Don’t Give Away the Store: Protecting retail with design patents

One of the most important things for a retailer to protect from copying is its retail environment, its familiarity. The thing that makes customers feel they’re in an Apple store, a Burberry store, a Best Buy, or a Home Depot — even if there was no sign on the door. A retailer’s unique style and familiarity can build comfort and trust with its customers. At least, until the competition copies this style, and it no longer feels unique.

Many retailers may feel that nothing in the intellectual property toolkit is perfectly suited to combat this copying. Trade dress, a form of trademark protection for three-dimensional articles, may be the most commonly used tool. But it can be difficult to establish both a protectable right — by showing that consumers identify the look of the store itself with a single source — and infringement of that right — by showing that the look of the copycat store is likely to cause confusion. Copyright is available for some architectural designs, but it also falls short because it otherwise does not cover the design of useful articles per se.

Fortunately, patents are available to protect retail environments. Not only can patents protect retail interiors (and exteriors) on the whole, they can also protect individual fixtures, architectural features, and any other physical article that contributes to the overall style of a retail environment.

Is your store’s style influenced by the unique design of a display unit, a table, a light fixture, a floor tile? Then patent it! If a competitor copies it, you can assert your patent, even if they don’t use it to create an entire confusingly similar store.

Two Types of Patents
There are two main kinds of patents. A utility patent, the most common, protects the way something works. A design patent differs from a utility patent by protecting how something looks. Unlike an invention in a utility patent, a protectable design does not have to be technologically inventive, it just has to have a new appearance. While utility patents are important and should be considered along with design patents any time a completely new solution to a problem is invented, design patents are available for any article that has a new appearance, regardless of whether it solves a technical problem.

Both design and utility patents give their owners the right to stop others from using what is protected by the patent. But design patent is usually faster, easier, and cheaper to get than a utility patent. For a retail owner, this right might be leveraged to support efforts to get a competitor to stop operating in a particular way or to change their store’s appearance.

To get a patent the owner must first apply for it, and soon. The application should be filed before the design is disclosed to the public (i.e., disclosed to anyone not under an obligation of confidentiality). Unlike a utility patent, which describes its invention in words, a design patent is minimal. This image-heavy definition of the patented design helps make design parents easier to understand than utility patents, which often makes them enforce too.

Scope of Design Patents
The scope of what a design patent protects can be tailored by using techniques such as showing some parts of the article in dashed lines to convey that those parts do not limit the scope of the patent. Practically speaking, this means that design patents can cover a building, a store, a fixture of a store, or any portion of any of these, as long as the design can be clearly depicted in the patent application.

In many countries, including the US, design patents are incredibly flexible in what they can protect and how they can protect it. This is a great benefit to retail owners, and is the reason design patents can fill some of the gaps left by other forms of IP protection. For example, the design of the interior of a store may be best shown from within the space of the store itself, by images of the walls and fixtures. And if some interior features are best shown 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 intertwined enough, they can be covered together as a single design patent. If structural or other features do not have a significant influence on the design, they may be drawn in dashed lines to omit them from the patent’s scope. The thing to remember here is that design patents offer the flexibility to depict designs in whatever way best represents their appearance. The fact that a design is interior to a space is not an impediment.

The designs of interior features such as tables, shelving units, other display fixtures, architectural features, or even product arrangements can also be important contributors to a retailer’s look and feel. These kinds 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 shelving unit or an arrangement of fixtures might be used to stop a competitor from co-opting a retailer’s look and feel, even where the competitor hasn’t gone so far as to create a confusingly similar store. This can help keep some distance between a retailer’s look and feel and that of its competitors, maintaining a protected space around its unique style that helps it stand out.

Design patents have the versatility to take a significant place in any strategy to protect a retail environment. They can fill gaps in protecting a retailer’s image and brand where utility patents, copyright and trademark fall short, and their flexibility opens up avenues of protection not available under any other intellectual property regime.

Daniel Gajewski is a director at Sterne, Kessler, Goldstein, & Fox P.L.L.C., a full-service intellectual property law firm in Washington, DC, which has been ranked second by number of US design patents awarded in 2017. Gajewski has worked on protecting innovation with both 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 P.L.L.C., its clients, or any of its or their respective affiliates.)
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