How Are Trademarks Different from Industrial Designs (a.k.a. Design Patents)?
Industrial designs (or design patents, as they are called in the U.S.) can be a powerful tool to protect the looks of your products. Find out about similarities and differences between trademarks and industrial designs in this cartoon.
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NARRATOR: Marilyn designed a shoe that’s going to revolutionize the fashion industry.
MARILYN: Yeah, I came up with this idea that if you place this rubber lizard along the insole, shoes become extremely comfortable, and no matter how hot it is, your feet don’t sweat.
MARILYN: I bet there’s gotta be a way to protect this. I gotta call my mentor.
MARILYN: I think I came up with a really cool idea for my shoe collection. What should I do?
JEFF: You should call a lawyer and ask him about trademarks and industrial designs.
MARILYN: Industrial designs?
JEFF: Yeah, that’s how Apple protected the rounded corners of the iphone and squeezed almost a billion dollars from samsung.
MARILYN [dreamily]: A billion bucks!
JEFF: Actually, don’t call A lawyer, come see THE lawyer from the Trademark Factory. He’ll be able to explain how this works in plain English.
TRADEMARK FACTORY: Thank you for coming to see me. How can I help?
MARILYN: I came up with this cool idea that will revolutionize the fashion industry. My business coach told me I should protect it as an industrial trademark design, just like Apple did.
TRADEMARK FACTORY: I’m sure he meant as a trademark OR as an industrial design.
MARILYN: I’m not sure.
TRADEMARK FACTORY: These are two separate areas of intellectual property, even though they may occasionally overlap. Let me explain in plain English.
TRADEMARK FACTORY: Unlike regular patents, or utility patents as they are called in the States, industrial designs don’t protect the functionality of your invention. They only protect the “looks”. They protect the “wow” factor of your invention. In the U.S. industrial designs are called “design patents”.
MARILYN: So, here’s the shoe. This rubber lizard makes it much more comfortable, and your feet will never sweat in it.
TRADEMARK FACTORY: The fact that the lizard is made of rubber or that it makes the shoes more comfortable or your feet less sweaty is NOT something you can protect with an industrial design. It’s because these things relate to the functionality of your invention. You could try to get a utility patent on those things, but that’s beyond the topic of this cartoon.
MARILYN: So I can’t get an industrial design on it?
TRADEMARK FACTORY: Would the same functionality be achieved if instead of this cool-looking lizard, you placed a rubber insert in the shape of Santa Claus?
MARILYN: I’ve never tried that, but I guess it could.
TRADEMARK FACTORY: Then the actual shape of your insert does not relate to the functionality, and you could (and probably should) protect it as an industrial design. But this would not prevent your competitors from placing inserts of other shapes to achieve the same results.
MARILYN: OK, let’s go ahead and do it.
TRADEMARK FACTORY: No so fast. Unfortunately, industrial design protection is very short-lived. Industrial designs are only protected for 10 years in Canada and 14 years in the States.
MARILYN: Yikes! I am planning to sell them for at least 30 years.
TRADEMARK FACTORY: Let’s see if you can trademark it. Trademarks can be protected indefinitely.
MARILYN: Oh, I like that! Hmmmmmmm. If you can protect a trademark forever, why would anyone bother with registering industrial designs?
TRADEMARK FACTORY: Great question. For something to be protected as a trademark, it must be USED AS A TRADEMARK. A trademark is an identifier that allows consumers to tell your products and services from identical or similar products of everyone else.
TRADEMARK FACTORY: Not every industrial design performs this function. For example, some exterior car parts are protected as industrial designs. Just because a car has a unique shape of a side mirror does not make the shape of the mirror the manufacturer’s trademark, because consumers are not distinguishing cars just by looking at the car’s mirrors.
TRADEMARK FACTORY: Remember, I said that there may be an overlap between industrial designs and trademarks?
TRADEMARK FACTORY: The overlap occurs when you have a commercially made product that has a peculiar shape or a design, which shape or design also happens to allow your customers distinguish your product from identical or similar products of your competitors.
MARILYN: So what about my lizard?
TRADEMARK FACTORY: Are you planning to offer these inserts in any other shapes?
MARILYN: No, just the lizard for now.
TRADEMARK FACTORY: Then you can protect it as both an industrial design and a trademark.
MARILYN: Let’s do it.
TRADEMARK FACTORY: In fact, you can register it as two types of trademarks.
MARILYN: What do you mean?
TRADEMARK FACTORY: After you’ve reached some level of success with your lizard, you can register it as a shape trademark, also called the distinguishing guise in Canada, when the trademark protects the shape of the product itself (just like a Coca-Cola bottle), AND you can register it as a simple flat image, just like any other logo.
MARILYN: Yes, I am now using the lizard in all of my branding.
TRADEMARK FACTORY: So there you go!
MARILYN: Ok, so let’s make sure I got it right. We’ll file to register my lizard as an industrial design, as a distinguishing guise and as a regular trademark, correct?
TRADEMARK FACTORY: You got it!
MARILYN: Just saying these words scares the life out of me. I can’t imagine how I can go about doing it all by myself.
TRADEMARK FACTORY: You don’t have to. We’re always there to help you protect your ideas and cover your assets!
Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.
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