Yes, you can trademark a design when buyers recognize it as the sign of who makes the product or provides the service. A logo and the shape of a product face separate tests, and a graphic that only decorates a shirt or appears in an ad has not earned the role of a brand. Decide which design you want to protect before filing in the United States, because that choice sets the evidence you need.
Which Kinds of Design Can Qualify?
A graphic logo is the simplest case, since the application covers the image as drawn for the goods or services you list.
A logo printed on a box is a graphic mark like any other. Claiming the look of the box itself is a claim on the whole package, which can succeed without proof of buyer recognition as long as it stands apart from ordinary containers in its field and serves no practical purpose. If your question is the printed branding, start with protecting the branding on your packaging.
The shape of a product is the hardest design to register, because the main federal register requires evidence that buyers already treat the appearance as identifying its maker, such as years of sales, advertising that points to the shape, or consumer surveys. Trademark lawyers call that proof acquired distinctiveness.
A single color claimed on its own needs the same proof and cannot serve a practical purpose such as hiding wear. Picking the colors inside a logo is an ordinary drawing decision.
When Is a Design Just Decoration or a Useful Feature?
The USPTO uses a shirt to draw the line between branding and decoration. A small animal design at the chest looks like a brand, because that is where brand marks usually sit. The same animal printed large across the front reads as the design of the shirt itself. Size, placement, and what the image means to buyers all affect how an examiner reads it. If your artwork is the product, also use it the way a brand is used, on hang tags and labels.
A useful feature fails for a different reason: trademark law will not let one company hold permanent rights over a mechanism competitors need. The Supreme Court applied that rule in TrafFix Devices v. Marketing Displays, decided March 20, 2001. Marketing Displays held expired utility patents on a dual-spring base that kept outdoor signs upright in wind. The court treated the patents as strong evidence that the springs were functional, and once that was established, customer recognition of the design could not save the claim. A patented product can still carry a protectable logo; only the working parts stay open to competitors.
How Do You Check Whether a Similar Design Is Already Used?
Before you search, write down the exact design and the goods or services it will mark, because marks are compared against what is sold.
- Search the federal database for similar visual elements using USPTO design search codes, which sort images by subject.
- Search any wording in the mark as well, since either element can conflict.
- Run the USPTO image-upload search, which requires a USPTO.gov login, as a supplement to code and word searching.
- Check related goods and services and marketplace use, because prior unregistered marks can still block you.
A similar design on related goods can be cited against your application even from a different class, so treat the goods as the real comparison.
What Should You Prepare Before Applying?
Have these ready first, because the examiner checks the drawing, the goods, and the proof of use against each other.
- The owner and the goods or services. The applicant is whoever controls how the design is used. There is no general design class; a clothing brand with a graphic logo files for clothing, using accepted descriptions from the USPTO ID Manual.
- The final drawing. A design is filed as a special-form drawing, an image file of the exact mark. Words alone are filed in standard characters, with no font or color claimed. A combined word-and-picture application registers only that combination; a logo variant or the words alone need their own filing. After filing, only minor changes to the drawing are allowed, so a redesign means a new application. For a logo, see protecting a logo used by your business.
- A color decision. A color claim requires a color drawing, a list of the colors, and a description of where each appears.
- A filing basis. If you already sell under the design, you file on actual use. Before launch, you can file on a bona fide intent to use, which secures a filing date but requires proof of use before registration.
- Real proof of use. The USPTO calls this proof a specimen, and it must show the mark as drawn in real commerce for the listed goods or services. As a hypothetical, a clean file of a bird logo is the drawing, and a photo of that logo on the label of shirts you have sold is proof of use. The same logo pasted onto a stock photo of a shirt is a mockup, which gets refused. A product webpage works when it shows the price or a way to order, and you record its URL and the date you accessed it. For services, the advertising must connect the design to the services.
An examining attorney then reviews the application, may send an office action you must answer by a deadline, and publishes an approved mark so others can oppose it before it registers.
What Does It Cost to Register a Design?
The government fee to file a standard application is $350 per class, and the design format adds nothing to that base. An intent-to-use application later needs a statement of use at $150 per class, so a single-class filing that starts before launch pays $500 in government fees. Other charges can apply: $100 per class for missing information, $200 per class for custom goods or services wording instead of ID Manual entries, another $200 per class for each extra 1,000 characters of that text, and a separate fee for each extension of time to prove use. Attorney fees are separate.
Would Copyright or a Design Patent Protect What You Created?
A trademark protects the design as a signal of who stands behind the goods, and two other rights cover different concerns. Copyright protects original artwork, so a logo with enough creative authorship can be registered with the Copyright Office whether or not anyone recognizes it as a brand. A design patent protects a new, original ornamental design for a manufactured article.
Wal-Mart Stores v. Samara Brothers, decided March 22, 2000, shows the gap between copying and trademark infringement. Wal-Mart’s supplier copied Samara’s line of children’s clothing, and Samara sued for trademark infringement of the designs themselves. The Supreme Court held that the designs could be protected only with proof that buyers recognized them as Samara’s.
If your worry is someone copying the artwork or the look of the product, identify which right addresses it before paying for a trademark application. Many logos need only the trademark filing, while a distinctive product shape may need a design patent first.
What Should You Do Next?
Gather the final design, the goods or services you sell or plan to sell, examples of actual use or your launch plan, and any similar designs you found. I will go through eligibility and the filing choices with you before you commit. Contact me to discuss your design with a trademark attorney.
