We continue our series on how intellectual property can protect additive-manufacturing products and processes.
The Motorcycle Racing Team Will Have to Decide Whether to Pursue IP Protection for Various Aspects of the New Fork Design
The motorcycle racing team will have to make decisions involving all four forms of intellectual property – patents, marks, copyrights and trade secrets. The first two decisions that the motorcycle racing team will have to make relate to the fork’s novel ornamental features and functional features.
Protecting Ornamental Features of the RAPIDFORK™ Product
The ornamental features of the RAPIDFORK™ fork design can be protected by a design patent, trade dress protection or copyright protection. Design patents protect ornamental features of a product. See 35 U.S.C. § 171(a). Design patent protection can be very powerful because it can prevent third parties from independently creating the design or a close variation of the design. However, design patent protection can be more expensive to acquire because you must obtain a design patent from the U.S. Patent and Trademark Office (“USPTO”). Design patent protection only lasts for 15 years after the patent issues for newly filed design patent applications. See 35 U.S.C. § 173.
Trade dress protection can last indefinitely. Trade dress can protect product configurations, product packaging, color or other distinguishing nonfunctional elements of appearance. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). Trade dress can be registered at the USPTO but requires a showing of acquired distinctiveness when the trade dress is a product’s configuration. See Wal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215 (2000). It usually takes at least five years to prove that trade dress has acquired distinctiveness.
Copyright protection may also be an option for protecting certain useful articles. The Supreme Court recently articulated a test for determining whether a design for a useful article is eligible for copyright protection. See Star Athletica, LLC v. Varsity Brands, Inc., ___ U.S. ___ (Slip. op. March 22, 2017). The Court held that a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature can be perceived as a two- or three-dimensional work of art separate from the useful article, and it would qualify as a protectable pictorial, graphic or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.
Copyright protection is weaker than design patent protection because it is used to prevent someone from independently creating the design. However, copyright protection has a longer term than design patent protection. Copyright protection, generally, is less expensive to acquire because the registration process at the U.S. Copyright Office (“USCO”) is not a substantive examination process, so that copyright applications are only examined to make sure that they have met certain formalities.
More next time.