By Joshua L. Cohen
The following article is an excerpt from an article first published in the Corporate Counsel Supplement of The Legal Intelligencer and The Pennsylvania Law Weekly on December 2, 2002.
Mammoth resources are required to launch new consumer products. Engineering efforts produce a consumer product that performs while industrial designers add consumer appeal to the product and marketing campaigns bring the resulting product to the attention of consumers. The commercial success (or failure) of such consumer products depends not only on the way they function but also on their form and aesthetic appeal.
Strong intellectual property protection for consumer products can prove to be a valuable and long-lasting asset. Caution is required, however, in reconciling the tension between the process of consumer product design, during which form and function are blended, and the various modes of intellectual property protection, which tend to pit form against function. To enhance and extend product protection, intellectual property strategy, design management, and marketing management must be coordinated from the outset.
The Design Process: Blending Form Into Function
Industrial designers enjoy friendly debate over the notion that form follows function. It is seen by some as an admonition that designers must first consider how a product works and then consider its appearance. Others view “form follows function” as a law of nature—a pleasing appearance will naturally follow if a product is designed to function well.
There is no debate, however, that virtually all consumer products are characterized by features that perform a function and by features that provide a pleasing form. Ideally, consumers should not be able to easily discern where form begins and function ends. This seamless blend of form and function is often reflected in product promotions. Cadillac advertises its Escalade as “The Fusion of Design & Technology.” David Yurman calls his designer watches “A Fusion of Art and Science.” Even the toilets of Toto Ltd. are advertised as “Performing Art.”
Design Protection: Dividing Form From Function
While industrial designers blend form into function, the legal modes available for protecting consumer products erect a barrier between the two. On one hand, a product’s function, as embodied in its useful features, can be protected for a limited period of time by obtaining a utility patent. On the other hand, protection is also available under our intellectual property laws for the ornamental features of a product’s form (i.e., the three-dimensional contours and shapes that define a product's configuration and overall appearance but that are not critical to its function). Specifically, design patents are often used to protect, also for a limited time, a product’s ornamental configuration.
Non-functional features also include those elements of a product’s form by which consumers can identify the source of the consumer product. Such non-functional features may thus serve as trademarks, to the same extent as words and logos, or as protectable trade dress. With respect to product configurations in particular, trademark and trade dress protections are available for any non-functional element of a product’s configuration that has acquired a "secondary meaning" in that its primary significance is to identify the source of the product as opposed to the product itself in the minds of the consuming public. Unlike utility and design patents, however, trademarks and trade dress do not expire so long as they continue to identify a product's source.
Non-functional elements of a consumer product's configuration can enjoy dual or overlapping protection through design patents and potentially long-lasting trademark and trade dress protections. Trademark protection is not precluded for product configurations that were once protected by a design patent even after the design patent expires. For example, Honeywell International Inc. still enjoys trademark protection for the configuration of its dome-shaped thermostat cover despite the fact that the design patent for that thermostat cover expired long ago in 1970. Utility patents are therefore available to protect those features that are deemed functional, while design patents, trademarks, and trade dress are reserved for those non-functional features that make up a product’s form.
Coordinated efforts to protect the fruits of costly product development can give rise to valuable rights that may otherwise be compromised or lost. An integrated campaign to enhance and extend intellectual property protection for consumer products should involve at least:
● Coordinating the efforts of the company’s design management, intellectual property counsel, and marketing leadership with respect to the launch of a consumer product and the procurement of intellectual property protection for that product.
● Guiding designers to affirmatively introduce features into the configuration of the consumer product that can give rise to future trademark and trade dress protection.
● Segregating those features of the consumer product that are primarily functional from those that are primarily ornamental.
● Taking a consistent position in marketing programs throughout the life of the consumer product with respect to which features are primarily functional and which are primarily ornamental.
● Avoiding the attribution, by intellectual property counsel and marketing management, of functions to features that are primarily ornamental or capable of source identification.
● Establishing a clearinghouse for the review of designs proposed for a consumer product, the marketing materials proposed to promote the consumer product, and the utility and design patent applications proposed to protect that product.
Management should be actively involved in coordinating these efforts. Assuming that an integrated program is established, companies can continue to promote their consumer products as “The Fusion of Design & Technology” yet preserve the distinction between form and function that is necessary to enhance and extend intellectual property rights.