Protecting the Aftermarket – Strategic Use of Design Patents

It is sometimes the case that the real driver of value in a patented machine or system is in the aftermarket for replaceable components. The problem is that, on their own, the replaceable components often lack any unique functionality and are unprotectable with utility patents. As a result, competitors can freely sell the replaceable components because the patent on the machine or system will not protect the replaceable component as a standalone item. Smartphone components like cases and charging cords or automotive components like wheels, grills, headlights, and taillights are examples of aftermarket components that typically lack unique functionality. So, is there a way to use intellectual property to protect your market share in aftermarket replacement parts?

One way to do it is by getting a design patent. Unlike a utility patent, which protects the structure and operation of a product, a design patent only protects ornamental designs embodied in an article of manufacture. The trick is to design an aesthetic feature – one that has no functional purpose – into the aftermarket component and then pursue design patent protection for it. The key to this strategy working is that you need a customer base that associates your aesthetic features with your patented system and as indicators that the replacement component is “authentic,” i.e., that it comes from your company. If customers come to trust your aftermarket product and to recognize the aesthetic features you designed in it as an indicator of quality and/or authenticity, they may be reluctant to use a competitor’s version of the product, even if it is functionally equivalent. In a sense, the aesthetic features act as a brand identifier, and with a design patent, you can stop others from using those features. 

In some cases, you can also seek a “trade dress” registration from the US Patent and Trademark Office for non-functional, aesthetic features of aftermarket components. “Trade dress” is essentially packaging or product features that act as brand identifiers. It’s basically a trademark that is designed into the packaging or the product. The only wrinkle is that if the aesthetic features are designed into the product itself (as opposed to the packaging), you will have to prove to the US Patent and Trademark Office that the features have attained “secondary meaning” and are recognized by the public as something that identifies the source of the product. Typically, if you have made “substantially exclusive and continuous use” of the trade dress for five years, you can submit a declaration to that effect, and the Trademark Office will register the trade dress. As an example, Owens Corning is well known for having registered the color pink in connection with their insulation products. See US Trademark Registration No. 4128046.

You can use both trade dress and design patents to protect the aesthetic features of a product. However, the two forms of protection have different requirements. The proof required to establish design patent infringement also differs from the proof required to establish trade dress infringement.

To get a design patent, the design must be novel and non-obvious — or “new enough” — relative to the universe of pre-existing designs (which we call “prior art”). Also, a design patent only lasts 14 years from the date it issues. After that, it expires.

As indicated above, to successfully register trade dress based on product features, you have to show that the features act as a “source identifier” for the product, meaning that when people see those features on different products or different units of the same product, they recognize the features as indicating the products and units came from the same source. To use the above registration as an example, Owens Corning had to show that customers recognize the color pink in foam sealant as an indicator that the foam sealant is from a particular source. 

Also, you have to keep using the trade dress on products sold in interstate commerce in the United States or you will lose the trade dress registration. As long as you keep using the trade dress and keep up with filing the periodic declarations the Trademark Office requires, trade dress protection can last forever. Also, you do not have to show novelty or non-obviousness to register a product’s trade dress. It does not matter if someone else thought of the trade dress features and published them first. What matters is who made consistent and exclusive use of those features in products sold in interstate commerce.