This article is part of #DESIGNIPR, an online guide to making your design business more profitable, more competitive and safer on the international markets with the support of IP rights (IPR). Written by legal adviser of Ornamo Jussi Ilvonen, the online guide gives an overview to markets and law in the EU, US, China and Japan.
Part 3: IP protection for design businesses in the United States
In overall, in the US the IPR protection is very similar to, for example, the EU, which is largely due to a number of international IPR treaties in the background. However, as shown later on in this part of the IPR guide, there are also a number of small and sometimes in practice very significant differences. Therefore a good preparation prior to doing design business or business with design products is highly recommended.
Successfully entering the US market in the first place can be a very difficult operation. The amount and intensity of competition is high and e.g. in the case of patentable inventions it can be also relatively aggressive. Court trials and other means of IPR dispute resolution are generally expensive also in the US, so pre-emptive strategic planning of the protection of one’s design and business around it is key – including especially liability limiting contractual clauses with one’s local manufacturer-, distributor- and other partners, and possibly also company IPR insurances.
Due to United States’ legal nature as a federation, both state and federal legislation should be taken into account with IPR protection and strategy. This being said, in most cases IPR protection may be registered throughout the country via the federal IPR officials, U.S. Patent and Trademark Office (USPTO) and U.S. Copyright Office. Let’s take a bit closer look on different IPR protection options for a design business in the USA.
Copyright (Finnish: tekijänoikeus)
- copyright is born automatically to the author of a creative work (never to a company or other non-human entity) for creations that are considered ”original” in the legal sense
- protects all kinds of literal, artistic and scientific works, including design.
- major difference to e.g. Europe: copyright may also be registered. Similarly to e.g. registered design rights a.k.a. design patents, this may help a great deal with providing evidence in case of a claim or an infringement by a third party. Cost starting from around 45 US dollars.
- the duration of protection: until 70 years has passed after the author’s death
- similarly to e.g. Finland, copyright ”originality treshold” for works of applied art are generally high, which means that a designer or any other commercial user of such type of designs should not easily assume, that one’s design is automatically protected by copyright.
- More information.
Design patent (in other parts of the world also known as design right. Finnish: mallioikeus)
- protects the appearance of a product or a part of a product, consisting of e.g. forms and decorations
- Protection can be obtained only via registration. Registration may be done by two different routes:
- a) filing a national US design patent application in the USPTO, using a local attorney, or
- b) filing an international application via WIPO’s Hague system
- Generally, the requirements for obtaining a design patent in the US are
- a) novelty. The design must not be disclosed prior to registration.
- b) individual character. The imaginary ”informed user” would find the design different from other designs that are available to the public.
- c) result of creative work (purely technical features of the design cannot be protected with design rights)
- Maximum duration of protection is 15 years from the date of grant, cannot be renewed.
- Registration cost: U.S. patents starting from around 500 dollars, plus attorney fees
- Registration processing time usually 9 to 14 months
Trademark (Finnish: tavaramerkki)
- protects various types of signs included in goods and/or services, e.g. words, logos, phrases, words, names, symbols, or even non-functional designs. Trademarks protecting services are also called service marks. Like in all other countries, the protection is in force only in the selected classes of goods and services.
- A trademark can be obtained in two ways in the US:
- a) national application(s) to USPTO, using an attorney
- b) international application via WIPO’s Madrid system . Note: the applicant must have a prior registered (or pending) national or EU trademark prior to filing via Madrid system
- Generally speaking, trademarks must be registered in order to be in force. Exception: well-known marks may have protection also without a registration. It is always safe to assume, in the absence of solid market data, that your own trademark isn’t protected unless it’s registered.
- Requirements for registration: the registered mark must be
- distinctive in relation to prior trademarks,
- non-descriptive (e.g. name ”Soda” for soft drinks would not be registrable, but for shoes might be)
- non-functional (i.e. not essential for the use or purpose of the product or service)
- not contrary to accepted principles of morality
- used in commerce
- Duration of protection: a trademark registrations is valid for 10 years, but can be renewed unlimited times. This may be a very important strategic issue to keep in mind.
- Obligation of use: if the mark is not in use while filing for a trademark in the US, the US application may be filed on an ”intent to use” -basis (ITU). The trademark will not be fully registered, however, until further proof of use before the USPTO.
- Cost: varies, also depending on the number of goods and service classes, where the mark is desired to be in force. Roughly registration costs 225-600 dollars plus attorney fees 500-2000 dollars.
- More information.
- very similar to trademark and design patent, but protects the look and feel of a product or a service; size, shape, textures and graphics.
- registration requirements: distinctiveness, non-functionality
- Trade dresses can be protected via registration or without it
- unlike a design patent, the object of protection such as design doesn’t have to be new
- Famous US trade dress protections: the sole of Louboutin shoe, the shape of Coca-cola bottle, the red sealing wax on Maker’s Mark whisky bottle, the red tab on Levi’s jeans
- Duration of protection: valid 10 years, can be renewed unlimited times
- Cost: similar to trademark
- More information.
Utility patent (known in e.g. Europe simply as a patent. Finnish: patentti)
- protects inventions related to a) articles of manufacture, b) processes, c) machines or d) compositions of matter, or e) ”any new and useful improvement thereof”. Even business methods may be patentable in the US. An utility patent essentially gives the exclusive right to deny others from using the patented invention.
- three routes to registration in the US:
- a) Finnish national patent application (with PRH), and then filing priority application with the USPTO within 12 months from the filing date of the national application.
- b) application directly with USPTO
- c) international level, through the Patent Cooperation Treaty (PCT) system
- requirements for registration:
- a) novelty. The patentable invention must be new, i.e. not disclosed to the public. The novelty will be compared by patent registration officials to the existing knowledge in the relevant technical field, which in part results in a relatively long registration times, even many years.
- b) non-obviousness. The invention must not be obvious to a person with ordinary skill in the relevant field.
- c) utility. The invention must have some beneficial function and it must perform as alleged.
- Grace period: if the inventor files for a US patent within 12 months after disclosure of the invention, it is still patentable, i.e. novelty requirement does not forbid patent registration. This is also called as ”grace period”, and it is not in use for patents in most other countries of the world.
- Duration of protection: 20 years from filing the application (whereas with a design patent the term is 15 years from the date of grant)
- Costs: relatively high, roughly estimation: thousands of euros per patent, depending especially on how many countries are included in the patenting
- More information.
Some other forms of IP protection for designers to be aware of
- Trade secrets (not registrable, but licensable)
- Company names (must be registered separately in each State, with the exception of public LLCs)
- As with in all countries, the role of contracts as a complementary tool for IP protection is key also in the US.
- Part 1: Design business outside Finland: the supporting role of IP rights?
- Part 2: IP protection for design businesses in the EU
#DESIGNIPR is part of Ornamo’s national IPR project supported by the The Ministry of Education and Culture Finland.