Difference Between Product Design & Product Packaging in Trademark Law

By John Parker

Whether the subject is a unique product design or specific product packaging, protection of intellectual property rights may involve trademark law. The common trademark element of both product design and product packaging is the distinctive market-significant appearance of the product or package, rather than its functionality.

Trademark

A trademark is traditionally a “word, name, symbol, device, or combination” that identifies and distinguishes the source of goods or services, but has been expanded to include “shapes, sounds, fragrances and colors.” To be eligible for trademark protection, the “mark” must be distinctive and used in commerce. The requirement that it be distinctive describes the extent to which a mark identifies or distinguishes a particular product or the source of that product from all others. The requirement that it be used in commerce may be fulfilled by a showing that the applicant intends to use the mark in the near future.

Trade Dress

Although “trade dress” traditionally covered only the packaging of a product, trade dress protection has been expanded in recent years to extend to the design of a product as well. Trade dress registrations do not protect the functionality of the item -- only its look and feel. To qualify as trade dress, there must be proof that the trademarked aspect has acquired distinctiveness in the market place. This may be established by evidence such as a consistent history of advertising campaigns or results from market surveys.

Protect your brand. Register My Trademark Now

Product Design

Although tangible products have traditionally been protected by patent, they may also be eligible for trademark protection as trade dress to the extent that the non-functional design elements are uniquely distinctive in the marketplace. The aspect of a product’s design that is susceptible to trademark protection is its distinctive market-significant appearance or feel.

Product Packaging

As with product design, to the extent that packaging of a product performs the secondary nonfunctional role of delivering a visually distinctive marketing message about the product and its source, the packaging may also be eligible for trade dress trademark protection. (See Reference 2)

Advantages and Disadvantages of Trademark Protection

The term of a utility patent is 20 years, while that of a design patent is fixed at just 14 years from the date of issuance. Trade dress trademark protection, on the other hand, may extend indefinitely so long as it remains consistently in actual use and its registration is renewed every ten years. However, the showing required to qualify for trade dress protection is far more stringent than that for a patent. The applicant for trade dress trademark protection must establish that the specific design has already achieved distinction in the marketplace. As noted, this may require submission of expensive market surveys or evidence of continuous advertising promotion of the item in the marketplace. The cost of establishing the market-distinction aspect of trade dress trademark protection tends to limit its use to products and packaging that are the subjects of well-funded, widely distributed marketing campaigns.

Protect your brand. Register My Trademark Now
Are Company Slogans Copyrighted?

References

Resources

Related articles

How to Trademark a Tag Line

A trademark is a symbol or combination of letters or words that distinguishes the products of one seller from those of all others. Whether it consists of a symbol, such as a stylistic logo, or simply words, such as a tag line or slogan, a trademark must be unique. Securing a trademark can be accomplished in its most basic form by simply using it in commerce, but formal trademark registration of a slogan offers valuable benefits.

Difference Between a Logo & Trademark

Trademarks include company names, logos, slogans and designs used to identify and distinguish a company's goods in its business trade. The physical mark can be a word, sign, symbol or design that identifies the trademark owner. A trademark must be a unique identifying mark, specifically associated with the goods or services that a company offers in commercial trade. One type of trademark includes the company logo. A logo can qualify as a trademark -- if it meets the minimum requirements. To qualify as a trademark, a logo must be a unique mark used to identify and distinguish the company's goods or services offered in the marketplace. Strong logos often become easily recognizable trademarks throughout society.

Can I Trademark Before I Sell the Product?

Since the federal trademark registration process takes several months, it makes sense to apply for trademark registration as soon as you design your mark while in the initial stages of product development. Your company can file a federal trademark registration application before you sell any products. You can also potentially secure common law trademark rights in your name, logo or slogan through actual use in the marketplace, such as pre-sale marketing. Under common law, a company automatically secures trademark rights once the original mark is used in association with its goods or services offered in the marketplace.

File a Trademark Online. LegalZoom. Learn More.

Related articles

How to Trademark a Shape

A trademark is phrase, symbol or design element that identifies the brand of a product or service. Unlike a copyright ...

Do You Have to Trademark Paintings?

A trademark is an emblem or phrase that uniquely identifies goods and services in the marketplace. Trademark rights ...

How to Copyright a Logo on Shirts

As established under Article 1, Section 8 of the U.S. Constitution, copyright promotes creativity by giving creators ...

How to Identify a Trademark

According to the United States Patent and Trademark Office, a trademark is essentially the same thing as a brand name. ...

Browse by category
Ready to Begin? GET STARTED