Close your eyes. Can you picture the Coca Cola bottle? Can you picture the Absolute vodka bottle? That is powerful branding. Just hearing the name conjures up an image. Out of the hundreds of brands of beverages, you can identify these products on the store shelves because you know what the bottle looks like.
Now, imagine this situation. You have worked hard to create the perfect craft beer and it is an instant hit with customers. You spend the money to increase production, investing in more equipment and labor to make as much of this beer as you can sell. It becomes a stable and significant part of your brand line-up. Consumer demand encourages you to invest in a bottling line and distribution agreement to sell your bottled beer in grocery stores, restaurants, bars and beer specialty stores.
After all of this investment, your loyal customer stops at the local store to pick up a six pack of your popular beer, quickly finding it because of the unique and distinctive bottle design. But, he or she takes a sip, expecting that familiar taste, only to be surprised by an imposter using a look-a-like bottle. You lost a sale, and hopefully not a loyal customer. No matter how you size it up, this is a negative situation for your bottom line.
How do you prevent this? Losing customers may make it impossible to repay the debt you undertook for the new equipment, labor, and bottling line. Even worse, instead of self-distribution, the use of a distributor has severely decreased profit margins. This threat is real and significant. You need to prevent it.
Do you have a unique bottle or growler design? A unique bottle closure or serving glass? A unique tap design? Have you taken the steps to protect it? Design patent protection is not a new strategy (more than a century old in the brewery industry), but it is an often overlooked and powerful tool in your brand protection toolbox. Protection is easier and more affordable than you may think and can really enhance your branding and ability to ward off competitors and copycats with “highly inspired” designs that are confusingly similar to customers. There are two main legal strategies used to protect these brand assets: design patents and trade dress (a form of trademark protection). In this article, we will look at design patent protection.
Design patents protect a design (but not the functionality) of a product. Design patents protect the “ornamental design” of a product (“article of manufacture”). In other words, a design patent protects the way something looks, not the way it is made or used. Protection is based on the configuration, surface texture, colors, size ratios, relative arrangement of parts and other esthetic aspects of the product. The design must be repeatable as an article of manufacture.
In the United States, design patents are granted through an examination process, where the applicant undergoes a back and forth “patent prosecution” process with the U.S. Patent Office, arguing and supporting why a design patent should be granted. To get a patent, the design must be new, non-obvious (meaning that it is not an obvious variant of an already existing design), and the design must not be solely dictated by function. A product infringes a design patent if an ordinary observer, familiar with the prior designs of the same type, would be deceived into believing the design of the product is substantially the same as the patented design.
If a product is found to infringe, then a court can either order the maker, importer or seller of the product to stop making/importing/selling the product and/or to pay the owner of the design patent damages. Damages for infringement can be quite substantial, in fact, a court can award design patent owners the total profits of an infringing product. In the alternative, a court could award the design patent owner a reasonable royalty or the design patent owner’s lost profits.
What is needed to get a design patent? Photos, a prototype or detailed drawings of the protected design and legal fees. Typical fees range from $1,500-$10,000 for a decade and half (15 year) monopoly over the protected design. This is incredibly affordable legal protection ($150-$1,000 per year). The caveat, you must protect new designs (less than 1 year in commerce) and cannot protect old designs. For those, you must rely on trade dress protection. Alternatively and additionally, you can update and refresh your existing designs so they are new and eligible for protection.
What are you waiting for?
Don’t know where to go? TracyJongLawFirm.com is one resource. Transparency: the author is the owner and patent attorney at this firm.