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Short-Term Product Design Protection

As anyone in the design world can tell you, any successful product will be copied the instant it hits the market, and there isn’t much if anything you can do to stop it. The Seventh-Avenue high fashion trade sees this every time a new fashion line is released, but it isn’t limited to that and it happens even with such mundane products as thermostats and cyclonic dust collectors. Copyright protection is unavailable because clothing, and almost all products you might buy are “useful articles” and not subject to copyright unless they are expressly intended only to be displayed as fine art. For useful articles like thermostats, dust collectors or chairs, copyright is not available at all. Trademark protection for a product configuration or design is available only if “secondary meaning” or acquired distinctiveness can be proven, and this typically requires five years or more of wide scale sales and advertising. Design patents can give the manufacturer exclusive rights to the product design, i.e., to its “ornamental appearance”, but the application process, from application to grant of the design patent, typically takes a full year, so there is no immediate protection from copying. A regular “utility” patent takes longer, and does not cover the appearance, but only the construction and/or function of the product.
For American products sold in the American market, there is a period of about a year, or more, when copy-cat knockoffs can compete against your original product without much recourse, if any. We have seen products appear, typically items made in Asia, and these look nearly identical to our client’s product. Often these appear on an Internet marketing web site like eBay or Ali-Baba. Our manufacturing clients find it quite disheartening to have spent great time and expense developing a new product and a market for it, only to give the market up to the knock-off trade. So there is a need for product design protection that can fill in the gap between product introduction and the much later time of issuance of a design patent, trademark registration, which are all that is available now.

Some possibilities may exist, if Congress should happen to enact legislation or modify existing laws.

One possibility is the recognition and protection (for a short time — up to 5 years, perhaps) of unregistered original designs, similar to the law of unregistered product designs that now exists in Britain and in the European Community, i.e., British unregistered design or European Unregistered Design. This requires the owner to be able to prove that his or her product design is original and not commonplace, and that it is not dictated only by functional concerns. The United States does not at this time have a similar law creating that sort of unregistered design right.

Another possibility is to extend the copyright-like protection of designs (Title 17 of United States Code, Sections 1301 et seq.) which could apply a wide range of original industrial product designs, but which right now only cover boat hulls and decks.

One of these, or something like it, may help in detering some of the product copying that affects newly-released products. Creating this small zone of protection is likely to stimulate innovation and investment by deterring copycatting and mimicry. I plan to delve into each of these, i.e., Unregisted Product Design protection and “Boat Hull” type industrial product design protection, in parts II and III, which will be posted at a later date.