I’m often asked the question, what is the difference between a design patent and a utility patent, and what do they cover? Because they are two distinct patents, and they cover two distinct areas. A design patent covers the ornamental beauty of something. And maybe we should discuss this best understood with an example.

What a design patent doesn’t cover is the functioning of an item. But as we said, the ornamental beauty. I have a car. A car fender, surprisingly, does not qualify for a design patent because it’s considered functional. You have to have a fender, it covers the wheel, it has to be a certain distance. Those are all fixed parameters that are known.

In contrast, the taillights on a car, because it can become of totally different designs. Yes, certainly is a functional aspect to it. We’re not going to argue that. The desirability of the taillight is how cool it looks on you.

Is there a class of individuals who get copyrights above others? My answer is really not. I mean, it’s the obvious. You’ve got musicians, you’ve got TV production, but you also have books, people who create books, authors, you have photographers, you even have architects. I mean, people who do design work, that’s copyrightable, that’s original work.

The process of obtaining a design patent is quite different. What’s most important are the drawings, because the protection actually comes right from the drawing that we submit to the patent office. Whereas every patent has claims, a design patent claim refers back to the drawing. In a utility patent, the claims are in words. So there’s quite a difference.

To begin with, there are two types of patents. There are design patents and utility patents. And the patents that people normally think about are utility patents. It can be a mechanical, electrical, a chemical patent. Design patents are quite different. They cover the shape of an item. And when you’re product can be protected well by the shape that it has, then the design patent is right for you. And by the way, your invention might need both, but there are certain items where the shape really cannot be changed. And that’s perfect for a design patent. If in fact, your invention could have several different shapes, then a design patent may not make sense because you may need several of them.

A provisional patent application is a little bit of a misnomer. It truly is not a patent, but it gives you the rights to get a patent. The advantage in why should I get a provisional patent application? First of all, a provisional patent application lasts for only one year. At the end of that one-year time frame, technically it’s put aside. It’s never published, it’s never available to the public, unless it is challenged in a legal procedure. Within that one-year time frame, a provisional patent application must be turned into what they call a utility application.

Your product is now known as the generic version of the goods. And the best example we’re going to use, I don’t know if most of you remember in the seventies, you did not say, “I want to get a copy of this made.” You would say, “can you get me a Xerox?” Well, Xerox company became very, very concerned and suddenly they did a huge information campaign. We are the copy company. So people would not say, “get me a Xerox.” It would now say, “get me a, get me a copy.”

People run into this, run into awkward situations where a mark is either originally was deceptive, misleading, or scandalous, or it just so happens that somebody makes a slang word out of their mark and suddenly what was an innocent mark suddenly becomes known as something that’s not acceptably socially. That way is another way to lose your mark.

Another way of losing your mark is something called naked licensing. I become fairly popular with my mark. My mark becomes desirable. I decide to franchise. So I’m McDonald’s, I go out and I have a bunch of new McDonald’s restaurants. However, in my franchise agreement, I do nothing that regards the quality of the product. Something I should say with a trademark, when you have a trademark, it implies a certain quality. So therefore, as a trademark owner, if I license out my marks to other parties, I have to make sure that they are performing to my standard of quality. That means my license agreement must say, we’re going to inspect your restaurant every six months, and you have to comply. And here are our rules and regulations, our quality standards. If you don’t have that in your license, that’s called a naked license, and theoretically you can lose your mark because you’re not controlling the most important aspect of your trademark, and that is the quality of your goods.

Now, another way to lose the mark is I don’t police my mark in a marketplace. For instance, I become aware of a few other companies that are using my mark, but I say, eh, doesn’t bother me. Either it’s not that close or it’s a big enough marketplace, or maybe they’re on a different coast and I don’t worry about it. But if I don’t police my mark, I basically say, you’re allowed to use my mark. You’re going to come back to me and say, I’ve been using this mark in commerce for five years and you’ve never objected to it. At that point, I’ve lost my mark. Everyone can use it.

I’m a successful trademark company and I have a fairly large portfolio of trademarks, 50 to 100 of them. That gets to be a little bit unwielding. The question becomes, how do I make mistakes and I lose my trademarks? Okay, first of all, the most obvious loss of a trademark is I don’t use it anymore. This is a very popular car manufacturer.

I don’t know if you remember the Ford Taurus sold millions of cars and eventually they just quit using that name for cars. Once you quit using a mark for three years, it’s considered technically abandoned. So that’s it. Another way to lose trademarks is simply you have to renew trademarks. A renewal occurs every five to six years and every 10 years thereafter or every 10th year.