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Written Assignment I - Advice for Question 1

Dear Client,

Your new shape for a packaging peanut should deserve the protection of intellectual property rights. The packaging shape may be protected by either a trademark or a design patent. And the protective scopes of these two rights are different. Concerning the term of protection, the trademark will be effective forever as long as you keep using it in commerce, while a design patent only has a fourteen-year term for the date it was granted. Concerning infringement, a potential infringer may get out off a suit by providing a different trademark causing no confusion, mistake or deception of your trademark, while a patent has stronger protection because the difference between an accused product and your patent may not let the accused product leave the boundary of the patent scope.

Besides, the requirements for these two rights are also different. “Trademark” includes any word, name, symbol, or device, or any combination thereof. To get a trademark, you have to use the trademark in commerce and associate the trademark with your goods. Additionally, a trademark should not cause likelihood of confusion with the sources of other goods. “Design patent” is defined as any new original and ornamental design for an article of manufacture. You do not need to use a design patent in order to earn its right. However, since the examination of “design patent” is not conducted by types of goods, any similar designs used in other goods may become a ground for rejecting the design patent application, while the examination of “trademark” will focus on the same or similar goods so that the scope of the prior art is smaller.

In your case, the packaging shape is surely a kind of device so that it is a subject matter of “trademark.” And this shape design may also be qualified as a design patent. If your packaging peanut product would be sold for more than 14 years, you are recommended to file a trademark application. Otherwise, you may choose design patent protection. You may not acquire both rights because the Supreme Court of the United States once rejected protection of a trade dress for an expired patent. See, e.g., TrafFix Devices v. Marketing Displays, 121 S.Ct. 1255 (2001). Although in TrafFix Devices the disputed patent was a utility patent that must be functional, it may be possible that the bar will extend to design patents.

No matter whether you file a trademark or design patent application, the process will begin by searching registered trademarks or published patents or applications. After the documents are collected, the strength of the shape as a trademark or a design paten will be evaluated. Then, relying on your market strategies and business goals, we may continue to make a decision whether to file a trademark or a design patent.

After the application of a trademark or a design patent was filed, it will be allowed if the examiner thinks that a trademark has acquired distinctiveness or that a design patent is new, original and ornamental. If the application is rejected, then we have to continue arguments by any necessary procedures. Meanwhile, under no infringement threat, the shape should be continuously used in commerce in order to meet the trademark requirements.

Conclusively, if the market is ready, your new shape for a packaging peanut should be protected by intellectual property rights so that your position in the market would be firm. I wish my explanation and recommendation would help you further make a decision. I look forward to your further requests and instructions.

Sincerely