Trademarks on Shapes: How to close the vulnerability gap

Attorney Michael Lasky discusses the challenges of using shapes as a trademark.

Contact Michael Lasky

Email: [email protected]

Phone: (404) 441-1750 or (952) 253-4106


I want to take three minutes of your time to talk about a very special area of brands and trademarks, which could be extremely valuable to you and it’s the ownership of the shape of your product or the screen on a piece of software as a trademark. Now you already have a trademark on your company or your product but the product itself or the interface for the product could itself be a trademark. So let’s talk about it and there is a secret problem that we need to solve called the vulnerability problem and I show you a technique to how to get around that.

Now there are lots of different kinds of trademarks besides words; color, if you see a house that’s wrapped in pink insulation it came from Owens-Corning I guarantee it. You hear the three notes from NBC its NBC. If the Doughboy is getting punched in the stomach, the motion of him being punched in the stomach is a registered trademark. And the unique green bottle of Perrier is well known as a trademark of Perrier. But products themselves not just the packaging and all these other things, the product itself can be a trademark. You’re working there at an iPhone 3 it is an trademark and was involved in a very large lawsuit with Samsung, I’m sure you heard about that.

So how do we get there? Now here’s a bunch of examples of products that are shapes. The Coca-Cola bottle, the iPhone, this one you may not know, which is KitchenAid’s mixer, Tide pods, and the three by four squares on a Hershey bar is a trademark not just the name Hershey, and of course, Honeywell thermostat, which I know quite a bit about because I was involved in that one.

Here’s’ the vulnerability problem, which comes with that. First of all, let’s talk about general vulnerability. When you launch a product or before you launch a product there’s no risk nobody knows about your product, but the day you launch the risk will rise because the product is now visible in the world. Sometimes that risk will continue to rise but more often than not, it will actually fall a bit and that’s because your competitors are going to wait to see whether your product is going to be successful or not. And if you fail they’re happy to let you do it, if you succeed they’ll be back and there’s going to be a point at which they want to copy your concept, the shape of the concept, for example, and you need to own it. But you’re going to be vulnerable in this period so let me show you how that works.

Take an example of Beats, you know these little earbuds are really good but Beats decided that they could convince the market that you really want to wear really heavy ones instead of these really light ones. When they came out on the market, everybody says you’re going to fail and that was when that vulnerability dipped a little bit. And then when they didn’t fail, it rose up and everybody wants to copy them. So what to do? You cannot get a trademark on the shape of a product until you prove that the public recognizes the product, which is the legal words for it has acquired distinctiveness. In other words, when I see an iPhone I know it’s an iPhone and when I see a Samsung, I think it’s an iPhone. That doesn’t happen overnight it happens over a long period of time. In that period of time, your shape, your brand is vulnerable. What to do?

The solution is one you wouldn’t expect. To protect in that gap zone, which can be server years depending on how rapidly market, you need another tool and that took is a design patent. A patent not a trademark can fill that gap because design patents can be issued within 12-18 months of filing, which is way earlier than most trademark, can acquire sufficient distinctiveness to be registerable and ownable, so we can fill that gap.

Now what is a design patent? It is a patent not like a utility patent, a patent that covers the way things look not the way things work. There’s the design patent on the iPhone 3. There’s the design patent on the iPhone 3 interface so two-dimensional interfaces are also patentable as designs.

So let’s go back to our vulnerability chart. Same as before but here we don’t have a acquired distinctiveness until long after we file, launched, buyer acceptance, buyer demand, now we’re ubiquitous, we’re really there with acquired distinctiveness and we can file our trademark. But what about this gap? And by the way, it isn’t enforceable until you register it so that takes even longer. So this whole window is vulnerability. If you’re competitors copy you in this window you will never get to acquired distinctiveness because you won’t be distinctive everyone will have copied you. You need something to fill the gap.

Now let’s overlay design patent. Because it’s a patent, you have to file it within a certain amount of time. So we’ll file right away and we’ll get our grant maybe in that dip in the vulnerability curve. Now we have a very small window of vulnerability while we are building up for the registration of our shape trademark.

You see how we can use the two together to take care of the vulnerability problem. Here’s an example of Tide, they created this pod but they also created the container for the pod and the patented it in multiple ways to prevent competition from copying them. When they will have acquired distinctiveness in the bottle, I don’t know but they don’t need it because they have a 14-year design patent.

Design patents are also really easy to get. This shows that they are 85-95 percent of the ones that are filed will be granted. In the world of regular patents, utility patents it’s more in the 50-60 range so the likelihood of getting a design patent is very high.

So that is our plan, file a design patent early, get protection, and then build towards this greater – get rid of this vulnerability gap, and then once we have our registered trademark for the shape it is perpetual, we’ll have it forever.

So a last comment on why you should do this and that is innovation without protection is philanthropy, so you might as well get protection.

So that’s how you can get protection on shapes and cover the vulnerability gap. I hope that helps. Thanks very much for listening, bye.