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By J.D. Houvener
Patent Attorney and Founder

well let’s see um we’ve got a we’ve got a really cool topic today and it’s about design patents this was kicked off by a question I got through a YouTube channel Matt um which is you know I get questions all the time and this one’s pretty thought-provoking um so let me just put this in I’ll put the whole comment in it’s from a one of our viewers Maria and um on one of the videos I posted last week then they’re getting some traction um I love videos how can we check if a design is registered for example I want to make a the bag the same as same bag as Gucci right we very famous Gucci uh but with my own brand and label is that allowed how do I check if the bag design is register or or not and if the registration number has a d on it please make a video so so here we are making a video um you know this is tricky and and if I’m being real above board in terms of searching for design patents that is a bear we have a third-party team thirdparty search contractor that’s all he does through Aus patents um Brandon Kenny little shout out to Brandon he hooks us up with a lot of research and what we usually feed him is keywords right um when you break down an invention it’s okay here are the elements the core elements that the inventor believes to be unique and novel and after we kind of work with them we kind of pull it out get some additional ver verbiage and that’s what makes the search work you actually type in English words a design gosh I mean it’s so challenging you have to yeah you have to create words you have to just you know I believe he is using AI in a lot of his searching but I don’t want to speak for him I don’t have a great answer Matt do you have any kind of any a type of we we have something similar on the trademark side you know we have design marks which are logos essentially right or they could be other Design Elements for you know a trademark and and they are difficult to search the um us PTO actually has a a whole catalog of how they organize Design Elements I mean it’s it’s really kind of interesting how they break it down and this on the trademark trademark for like design marks you’re talking yeah design marks so for example like um I I’ll just go to the design codes and I’ll kind of give you I don’t know if I can share my screen you should be able to or send me a link if you can mind if I share my screen yes we’re going Uncharted yeah hit present and and go go wild share tab we are gonna go ahead and share this let me know when you can see my screen oh here we go I I get to add it to the stage so add it and then we there it is how’s that a little bigger look at that it’s a giant list I’m leaning table of contents for design code searches so for example there’s a category called supernatural beings mythological or legendary yeah and then it gets break down into multiple different categories winged or horned uh partly human mythological plants objects or geometric features representing a person or animal masks right and so these codes get Associated to all designs so when I submitted a design Mark to the US PTO yeah um an exiner or another group at the USPTO will Design or will key codes in to all the elements of that design and so that’s how we search the US PTO um database for design codes okay put design codes and then you know you’re probably going to get you know a thousand different trademark registrations that you have to go through right and then you know at that point we have to code them so we can search for them yeah it’s a lot that is that I bet there’s something similar on the on the design patent side I probably so I bet Brandon would help me with that but can you imagine being like the guy or the gal who like had to conceive of how we’re going to organize all of the art that people submit crazy yeah I mean it’s um it’d be kind of fun to have to be that client that that forces a new category yeah right hey Justin good to see you man it’s been a while for sure I like that new photo what’s up you know he’s got the arms crossed good to have you any questions bring those on man we’re talking trademarks we’re talking design so I think this I’ll bring the question back up we kind of went down that trail there a little bit and I appreciate it on the design trar decide I think this I think Maria is talking about an actual article of manufacturer sure an actual purse an actual bag bag purse um so that would be under the realm of a design patent perhaps also copyright and copyright for the work of art in a bag yep um let me I got to get a prop let me go find a purse yeah we can’t forget copyright so well while JD is grabbing his wife’s purse um we’ll talk a little bit about the difference right so a copyright protects a work of art could be sculpture could be writing could be you know JD’s painting could be a site but fashion you know like a print or a you know a fabric pattern can be you know protected as copyright also you know the artistic work of creating and designing a purse a threedimensional purse can be called under copyright right so there’s JD’s well that’s your daughter’s backpack yes it is okay this is a back there is a bag right and I suppose you know this could be a you know let’s just say this is guc gu and and Gucci would have like like their big logo yeah it would be like logo right you know but let’s say that I think what Mar is asking I want to copy this bag how do I tell if the actual bag is PED right great question it’s gon we’re gonna have to take some look and dig around um but I do want to note that bags can be patented all right as a design patent and as a Utility Patent okay so the the design elements are the shape the actual three-dimensional shape where certain materials are positioned right there’s this kind of like rough outer material kind of shiny rainbow looking patch y it’s location its position related to you know the other Aesthetics right not the fact that know is ergonomic or hold stuff but just you can’t protect funtional it’s an art it’s a p is a sculpture okay that’s what design patents protects the sculpture of that bag utility is the functionality right the fact you actually hey it’s got a cool zipper it’s positioned in the right spot you can actually put some stuff in here and it’ll hold capacity you know that’s utility patter s um well that’s well that’s really what’s really interesting is like that bag for example you could potentially theoretically if somebody were to copy it exactly you could and you had design patent on it and you had a registered design or a trade dress on the backpack yes and you registered copyright you could basically you know allege infringement of patents trademarks and copyright because they all kind of intersect a little bit they’re all different in their goals right right um you know the patent protects the actual invention itself and the design layout elements the trademark the trade dress protects the connection between consumers and the product and the copyright protects the inherent you know work of the artist who created it so they all kind of come at it from a different angle but theoretically you know U Maria this individual could be violating three different trademarks or three different she big big trouble my gut and you know sometimes this matters sometimes it doesn’t mean Jack didly but if if Gucci if it’s an authentic Gucci article I’m guessing they designed that thing and it’s theirs and so they’re not going they’re not going to a company in China and just saying hey we we’ll take that and put our put our logo on it right it’s going to be bespoke so very even if they didn’t go through the process of filing a patent application which may or may not be true they at least have copyright ownership of that creation of that sculpture that threedimensional work that they might be able to go seek Pat protction for later um so at very least you should not what’s called pass off your goods as someone else’s m is that that’s almost like a criminal dare I say criminal yeah say passing that’s typically trademark infringement right that’s kind of um you know when you’re taking someone else’s products right and making knockoffs yeah that’s that’s passing off right it’s somebody else’s product yeah yeah yeah so don’t do that Maria I appreciate your question um but you could certainly go to a company that manufactures products and be like I like this what can we do that has a similar kind of aesthetic to it you got it you got it that’s how you and you can even come to a patent firm like ours have us do a search hire that third party that knows more about design patent searching yep and confirm that there is a patent on it and then help you think about how to change it significantly enough such that you’ll avoid infringement that’s that’s interesting so I get this question pretty frequently people are like what how much Jo I need to change something to avoid trademark infringement is it like 40% and like you can’t put an answer on that right yeah I’m gonna I’m gonna shave my head and I’m gonna start a new law firm called bald patents bald bald is that we’re all bald here at this firm I mean is that and I think I would get pissed because it sounds a lot alike but maybe it’s different enough right it what does it come down to right you you PID the lawyers all the discovery all the experts what’s the the judge going to tell the jury if there is one for something like that I mean yeah it’s not infringement bald patents is not an INF yeah I think it’s gonna be different enough I think a reasonable reasonable person would not be confused right unless they call it bald patents and they design their logo very similar to yours and they use the same color scheme right and then of course what they’re trying to do is pass off their Services as yours yeah um and they’re relying on people misunderstanding the word bold or mistyping it you know that’s that’s a whole other issue yes sir

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at