202. Pictures of one of these items are shown below. 

A lamp is a useful article, because it provides illumination. The lamp base would also be considered a useful article, because it is normally a part of a lamp, and it has an intrinsically useful purpose: It supports the bulb, socket, and lamp shade. 

Applying the separability test to this element is straightforward. The base is a statuette, and if it was imagined apart from the lamp, it would be considered a sculptural work. The statuette would not be intrinsically useful if it was conceptually removed from the lamp and considered on its own. Id

When not registrable as a copyright

A product design cannot be copyrightable if the product design is inseparable, and if separable, the artistic feature does not qualify as a non-useful pictorial, graphic, or sculptural work on its own. Compendium of U.S. Copyright Office Practices, Third Edition, 924.3(E).

As an example, the Copyright Board refused registration of the oval-shaped design (Fig 4 below) because “no matter how pleasing or attractive a work may be, “copyright law does not protect the overall form, shape, or configuration of the useful article itself.”

COMPENDIUM (THIRD) § 924.3(F); see Star Athletica, 137 S. Ct. at 1010 (recognizing that a design feature cannot “be a useful article” in and of itself 

or “[a]n article that is normally part of a useful article”)

Product design as both trade dress and copyright

A product design which is not useful and separable from an article may qualify for a dual or hybrid IP protection, that is both trademark and copyright protection.

To be clear, there is no registration system for hybrid IP protection. As such, you must file separate applications for the trademark and copyright registration.  

Ask TRADEMARK ANGEL

As rights owner, it is vital that you protect your intellectual properties in this era wherein information are easily accessed online. 

At TRADEMARK ANGEL, we make it our life mission to provide rights owners their intellectual property needs in a strategic, efficient, practical and cost-effective means.

If you are rights owner seeking protection but are intimidated by the complexity of intellectual property or discouraged by the hefty attorney’s fees, you only need to ask, and an Angel from our team will be ready to assist you. 

Contact us to take advantage of some of our free services, such as, a free 20-minute consultation, free preliminary trademark clearance search, and free copyrightability test.