Utility patents are for functional inventions. Design patents protect the look of something functional, regardless of whether the functional aspects are new. Because of this, a popular use of design patents is to protect the outside of common consumer products. What’s more common than the written word?
Increasingly, companies are investing in designing unique and aesthetically pleasing typefaces. A typeface is sometimes referred to as a “font,” although these two concepts are slightly different (technically, a font is a typeface having a specific size). A basic typeface is a set of characters and numerals, e.g., each of the 26 letters and the numerals 1 through 10. A company can use a unique typeface to convey pretty much anything on any of its products, its advertising, its website, and any other place a company would publicly use the written word. Why would a company want to design a unique typeface? Perhaps they view the publicly available typefaces as boring. Or perhaps there’s a typeface that could align with the company’s ethos.
Design patent protection can be a strong enforcement tool. By statute, design patent owners can recover a form of “profit” earned by the infringer. Such damages are on top of equitable remedies that courts may order, such as injunctions. The broad scope of damages and remedies afforded to an owner of a typeface design patent is, in some ways, consistent with the relative “ease” of infringement. It can be relatively easy for an infringer, who mass produces a product, to instruct its manufacturer to print with a different typeface. Every single product would then contain an infringing typeface. Throw the book at them, Mr. Gutenberg!
Below are a couple examples of figures from design patents on typefaces:
Here, the design patent figures use solid lines for every character. This is important because the solid line defines the scope of protection and limits the design patent to the solid-lined illustrations. The patent owner could have used dotted lines for subject matter that was less important to the design and such lines would not have narrowed the scope of protection. It may not be necessary to protect every single part of the “glyph” but just the ones that are most important.
Finally, there could be disadvantages to protecting a typeface with a design patent. Namely, anything protected by a design patent will enter the public domain generally 15 years after the patent office issued the design patent. That means after those 15 years pass, then anyone can use the typeface as far as patent law is concerned. This could be problematic if a company is still heavily relying upon the typeface as a source of unique design for its brand. Moreover, protection under other forms of intellectual property could last far longer than a design patent. Recent law suggests that a unique typeface could function as a signifier of origin, or in other words, as a trademark. To allege trademark infringement, a typeface owner would need to allege a claim that a consumer is confused between two companies because one has used the others’ typeface. Of course, the typeface owner would also have to prove that consumers associate the typeface with the company that owns it.
It’s never an easy question for a company to decide whether to protect some aspect of its business through IP law, and then which form it should choose for that protection. But, for those investing in unique typefaces, at least the question can be somewhat narrowed to design patent protection, or unfair competition. Either way there’s a good chance at having the last word against an infringer.
