Counsel as Ringmaster: IP Strategies for Protecting Consumer Products

This article was first published in the Corporate Counsel Supplement to The Legal Intelligencer and The Pennsylvania Law Weekly dated December 2, 2002.

Mammoth resources are required to launch new consumer products and to bring those products to the attention of the consuming public. The commercial success (or failure) of consumer products in the marketplace depends not only on the way they function but also on their form and aesthetic appeal. Strong intellectual property protection for the form and function of such products can therefore prove to be a valuable and long-lasting asset—valuable not only to help companies recoup their development investments, but also to secure a competitive advantage.

Caution is required, however, in reconciling the tension between the process of consumer product design, during which form and function are blended together, and the various modes of intellectual property protection, which tend to pit form against function. To enhance and extend product protection, intellectual property, design, and marketing strategies must be coordinated from the outset. Corporate counsel, acting as ringmaster, can optimize product protection by actively coordinating these strategies.

The Design Process: Blending Form Into Function

Engineering efforts are required to produce a consumer product that performs well, while industrial designers add consumer appeal to the product. Designers and engineers enjoy friendly debate over the notion that form follows function. It is seen by some as an admonition that designers must first consider how a product works and then consider its appearance. Others view “form follows function” as a law of nature—a pleasing appearance will naturally follow if a product is designed to function well.

There is no debate, however, that virtually all consumer products are characterized by features that perform a function and by features that provide a pleasing form. This blend of form and function is often reflected in product promotions. Cadillac advertises its Escalade as “The Fusion of Design & Technology.” David Yurman calls his designer watches “A Fusion of Art and Science.” Even the toilets of Toto Ltd. are advertised as “Performing Art.”

Design Protection: Dividing Form From Function

While industrial designers blend form into function, the legal modes available for protecting consumer products erect a barrier between the two. On one hand, a product’s function, as embodied in its useful features, can be protected for a limited period of time by obtaining a utility patent. On the other hand, protection is also available under our intellectual property laws for the non-functional features of a product’s form (i.e., the three-dimensional contours and shapes that define a product’s configuration and overall appearance). Specifically, design patents are available to protect, also for a limited time, a product’s ornamental configuration.

Non-functional features also include those elements of a product’s form by which consumers can identify the source of the consumer product. Such non-functional features may thus serve as trademarks, to the same extent as words and logos, or as protectable trade dress. With respect to product configurations in particular, trademark and trade dress protections are available for any non-functional element of a product’s configuration that has acquired a “secondary meaning” in that its primary significance is to identify the source of the product as opposed to the product itself in the minds of the consuming public. Unlike utility and design patents, however, trademarks and trade dress do not expire so long as they continue to identify a product’s source.

Non-functional elements of a consumer product’s configuration can enjoy dual protection through design patents and potentially long-lasting trademark and trade dress protections. For example, Honeywell International Inc. still enjoys trademark protection for the configuration of its dome-shaped thermostat cover despite the fact that the design patent for that thermostat cover expired long ago in 1970. See In re Honeywell, Inc., 8 U.S.P.Q.2d (BNA) 1600 (Trademark Trial & App. Bd. 1988).

Utility patents are therefore available to protect those features that are deemed functional, while design patents, trademarks, and trade dress are reserved for those non-functional features that make up a product’s form. The distinction between form and function, however, is not always clear. To determine whether or not a particular product configuration is legally functional, and therefore ineligible for trademark or trade dress protection, several questions are particularly relevant:

  • Is there a utility patent (expired or not) that discloses the utilitarian advantages of the product’s configuration?
  • Do the advertising materials for the product tout the utilitarian advantages of the product’s configuration?
  • Are alternative product configurations available to competitors?
  • Is there evidence that the product’s configuration results from a comparatively simple or inexpensive method of manufacturing the product?

The Supreme Court recently considered whether features of a road sign set out in an expired utility patent are capable of continued protection as trade dress. The Court deemed the patent to be of vital significance because a utility patent is strong evidence that those features that are claimed in the utility patent are functional. The Court concluded that one who seeks to establish trade dress protection must carry a heavy burden of showing that a feature is not functional (e.g., merely ornamental, incidental, or arbitrary) if that feature is claimed in a utility patent. TrafFix Devices Inc. v. Marketing Displays Inc., 58 U.S.P.Q.2d (BNA) 1001 (2001). Functionality is therefore presumed for claimed features.

Enhancing and Extending Design Protection

Each of the modes available to protect consumer products under our intellectual property laws can be quite valuable in their own right. The challenge lies in protecting both form and function without protecting one to the detriment of the other.

In view of the tension between form and function in the realm of consumer product protection, one should group the product’s features into two categories: (1) features that are important for product performance and that may be protectable in a utility patent (i.e., primarily functional features); and (2) features that are important to consumer appeal and recognition and that may be protectable in a design patent or as a trademark or trade dress (i.e., primarily ornamental features). Starting early on, and continuing throughout the life of the product, an affirmative and consistent position should be taken regarding which features fall within those two categories. To do so, there must be coordinated efforts among design management, as the product’s design is developed; intellectual property counsel, as product protection is pursued; and marketing management, as the product is promoted to the consuming public. Corporate counsel and involved outside counsel can take the lead in coordinating these efforts.

In the pursuit of product protection, great care should be taken to prevent intellectual property counsel from attributing functions to features that are deemed to be primarily ornamental or that are capable of source-identification. This point is illustrated by the fact that Vornado Air Circulation Systems relinquished the trade dress of its fan grill configuration by claiming, in a utility patent, the arcuate grill vanes for which trade dress protection was later sought. Vornado Air Circulation Systems Inc. v. Duracraft Corp., 35 U.S.P.Q.2d (BNA) 1332 (10th Cir. 1995). 

Intellectual property counsel should therefore be directed to ensure that ornamental and source identifying features, if set out in a utility patent at all, are explicitly described as ornamental and non-functional. Conversely, functional features shown in the drawings of a design patent should be excluded from the ornamental design claimed in the design patent by showing the functional features in broken lines. 

The efforts of design management must also be coordinated to maximize intellectual property protection. To give rise to prospective trademark or trade dress protection, industrial designers can be urged to affirmatively introduce potentially source-identifying features into a product’s configuration early in the design process. It is illustrative that Zippo Manufacturing Company was able to obtain a federal trademark registration for the stylized configuration of its well-known pocket lighter by virtue of the slightly rounded edges and corners of the lighter’s body and the curvature in the shape of a slight arc at the top of the lighter, thereby differentiating the lighter’s configuration from a common rectangle. See In re Zippo Manufacturing Co., 50 U.S.P.Q.2d (BNA) 1852 (Trademark Trial & App. Bd. 1999).

Coordination with marketing management is also important. Marketing management should be urged not to attribute functions to primarily ornamental features or to tout those functions in advertisements, user manuals, directions for use, or other marketing publications. Bose Corporation was denied a federal trademark registration for the configuration of its 901 speakers in part because of evidence contained in Bose promotional materials lauding the shape of the speaker as a functional part of the sound system. In re Bose Corp., 227 U.S.P.Q. (BNA) 1 (Fed. Cir. 1985). Similarly, Gibson Guitar Corporation was denied a federal trademark registration for the configuration of its guitar bodies in part because of advertisements pointing out the advantages of the guitar’s shape in creating better tones. In re Gibson Guitar Corp., 61 U.S.P.Q.2d (BNA) 1948 (Trademark Trial & App. Bd. 2001).

Conversely, marketing management should be urged to promote the source-identifying nature of product features in advertising and promotional materials. By directing consumer attention to distinctive product features, those features over time can become identifying symbols tying products to their respective sources. For example, the use of “look for” advertising can help to establish the consumer recognition, or secondary meaning, required to give rise to trademark and trade dress protection for a product configuration.


Coordinated efforts to protect the fruits of costly product development can give rise to valuable rights that may otherwise be compromised or lost. An integrated campaign to enhance and extend intellectual property protection for consumer products should involve at least:

  • Coordinating the efforts of the company’s design management, intellectual property counsel, and marketing leadership with respect to the launch of a consumer product and the procurement of intellectual property protection for that product.
  • Guiding designers to affirmatively introduce features into the configuration of the consumer product that can give rise to future trademark and trade dress protection.
  • Segregating those features of the consumer product that are primarily functional from those that are primarily ornamental.
  • Taking a consistent position in marketing programs throughout the life of the consumer product with respect to which features are primarily functional and which are primarily ornamental.
  • Avoiding the attribution, by intellectual property counsel and marketing management, of functions to features that are primarily ornamental or capable of source identification.
  • Establishing a clearinghouse for the review of designs proposed for a consumer product, the marketing materials proposed to promote the consumer product, and the utility and design patent applications proposed to protect that product.

Counsel should be actively involved in coordinating these efforts. Assuming that an integrated program is established, companies can continue to promote their consumer products as “The Fusion of Design & Technology” yet preserve the distinction between form and function that is necessary to enhance and extend intellectual property rights.

Joshua L. Cohen is a shareholder in the Valley Forge office of RatnerPrestia and concentrates his practice in all areas of intellectual property law, including the protection of consumer product configurations. He can be reached at 610-407-0700 or

This article is reprinted with permission from the December 2, 2002 issue of The Legal Intelligencer and The Pennsylvania Law Weekly. ©2002 NLP IP Company. Further duplication without permission is prohibited. All rights reserved.

For reprints, please call the author, Joshua L. Cohen at 610-407-0700.

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