Three Ways to Own a Shape: Design Patents, Trade Dress, and Copyright in Product Design
By Casey Scott McKay ·
A product's appearance can be protected three different ways, and the three regimes have different requirements, different terms, different remedies, and almost no coordination between them. This article maps all three. It explains design patents - what they cover, the ordinary observer infringement test, the extraordinary total-profit remedy at Section 289 that has no analogue anywhere else in intellectual property, and the en banc decision that rewrote design patent obviousness in 2024. It covers product-design trade dress, which is never inherently distinctive and always requires secondary meaning, and the functionality doctrine that defeats it. It works through copyright's useful article problem and the separability test the Supreme Court restated in Star Athletica. Then it does the part most treatments skip: it explains how the three interact, why an expired utility patent is powerful evidence against trade dress, and how to sequence protection so that a disclosure made for one regime does not destroy eligibility for another.
IP and Technology > General IP | Article | Published 10 December 2024 - Updated 16 December 2025 | Casey Scott McKay - marksy.us
Summary. A product's appearance can be protected three different ways, and the three regimes have different requirements, different terms, different remedies, and almost no coordination between them. This article maps all three. It explains design patents — what they cover, the ordinary observer infringement test, the extraordinary total-profit remedy at 35 U.S.C. § 289 that has no analogue anywhere else in intellectual property, and the en banc decision that rewrote design patent obviousness in 2024. It covers product-design trade dress, which is never inherently distinctive and always requires secondary meaning, and the functionality doctrine that defeats it. It works through copyright's useful article problem and the separability test the Supreme Court restated in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017). Then it does the part most treatments skip: it explains how the three interact, why an expired utility patent is powerful evidence against trade dress, and how to sequence protection so that a disclosure made for one regime does not destroy eligibility for another.
Keywords: design patent · 35 usc 171 · ordinary observer test · egyptian goddess · gorham v white · section 289 total profit · samsung v apple article of manufacture · lkq v gm obviousness · trade dress product design · wal-mart v samara · traffix functionality · qualitex · star athletica separability · useful article doctrine · mazer v stein · vessel hull design · hague agreement designs · layered protection · design disclosure timing
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