Copyright vs. Design Patent Protection


Copyright protects any original work of authorship that has been fixed in a tangible medium of expression. A work is automatically protected by copyright when it is created; however, copyright registration is required prior to filing a copyright infringement lawsuit. This is important because copyrights are not self-executing; rather, their value resides in the threat of enforcement through litigation (whether that threat is real or merely perceived by the would-be infringer). Copyright consists of a bundle of exclusive rights that include the exclusive rights to reproduce, distribute, display, and perform the copyrighted work; as well as to make derivative works. The term of a copyright extends for the life of the “author” plus 70 years. If, however, the copyright is deemed to have been created by a business, the term of the copyright will be the shorter of 95 years from publication or 125 years from creation. A copyright is relatively inexpensive to procure. The Copyright Office will charge a $55 registration fee. If expedited processing is required, the Copyright Office may grant expected processing for an additional charge of $800. The permissible reasons for granting a request for expedited processing include pending or prospective litigation; for customs-related issues; and in order to meet contract or publishing deadlines. If an attorney is retained to guide the copyright registration process along, attorneys’ fees will likely be approximately $400. Assuming one does not pursue expedited processing, it typically takes between three to six months to obtain a copyright registration.

Design Patents

A design patent protects a new, original, and ornamental design for a useful article of manufacture. A design patent prohibits others from making, using, offering for sale, selling, and importing the patented design. Design patent applications must be filed within one year after the first offer for sale, public disclosure, or public use of design. The term of a design patent is 15 years from issuance. Attorneys’ fees for preparing and filing a design patent application will typically range between $500-$1,000. The U.S. Patent and Trademark Office fees will likely be $480. Further, should a professional illustrator be used to prepare the required graphical depictions of the design, such services would likely cost approximately $500 (on average). A design patent typically takes approximately one year to procure.

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As a final point of comparison, independent creation is a defense to copyright infringement, but it is not a defense to design patent infringement. Copyright infringement requires actual access to the copyrighted work and substantial similarity between the copyrighted work and the accused work. An owner of a design patent need not prove an accused infringer’s access to his or her design.

The Trademark Registration Process

The trademark registration process appears to be a complicated task. Let a trademark lawyer walk you through every step of the process. To simplify things, we will break the entire process down into four phases: Pre-registration, Mark Selection, the Application Form, Evaluation, until you get the verdict on your application.

Phase 1: Pre-Registration

Once you have set up your business, you may have decided to immediately register a trademark. Before doing that, however, there are several questions or considerations that must be addressed.

  • Is a trademark truly what you need? As mentioned earlier, trademark is meant for the protection of physical goods or services. Thus, only companies that manufacture or sell physical goods or provide services are eligible to apply for a trademark. Inventions, literary works, compositions and other types of original art are not covered.
  • Do you need to register a trademark, or will your business name suffice? There are instances where having a registered business name will be enough to identify the company or the products and their source. You may also need to look up local rules and statutes on the registration of business names and see if this is allowed.

If the answer to the two questions is “yes”, you will move on to the next phase.

Phase 2: Mark Selection

The first thing you have to do before you can apply for a trademark is to select the mark that you will use. This is actually the most difficult part of the process, since selecting a mark must be done with a lot of thought, and several considerations coming into play.

First, you have to see if the mark that you want to register is eligible for registration for trademark protection. Is it “registerable”?

There are two basic requirements that will make a mark eligible:

  1. The mark must be used in commerce. Marks meant for personal use, not business, are not registrable for trademark protection. Commerce, in this context, includes territorial commerce (selling of goods and/or services within the state only), interstate commerce (selling of goods and/or services across state lines), and commerce between the US and foreign counties.
  2. The mark must be distinctive or unique. This is so that it can identify and distinguish particular goods or services as produced or provided by one source, and not by anyone else.

There are four categories of distinctiveness that the mark may fall under:

  1. Arbitrary or fanciful – the mark is inherently distinctive. The exclusive rights to the trademark are going to be determined as to priority of use.
  2. Suggestive – trademarks under this category are treated the same way as those under arbitrary/fanciful.
  3. Descriptive – trademarks under this category are only eligible for protection if they have already acquired a secondary meaning in the minds and perceptions of the public, particularly the consumers.
  4. Generic – these trademarks are never going to be protectable, or entitled to trademark protection, since they do not indicate a unique source for the product or service. Instead, they refer to a general class of goods or services.

The second thing to consider is whether the mark that you have selected is strong enough on its own, and if the business will not have a difficult time protecting it.

When selecting a mark, consider the following:

  • Format of the mark: The mark format could be a standard character, a design, or even a sound. It could even be a combination of several types of marks. Here are some of the more common types of marks.
    • Word marks are “standard character drawings”, where Latin characters are used for the letters and Roman or Arabic numerals are used for numbers. It may also occasionally contain common punctuation marks. Examples include the trademarks of Facebook, SONY, PHILIPS and SUBWAY.
    • Design marks are stylized wordings or design, or a combination of both. When submitted for consideration, it must be in .jpg file format and scanned at 300 to 350 dots per inch. It should be between 250 to 944 pixels long and 250 to 944 pixels wide – no more, no less. Examples are the stylized texts for Coca-Cola and Disney.
    • Color marks are slightly more difficult to be registered, since there is a need to submit substantial proof of “acquired distinctiveness”, as well as the logo rendered in color. There should also be a color claim naming the colors featured in the trademark, and where the said colors appear in the overall design of the mark.
    • Shape marks show the three-dimensional configuration or the shape or design of the product. Examples include the SHELL logo, the Coca Cola bottle.
    • Sound marks require submission of the file in various audio formats, such as .wav, .wmv, .wma, .mp3, .avi or .mpg. Audio files should not be more than 5MB and video files have a maximum file size of 30MB. The application must be accompanied by a detailed description of the sound. Examples include the T-Mobile ring tone or the AT&T sound mark.
  • Goods or services that that mark will be applied to: There is a need to clearly identify what products will be using the trademark, or what service will the service mark be applied to.
  • Availability of the mark: This requires obtaining clearance of the mark for use. The purpose of this step is to minimize or eliminate altogether any possible confusion or redundancy brought about by incidences where the same mark has already been registered and is currently in use.

This entails conducting an analysis of all trademarks that are registered with the USPTO, as well as the trademark registries in all the 50 states of the United States. If the product or service is also expected to be sold in countries outside the US, there is a need to check the trademark registries of the countries concerned. You may perform a search on USPTO’s Trademark Electronic Search System (TESS) – this is free of charge.

Phase 3: The Application Form

Once you have selected a mark, you must identify your filing basis. There are two bases for you to choose from:

  1. “use in commerce”: This basis is for marks that have already been used, or are currently in use. Proof must be provided on the use of the trademark.
  2. “intent to use”: This is for marks that have not been used in business yet, but are planned to be used in the future.

Now you are ready to prepare your application.

Initial application forms are available in the official website of the USPTO ( The USPTO offers the Trademark Electronic Application System (TEAS), which allows applications to file their application directly online.

To obtain a filing date, make sure that you comply with all the requirements when preparing your application form. Currently, USPTO has three application filing options available, each with their own corresponding processing fees.

  1. TEAS Regular: For each class of goods and/or services stated in the application, a filing fee of $325 must be paid. A filing date will be issued to the applicant if the submitted form contains the following:
    • Name of the applicant
    • Address of the applicant (for correspondence purposes)
    • A clear drawing or representation of the mark selected
    • A complete listing of goods and/or services of the business
    • A filing fee for at least one class of goods and/or services
  2. TEAS Plus: This option is considered to be the one with the most stringent requirements. Applicants have to pay a filing fee of $225 for each class of goods or services. Aside from the minimum requirements, there are additional requirements that must be met by the applicant.
  3. TEAS Reduced Fee: The filing fee for TEAS RF applications is $275 for each class of goods or services. It is especially meant to promote processing and communication done purely electronically.

Take note that filing an application does not automatically mean the trademark will be registered. In the event that the registration is unsuccessful, the fees paid will not be refunded.

Aside from the processing fees stated above, there are other fees that may be required from applicants.

Phase 4: Evaluation Period to Verdict

This phase involves examination of the application, publication in the Official Gazette, and issuance of a certificate of registration.

Vigilance is a must during the period following the submission of application. Monitoring is done through checking the Trademark Status and Document Retrieval (TSDR) System every 3 to 4 months.

Your application will be forwarded to an examining attorney, who will be responsible for its complete and final review. It is important that you extend complete cooperation with the examining attorney assigned by the USPTO to your application.

In the event that he finds grounds to refuse the registration of your trademark, he will issue an Office Action explaining the reasons thereof. He may also contact that applicant directly if there are corrections or deficiencies of a minor nature that must be rectified.

The Office Action must be acted upon by the applicant within 6 months from the date it was mailed by the USPTO examining attorney. No action taken means that the applicant has already given up on the application for trademark registration.

Now here is a question on most everyone’s minds: how long does it take for the examination to be completed? It may take several months up to a year. It usually takes around 12 months for the examination to be completed and the registration to be issued, and this is when there are no problems with the application. It may take even longer if there are issues, such as incomplete supporting documents, or certain oppositions to the application.

If there are no issues with the application, the examining attorney will now signify his approval of the mark. Approval of the mark by the examining attorney is first manifested through publication in the weekly publication of USPTO, the “Official Gazette”, after duly informing the applicant of the fact. A period of 30 days from the date of publication is provided for any party to come forward with their concerns or oppositions to the mark.

If there is an opposition, the proceedings will be taken to the Trademark Trial and Appeal Board. If not, the USPTO will now register the mark. The applicant, who is now the rightful owner of the mark, will be given a certificate of registration signifying the fact.

That does not end there, however. The new owner of the registered mark has to file certain documents to maintain the registration and keep it alive.

Medical Patents

medical patentsA medical patent is a legal safeguard that provides security for an inventor’s medical idea or product against a subsequent similar idea or product. When the government provides you with a patent — also known as an “intellectual property right” and a key driver for innovation — competitors are prohibited from making, using or selling the patented-protected product for a specific period of time. The U.S. Patent and Trademark Office (“USPTO”) is the agency that has jurisdiction over patent approvals, and generally these patents last for twenty years.

In the medical field, pharmaceutical patents can be filed for certain drugs developed by biotech pharmaceutical companies who wish to shield it from competition for a certain number of years. This lets the company earn profits on their drug before a competitor can develop a similar or generic version, which allows that company to be compensated for the research and development that went into that product.

Patent Licensing

If a drug is protected by a patent, there are some instances where a different company can use the protected product. For example, the owner company can license its product out to a second company, making it possible for both companies to use the product while still providing the owner company with an overall benefit of having that patent.

Medical Patents

To obtain a medical patent, the owner company has to provide the government with enough research and data to get the drug approved by the U.S. Food and Drug Administration (“FDA”). This process can take eight years or longer. Once that patent expires, most of the brand name products vanish as competitors are able to sell generic versions at a much more affordable cost.

In order to avoid this, the owner company will typically file continuous patents in order to prolong the shelf life of the drug and prevent other competitors from doing this. This often leads to constant litigation by both the owner company and the competitor companies. For instance, the owner company can sue in court over the generic version of their patented drug, and the FDA is then forced to freeze the approval of the generic version for 30 months unless the case is settled within that time frame. Because this could be very detrimental to the competitor companies, they try and sue the owner company to invalidate those continuous patents.


Chiacchio IP is an active contributor to industry literature. We also give frequent presentations on topics relating to business patents and other intellectual property.