1512 Relationship Between Design Patent, Copyright, and Trademark [R-07.2022]
I. DESIGN PATENT/COPYRIGHT OVERLAPThere 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. See In re Yardley, 493 F.2d 1389, 181 USPQ 331. In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (1954), the Supreme Court noted the election of protection doctrine but did not express any view on it since a design patent had been secured in the case and the issue was not before the Court.
See form paragraph 15.55 which repeats this information.
II. INCLUSION OF COPYRIGHT NOTICEIt 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 the following conditions.
- (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. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material. If placed on a drawing in conformance with these provisions, the examiner will not object to the notice as extraneous matter under 37 CFR 1.84.
- (B) The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 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.
- (D) Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.
Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (C) above does not include the specific language “(t)he copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the U.S. Patent and Trademark Office patent file or records....”, the examiner will object to the copyright notice as improper.
See form paragraph 15.55 which repeats this information.
¶ 15.55 Design Patent-Copyright Overlap
There is an area of overlap between Copyright and Design Patent Statutes where an 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 the subject matter of a Design Patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 493 F. 2d 1389, 181 USPQ 331 (CCPA 1974). In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (U.S. 1954), the Supreme Court noted the election of protection doctrine but did not express any view on it since a Design Patent had been secured in the case and the issue was not before the Court.
It is the policy of the Patent and Trademark Office to permit the inclusion of a copyright notice in a Design Patent application, and thereby any patent issuing therefrom, under the following conditions:
- (1) 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. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material. If placed on a drawing in conformance with these provisions, the examiner will not object to the notice as extraneous matter under 37 CFR 1.84.
- (2) The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly limited.
- (3) 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 copyrights whatsoever.
- (4) Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.
Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (3) above does not include the specific language “(t)he 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...,” the examiner will object to the copyright notice as improper.
The files of design patents D-243,821, D-243,824, and D-243,920 show examples of an earlier similar procedure.
III. DESIGN PATENT/TRADEMARK OVERLAPA design patent and a trademark may be obtained on the same subject matter. The CCPA, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from one is dependent or conditioned by the right concomitant to the other.
See form paragraph 15.55.01 which repeats this information.
¶ 15.55.01 Design Patent - Trademark Overlap
A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.
The use of trademarks in design patent application specifications is permitted under limited circumstances. See MPEP § 608.01(v). This section assumes that the proposed use of a trademark is a legal use under federal trademark law.
B.TitleIt 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.
C.DrawingsWhen 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. Form paragraph 15.76 may be used.
¶ 15.76 Trademark in Drawing
The [1] forming part of the claimed design is a registered trademark of [2]. The specification must be amended to include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the trademark.
Examiner Note:
- 1. In bracket 1, identify the trademark material.
- 2. In bracket 2, identify the trademark owner.
Any use of a trademark in a derogatory manner in a design application is prohibited and will result in a rejection of the claim under 35 U.S.C. 171 as being offensive and, therefore, improper subject matter for design patent protection. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979) and Coca-Cola Co. v. Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972).
