The designs of commercially marketable products may be protect-able under one or more theories of intellectual property law.

Trademarks identify the source or origin of goods and services. Design elements of products may serve as an indicator of origin, just as a word does. The Coca-Cola® bottle, for example, is a registered trademark, but a design element may serve as a common law
trademark. The Lanham Act, 15 U.S.C. §§1051-1127, includes Section 43(a) (15 U.S.C. §1125(a)), what has come to be known as the federal law of unfair competition. Trade dress actions under Section 43(a) involve an analysis of the three elements to establish trade dress infringement:
(1) functionality, (2)inherent distinctiveness or secondary meaning, and (3) likelihood of confusion. The functionality analysis of the design is applied to prevent anyone from obtaining a competitive advantage with respect to utilitarian or functional features. The secondary meaning arises when the design achieves such widespread recognition that it serves to identify the source of the product. For an analysis of the functionality defense, see Black & Decker Inc. v. Hoover Service Center, 12 USPQ2d 1250 (CA FC 1989) involving the Dustbuster™ hand held vacuum cleaner, and The Black & Decker Corp. v. International Sales and Marketing, 36 USPQ2d 1851 (DC CCalif 1995) involving the SnakeLight™ flashlight.

The Dilution Act of 1995, embodied in Section 45(c) (15 U.S.C. §1125(c),
effective January 16, 1996), provides that famous marks are eligible for federal protection where a third party’s commercial use might blur the mark’s distinctiveness, even in the absence of likelihood of confusion. The Dilution Act has been applied to a famous design, the Sunbeam Mixmaster® mixer. Sunbeam Products, Inc. v. West Bend Co., 39 USPQ 2d 1545 (S.D. Miss. 1996), Sunbeam Products Inc. v. The West Bend Co., 44 USPQ2d 1161 (CA 5 1997). Sunbeam successfully alleged that the manufacture and sale of West Bend Mixer  1 violated the Lanham Act, 15 U.S.C. Section 1125(a); the Federal Trademark Dilution Act of 1995, 15 U.S.C. Section 1125(c); and the common law of unfair competition, trade dress infringement, dilution, and false and misleading advertising.

The Sunbeam case is precedent that dilution of trade dress, if the trade dress can be viewed as a famous mark, is actionable under the Dilution Act.

While consultants may submit a written form agreement specifying the work to be performed, it is important that the company make sure that the contract under which the work is performed includes an agreement to assign the copyright in the software to the company. The Copyright Act defines a “work made for hire” in two parts (, but suffice it to say that the U.S. Supreme Court has interpreted the definition very narrowly and it is unlikely that software generated by a consultant would be considered a “work made for hire”, making a written agreement to assign the copyright in software generated by a consultant mandatory.

Registration does not create the copyright. Under the Copyright Act of 1976 (Title 17, United States Code), a copyright exists as soon as it is created. If the copyright already exists, why bother to register it? Registration is a prerequisite to bringing suit in the Federal District Court for enforcement of a copyright.  This remains the case despite the United States becoming a signatory to the Berne Convention (The “Berne Convention Implementaion Act” became effective March 1, 1989) which provides that there can be no prerequisite of registration before bringing suite to enforce a
copyright. Registration and deposit requirements are a chief source of books and other works for the Librarian of Congress. The compromise reached was that no suit for copyright infringement can be brought unless the copyright is registered, unless the work is a Berne Convention work whose country of origin is not the United States. How’s that for substantial compliance?

Copyright may be another theory of protection for a design. The Copyright Act specifically provides protection for pictorial, graphic and sculptural works. This protection extends to those features of the design that can be identified separately from and capable of existing independently of the utilitarian or functional aspects of the product. Note that architectural works are accorded protection independently from the protections granted to designs of a pictorial, graphic and sculptural nature. See 17 U.S.C.