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By J.D. Houvener
Patent Attorney and Founder

Well, let’s see. 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. I get questions all the time, and this one’s pretty thought-provoking. So, let me just put this in. I’ll put the whole comment in. It’s from one of our viewers, Maria, on one of the videos I posted last week that’s getting some traction.

I love videos. How can we check if a design is registered? For example, I want to make a bag the same as Gucci’s, very famous Gucci, but with my own brand and label. Is that allowed? How do I check if the bag design is registered or not, and if the registration number has a ‘D’ on it, please make a video.

So, here we are making a video. You know, this is tricky. 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, a third-party search contractor that’s all he does through Aus patents. Brandon Kenny, little shout out to Brandon; he hooks us up with a lot of research. What we usually feed him is keywords. When you break down an invention, it’s, ‘Okay, here are the core elements that the inventor believes to be unique and novel.’ After we kind of work with them, we pull it out, get some additional verbiage, and that’s what makes the search work. You actually type in English words for a design. Gosh, I mean, it’s so challenging. You have to create words; you have to, 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 type of—?

We have something similar on the trademark side. You know, we have design marks, which are logos essentially, or they could be other design elements for a trademark. They are difficult to search. The US PTO actually has a whole catalog of how they organize design elements. It’s really kind of interesting how they break it down. This on the trademark side, design marks. For example, like, 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.

Can I share my screen? Yes, we’re going uncharted. Hit present and go wild, share tab. We are going to share this. Let me know when you can see my screen. Oh, here we go. I get to add it to the stage. Add it, and 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. For example, there’s a category called supernatural beings mythological or legendary, and then it gets broken down into multiple different categories—winged or horned, partly human, mythological plants, objects, or geometric features representing a person or animal masks, right? These codes get associated with all designs. When I submitted a design mark to the US PTO, an examiner or another group at the USPTO will key codes into all the elements of that design. So, that’s how we search the US PTO 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. And then, you know, at that point, we have to code them so we can search for them. It’s a lot. I bet there’s something similar on the design patent side. I probably so. I bet Brandon would help me with that. Can you imagine being like the guy or the gal who had to conceive of how we’re going to organize all of the art that people submit? Crazy. I mean, it’d be kind of fun to have to be that client that forces a new category.

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 side, I think Maria is talking about an actual article of manufacture, an actual purse, an actual bag, purse. So, that would be under the realm of a design patent, perhaps also copyright.

Copyright for the work of art in a bag.

Yep. Let me—I got to get a prop. Let me go find a purse.

Yeah, we can’t forget copyright. Well, while JD is grabbing his wife’s purse, we’ll talk a little bit about the difference. A copyright protects a work of art, could be a sculpture, could be writing, could be JD’s painting, could be a site. But fashion, like a print or a fabric pattern, can be protected as copyright also, you know, the artistic work of creating and designing a purse, a three-dimensional purse, can fall under copyright, right?

So, here’s JD’s daughter’s backpack. Yes, it is. Okay, this is a bag. There is a bag, right? And I suppose, you know, this could be, you know, let’s just say this is Gucci, and Gucci would have their big logo. It would be like a logo, right? You know, but let’s say that I think what Maria is asking is, ‘I want to copy this bag. How do I tell if the actual bag is patented?’

Great question. It’s going to—we’re going to have to take some look and dig around. But I do want to note that bags can be patented as a design patent and as a utility patent.

The design elements are the shape, the actual three-dimensional shape, where certain materials are positioned. There’s this kind of like rough outer material, kind of shiny rainbow-looking patch. Its location, its position related to the other aesthetics, not the fact that it is ergonomic or holds stuff, but just the aesthetic. You can’t protect functionality; it’s an art. It’s a sculpture, okay? That’s what design patents protect—the sculpture of that bag. Utility is the functionality. 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 patents.

Well, that’s really interesting. Like that bag, for example, you could potentially, theoretically, if somebody were to copy it exactly, you could, and you had a 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. 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 work of the artist who created it. So, they all kind of come at it from a different angle, but theoretically, U Maria, this individual could be violating three different trademarks or three different – she could be in big trouble.

My gut, and you know, sometimes this matters, sometimes it doesn’t mean Jack diddly, but 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 to a company in China and just saying, ‘Hey, we’ll take that and put our logo on it,’ right? It’s going to be bespoke. So, 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 three-dimensional work that they might be able to go seek protection for later.

At the very least, you should not do what’s called passing off your goods as someone else’s. That’s almost like a criminal, dare I say criminal, passing. That’s typically trademark infringement, right? That’s when you’re taking someone else’s products and making knockoffs. Yeah, that’s passing off. It’s somebody else’s product. Yeah, yeah, yeah. So, don’t do that, Maria. I appreciate your question, 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. 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 interesting.

So, I get this question pretty frequently. People are like, ‘How much do 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 shave my head, and I’m gonna start a new law firm called Bald Patents. 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? What does it come down to, right? You PID the lawyers, all the discovery, all the experts. What’s the judge going to tell the jury if there is one for something like that?

Yeah, it’s not infringement. Bald Patents is not an INF. Yeah, I think it’s gonna be different enough. I think a 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. 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 ‘bald’ or mistyping it. You know, 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