Don’t Give Up the Store: Protect the Retail Business with Design Patents


One of the most important things for a retailer to copy protect is their retail environment, familiarity. The thing that makes customers feel like they’re in an Apple store, Burberry store, Best Buy, or Home Depot, even though there was no sign on the door. A retailer’s unique style and familiarity can boost customer comfort and confidence. At least, until the competition copies this style and it doesn’t feel unique anymore.

Many retailers may think that nothing in the IP toolbox is perfectly suited to tackle this copying. Trade dress, a form of trademark protection for three-dimensional items, may be the most commonly used tool. But it can be difficult to establish both a protectable right – by showing that consumers identify the appearance of the store itself with a single source – and a violation of that right – by showing that the store’s appearance of copy is likely to lead to confusion. Copyright is available for some architectural designs, but it is also insufficient because it does not otherwise cover the design of useful articles per se.

Fortunately, patents are available to protect retail environments. Patents can not only protect the interiors (and exteriors) of retail businesses as a whole, but they can also protect individual fixtures, architectural features, and any other physical item that contributes to the overall style of a retail environment. detail.

Is the style of your store influenced by the unique design of a display stand, table, light fixture, tiled floor? So patent it! If a competitor copies it, you can claim your patent, even if they don’t use it to create an entire store of confusingly similarity.

Two types of patents
There are two main types of patents. A utility patent, the most common, protects the functioning of something. A design patent differs from a utility patent in protecting the appearance of something. Unlike an invention in a utility patent, a protectable design does not need to be technologically inventive, it just needs to have a new look. While utility patents are important and should be considered along with design patents whenever a completely new solution to a problem is invented, design patents are available for any item with a new appearance that it resolves. or not a technical problem.

Design and utility patents give their owners the right to prevent others from using what is protected by the patent. But a design patent is generally faster, easier, and cheaper to obtain than a utility patent. For a retail business owner, this right can be used to support efforts to get a competitor to cease trading in a particular way or to change the appearance of their store.

To obtain a patent, the owner must first apply for it, and soon. The application must be filed before the design is released to the public (i.e. disclosed to anyone who is not under an obligation of confidentiality). Unlike a utility patent, which describes one’s invention in words, a design patent is minimal. This image-rich definition of patented design helps make design parents easier to understand than utility patents, often making them applicable as well.

Scope of design patents
The scope of what a design patent protects can be tailored by using techniques such as displaying parts of the article in dashed lines to indicate that those parts do not limit the scope of the patent. In practice, this means that design patents can cover a building, store, part of a store, or any part of any of them, provided that the design can be clearly represented in the patent application. .

In many countries, including the United States, design patents are incredibly flexible in what and how they can protect it. This is a great advantage for retail business owners, and this is why design patents can fill some of the gaps left by other forms of intellectual property protection. For example, the design of the interior of a store can be best illustrated from the space of the store itself, with pictures of the walls and accessories. And if some interior features are better represented from an exterior perspective, by removing portions of the exterior in some drawings, the patent applicant may be better able to show these interior features.

If the interior and exterior of a building are sufficiently interwoven, they can be covered together as a single design patent. If the structural or other characteristics do not have a significant influence on the design, they can be drawn in dotted lines to exclude them from the scope of the patent. The thing to remember here is that design patents provide the ability to represent designs in the way that best represents their appearance. The fact that a design is interior to a space is not an obstacle.

Designs of interior items such as tables, shelves, other displays, architectural features or even product arrangements can also make a significant contribution to the look and feel of a retailer. These types of features can be patented individually, as part of a particular layout, or even as part of an entire store interior. A patent covering the design of an individual shelf or fixture arrangement can be used to prevent a competitor from appropriating the look and feel of a retailer, even if the competitor has not gone so far. to create a store that is confusing. This can help keep a certain distance between a retailer’s appearance and that of its competition, maintaining a protected space around its unique style that helps it stand out.

Design patents have the versatility to be a big part of any strategy to protect a retail environment. They can fill gaps in the protection of a retailer’s image and brand where utility patents, copyrights and trademarks are insufficient, and their flexibility opens up avenues of protection that are not available under any other intellectual property regime.

Daniel Gajewski is a principal at Sterne, Kessler, Goldstein, & Fox PLLC, a full-service intellectual property law firm in Washington, DC, which was ranked second in the number of US design patents awarded in 2017. Gajewski has worked on innovation protection. with utility and design patents for over 8 years, including for retail inventions.

(The opinions expressed are those of the author and do not necessarily reflect the views of Sterne, Kessler, Goldstein & Fox PLLC, its customers or any of its or their respective affiliates.)


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