Overlap Between U.S. Design Patents, Copyright, and Trademark

There is an area of overlap between copyright and design patent statutes where the author/inventor can secure both a copyright and a design patent. Thus an ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent. The author/inventor may not be required to elect between securing a copyright or a design patent.

It is the policy of the U.S. Patent and Trademark Office to permit the inclusion of a copyright notice in a design patent application, and thereby any patent issuing therefrom, under certain conditions including:

A) A copyright notice must be placed adjacent to the copyright material and, therefore, may appear at any appropriate portion of the patent application disclosure including the drawing.

(B) The content of the copyright notice must be limited to only those elements required by law. For example, (c) 1983 John Doe would be legally sufficient and properly limited.

(C) Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:

A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyright rights whatsoever.

A design patent and a trademark may be obtained on the same subject matter. The use of trademarks in design patent application specifications is permitted under limited circumstances, assuming that the proposed use of the trademark is a legal use under Federal trademark law. It is improper to use a trademark alone or coupled with the word “type” (e.g., Band-Aid type Bandage) in the title of a design. Examiners must object to the use of a trademark in the title of a design application and require its deletion therefrom. When a trademark is used in the drawing disclosure of a design application, the specification must include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the registered trademark. Any derogatory use of a trademark in a design application is prohibited and will result in a rejection of the claim as being offensive and, therefore, improper subject matter for design patent protection.

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