How to trademark a design: A Full Guide

Your brand's visual identity is an extremely important part of your business. To protect it from legal infringements that can sully its reputation you should look into trademarking its design which includes its logo, labels, and packaging. Many want to know how to trademark a design so we made a comprehensive guide to help anyone struggling with navigating the world of trademarks!

Trademark, copyright, patent: understanding the difference when it comes to registering a design.

The first step to take when it comes to registering your design with the U.S. Patent and Trademark Office (USPTO) is to understand the distinctions between trademarks, copyrights, and design patents. Depending on the nature and use of your design, you may qualify for multiple forms of protection.

A trademark protects your right to use a design that serves as a distinctive identifier for your business's goods or services. This could include logos, labels, or product packaging — trade dress. By using the design in commerce, you gain trademark protection, reinforcing your brand's identity and preventing others from using similar designs in a confusing manner.

Copyright protects original works of authorship fixed in a tangible medium. Original artwork in a logo may qualify, but names, short phrases, familiar symbols, and simple variations in lettering or color are not protected by copyright on their own. Creating a design does not by itself establish that every part of it qualifies for copyright protection. Trademark and copyright protect different interests, so the relevant protection depends on what the design contains and how it is used.

Meanwhile, a design patent protects the ornamental design elements of a functional object, such as a smartphone or lamp. Obtaining a design patent involves applying to the USPTO to protect the aesthetic features of your design. This form of protection is distinct from trademarks and copyrights, focusing specifically on the visual appearance of a functional object.

It's worth noting that a single design may be eligible for multiple forms of protection. For instance, the Coca-Cola Company has secured both design patents and trademarks for its iconic bottle design over the years. Similarly, your company logo could qualify for both copyright and trademark protection, underscoring the importance of understanding and leveraging various avenues to safeguard your intellectual property rights effectively.

Types of visual designs that can be trademarked.

If you decide that your use of visual designs requires commercial protection of trademarks, you should familiarize yourself with the different types of trademarks.

• Logos
• Designs for products
• Designs for product labels or packaging that help people know where the product comes from (like the curvy Coca-Cola bottle)
• Color combinations that help identify your product and make it different from others

You can check our full list of types of trademarks here

Trade dress protection for products and packaging

A product's appearance can sometimes identify its commercial source, even when the customer does not read a name or logo. Trade dress is the term commonly used in US trademark law for that source-identifying appearance. It can involve a product's configuration or the presentation of its packaging, including an arrangement of shapes, colors or graphics.

An unusual or attractive design does not automatically qualify. The assessment asks what features are claimed, whether those features are functional and whether buyers recognize the claimed appearance as identifying a source. A registration for the logo printed on a box does not automatically register the appearance of the box itself.

Product design and product packaging follow different US rules

Product design concerns the product itself, such as the configuration of a lamp. Product packaging concerns the presentation around the product, such as a distinctive combination of features on a food package.

US product-design trade dress is never inherently distinctive. Registration on the Principal Register requires acquired distinctiveness, also called secondary meaning: evidence that consumers associate the design with a particular source. Product packaging may be inherently distinctive, depending on its overall impression and marketplace context. Packaging that is not inherently distinctive generally needs acquired distinctiveness for the Principal Register. Ambiguous cases are treated as product design.

Color alone has its own distinctiveness rules. Do not assume that a color claim qualifies for registration merely because it appears on packaging. The USPTO trade-dress guidance explains these distinctions and the separate functionality inquiry.

Functional features cannot be rescued by brand recognition

Trademark law does not provide a perpetual exclusive right over useful product features. In the United States, functionality can arise where a feature is essential to the article's use or purpose, or affects its cost or quality. The review can consider utility patents, advertising that promotes practical advantages, available alternatives and manufacturing evidence.

For example, a container's shape may help it stack efficiently or dispense its contents. That benefit needs a functionality assessment even if customers recognize the container. Showing that another shape could also work does not, by itself, resolve the issue. Aesthetic functionality can also matter where exclusivity would place competitors at a significant disadvantage unrelated to reputation.

Evidence of consumer recognition does not overcome a finding that the claimed matter is functional. The Supplemental Register is not a workaround for functional matter either. Review the claimed combination as a whole as well as the role of its individual features.

Build evidence that customers recognize the appearance

Sales show that a product has customers; they do not necessarily show that customers treat its shape or packaging as a trademark. Evidence needs to address the claimed appearance itself, rather than only the word mark displayed beside it.

Useful records may include consistent use over time, advertising that draws attention to the relevant visual features, unsolicited coverage identifying those features with the business, and properly designed consumer-survey evidence. Preserve the context and dates. A statement that the company has used the design for five years is not automatically sufficient for a product-design claim. The USPTO guidance on evidence of acquired distinctiveness explains how the evidence is assessed.

Consider how you would explain the proposed mark without relying on the brand name. If the explanation is only “our overall style,” the claim probably needs a more precise description before anyone can assess it.

Define the claim in the drawing and description

A trade-dress application needs a drawing and description that make clear which features form the mark. A photograph of an entire product is not a substitute for deciding what is being claimed.

In a US application, unclaimed matter and certain unregistrable features may need to appear in broken or dotted lines. The description must explain those lines and match the drawing. Functional matter cannot simply be kept within the claimed mark by adding a disclaimer. Required specimens must show the claimed mark as it is actually used with the identified goods or services.

Have a trademark professional review the drawing, description, goods or services and supporting evidence together. Small presentation choices can materially change the scope of an application.

An example with packaging and a functional closure

Imagine a business selling tea in a box with an unusual arrangement of geometric panels. The box also has a closure promoted as keeping the contents fresh. This is a hypothetical example, not a finding that any particular packaging is registrable.

The business should first separate the proposed visual claim from the closure's practical features. It would investigate whether the panel arrangement is distinctive in the relevant market, whether it performs a functional role, and whether earlier brands use confusingly similar presentation. The closure's usefulness cannot be ignored simply because it sits inside a recognizable overall package.

The application plan might focus on a defined, nonfunctional packaging presentation, with other matter excluded where appropriate. It should not assume that registering the brand name also protects the box, or that filing for packaging gives ownership of every geometric pattern in the product category.

Canada requires a separate analysis

Canadian applications use categories such as a three-dimensional shape or a mode of packaging goods. CIPO's non-traditional trademark guidance explains the statements, representations and descriptions required. “Distinguishing guise” is an older term, not a separate current filing category to select.

Under section 12(2) of the Trademarks Act, a mark is not registrable if its features are dictated primarily by a utilitarian function. Under section 32, specified non-traditional marks, including marks consisting exclusively or primarily of a product or packaging shape or a mode of packaging, are subject to evidence requirements establishing distinctiveness at the filing date. The registration can be restricted to the goods, services and Canadian territory supported by the evidence.

Do not assume that US packaging rules, a US registration or recognition in another country settles the Canadian assessment.

Understand the limits before relying on trade dress

Trade dress does not give a business ownership of a general aesthetic, a useful idea or every similar-looking product. A dispute requires analysis of the protectable features, the scope of the rights, the relevant market and the applicable legal test, including likelihood of confusion where required. Copying alone does not answer all of those questions.

Other rights may be relevant. Design patents in the United States and industrial-design registrations in Canada address eligible aspects of appearance under their own rules. Copyright may apply to eligible artwork. Those rights have different requirements and limits; trademark protection does not automatically extend an expired patent or design right.

Before investing in packaging, prepare photographs of the proposed appearance, a list of claimed features, design and patent records, examples of competing products, dated marketing materials and the countries where protection matters. Review trade dress alongside the brand name and logo so that one application is not mistaken for protection of every asset.

For fashion-specific issues, see our separate article on clothing designs and trade dress. This overview provides general information and is not a legal opinion on a particular design or dispute.

Making sure you have a strong logo design is crucial before you try to trademark it. Your logo can include your company name, logo, or both, but it needs to be unique and represent your brand well. If it looks too much like another trademark that's already registered, it might not get approved, and you won't be able to trademark the image. You want your logo to stand out and be easily recognizable.

Here are some tips to design a trademark logo:

1. Choose a unique image or graphic instead of something generic.
2. Keep it simple and clear, using colors and space effectively.
3. Use easy-to-read fonts and typography.
4. Ensure your design reflects your brand identity and appeals to your target audience.
5. Stick with your logo design once you've chosen it. Changing it means updating your trademark application, which can be time-consuming and costly.
6. Check the U.S. Patent and Trademark Office's database to see if your desired trademark or something similar is already in use. You can search for both word trademarks (like your brand name) and design trademarks.

If you need to strengthen your logo, you can create one online for free using Adobe Express. Starting with a strong logo is essential as your business grows. The more successful you become, the more likely other companies will try to copy you. By trademarking your logo, you're protected by federal law, allowing you to focus on growing your business without worrying about trademark issues.

For a new U.S. trademark application, use the USPTO’s Trademark Center. Before you file, prepare the correct owner information, filing basis, goods or services, and a drawing of the mark. A logo or other design generally requires a special form drawing and a description. The requirements below help you prepare that information.

• Your trademark application needs to include a picture of your design.
• A logo or stylized design uses a special form drawing. If color is not claimed as a feature of the mark, submit the drawing in black and white. If color is claimed, submit a color drawing, identify the colors, and describe where they appear. This drawing choice does not remove the other requirements for registration or determine the outcome of every dispute over a similar design.
• If your design has colors, your application must say which colors are used and where.
• For applications under Sections 1 and 44, the USPTO base application fee is $350 per class. Additional fees can apply, including $200 per affected class when you enter goods or services in the free-form text box instead of selecting them from the Trademark ID Manual. Other surcharges or later filing fees may apply to your application. These are government fees; professional fees are separate.Check the current USPTO fee schedule before filing. You can also estimate the government fees with our calculator.
• Filing an application does not mean your trademark is registered. The time to registration depends on examination, any objections or opposition, and the filing basis. An intent-to-use application also requires an acceptable showing of use before registration. Use the USPTO’s current processing times and application timelines to plan; they are estimates, not a deadline or a guarantee for your application.

If you are deciding how to protect a name or design, review our name and logo guide. For help with a trademark application, compare the filing and registration service and the current package terms before choosing your next step.

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