How to Obtain IP Protection for Jewelry
Some of the most iconic brands in the world are associated with jewelry — e.g., Cartier, Hermès, and Tiffany & Co., just to name a few. These brands did not achieve their stature by chance, however. In addition to making products that delight their customers, they also have built up comprehensive intellectual property (IP) strategies over the years to protect their designs and keep them out of the hands of copycats. A strong IP protection strategy can help a jewelry brand maintain its air of exclusivity and heighten the value (or perceived value) of its products. Jewelry is eligible for several types of IP protection, including jewelry design patents, trademarks, and copyrights.
Jewelry Design Patents
Design patents are obtainable by anyone who invents a “new, original and ornamental design for any article of manufacture.” 35 U.S.C. § 171. This is in contrast to utility patents, which protect machines, processes, articles of manufacture, compositions of matter, and other functional inventions. Design patents protect the way an article looks, including surface ornamentation, impressions, prints, pictures, shapes, and configurations. In some rare cases, jewelry may be eligible for utility patent protection if it contains functional elements, such as a bracelet that doubles as a bottle opener, for example. But for traditional jewelry that is purely ornamental, design patents are an ideal form of IP protection.
Advantages of Jewelry Design Patents
Design patents are particularly important in the jewelry and fashion industries because these products derive most of their value from the way they look rather than the way they work. Unlike in other industries, such as tech, utility is little to no concern for most jewelry buyers. A patent on a unique and popular design in the jewelry industry can thus have similar value to a patent on a groundbreaking innovation in other industries.
Design patents also offer several other advantages for patent applicants over utility patents, including:
- Price: Filing and prosecuting a design patent application is generally cheaper than a utility patent application
- Speed: The average design patent is issued 19.9 months after the application is filed, compared to 24.4 months for utility patents
- Complexity: Design patent applications are much simpler than utility patent applications, and they tend to receive fewer rejections
- Allowance rate: The allowance rate (the percentage of patent applications that are granted) for design patents is higher than that for utility patents, at 84.2%
Once a design patent applicant receives a patent on his or her design, the owner of the patent has the exclusive right to the design. Anyone who copies the design without the patent owner’s permission commits patent infringement and may be liable to the patent owner for damages. Such copying also does not need to be exact; infringement can be found even where the defendant’s design is merely substantially similar to the patent owner’s.
How to Patent a Jewelry Design
The process of applying for a patent is known as patent prosecution and is similar for design patents and utility patents. It begins when the patent applicant files a patent application at the United States Patent and Trademark Office (USPTO). The application will then be assigned to a patent examiner who is an expert in the field of the patent and who will evaluate the design for its compliance with the requirements for design patents.
Those requirements are:
- Article of manufacture: The design must be more than theoretical; it must be applied, affixed, or embedded into a physical object such that the design is inseparable from the physical object itself. Most types of jewelry easily meet this requirement. For example, a bracelet would be considered an article of manufacture because the design of the bracelet is inseparable from the bracelet itself.
- Novelty: Patentable designs must be new (or “novel”). That is, they cannot have been patented, described in a publication, or offered for sale to the public before the patent applicant applies for his or her patent. A common test for determining novelty for designs is the “ordinary observer” test, which states that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”
- Originality: The originality doctrine generally holds that a patentable design must be different from well-known or naturally occurring designs, objects, or people. In other words, the design cannot merely simulate an existing object. This could occur, for example, where the applicant for a jewelry design patent submits a drawing of a necklace of the Statue of Liberty that has not been stylized or caricatured in any way.
- Ornamentality: Patentable designs must be primarily ornamental. They cannot be the result of functional or material considerations, nor can they offer utilitarian advantages. Generally, a design is considered non-ornamental if the specific design is essential to the use of the article to which it is applied. This could occur, for example, where the design of a watch band reduced hair pulling on the wearer’s wrist.
- Non-obviousness: Obviousness in the patent context arises where the design in the patent application would have been an obvious change to a person having ordinary skill in the art. For example, a ring with three diamonds in the band would be an obvious change to an existing identical ring with only two diamonds in the band. Designs may be found obvious if the design characteristics of the reference design are “basically the same” as the design in the design patent application.
After the patent applicant submits his or her design patent application, the patent examiner may issue one or more rejections stating that the design does not conform to one or more of the above requirements for patentability. The applicant may then amend the application to address the examiner’s concerns. Once the application is in condition for allowance, the USPTO will issue the design patent. The term of a design patent is 15 years from the date of the original application.
Avoiding Patent Infringement
Patent infringement is a serious risk for any company, including those in the jewelry industry. If you frequently create new designs and offer those products for sale, it is important to ensure that you are not infringing any other companies’ patents by doing so. Patent infringement does not have to be intentional — patent infringement liability can arise even in cases where you were unaware that your design was already the subject of a design patent. The simplest way to avoid patent infringement liability is to perform a patent search before launching a new product. A patent search can identify existing patents that cover the same or substantially similar designs that have already been patented. If the search reveals the existence of such a patent, you can significantly reduce your patent litigation risk by altering your design away from the patented design. Not only can a patent search protect you from liability, it can also guide your design process. If you know which designs are already patented, you no longer have to take shots in the dark when creating new designs.
Examples of Jewelry Design Patents
- USD863098S1: Gemstone and charm for a necklace or bracelet
- USD814964S1: Jewelry with gradient gemstone pattern
- USD748518S1: Combined necklace and pendant
- USD610033S1: Stud earring
Design patents are not the only form of IP protection available for jewelry. Copyrights in the jewelry industry can also deliver a great amount of value to their holders. Generally, copyrights protect works of authorship and other forms of artistic expression, including literary works, music, dramatic productions, films, visual art, and architecture. Copyrights give their owners the exclusive rights to reproduce the work, prepare derivative works based on the work, and offer the work for sale to the public.
Copyrightable jewelry must be:
- A work of authorship: Copyrightable jewelry must be a work of authorship, which encompasses most forms of creative expression, including pictorial, graphic, and sculptural works. Ideas alone do not qualify for copyright protection.
- Originality: Copyrightable jewelry must have at least a modicum of originality. It does not need to be a never-before-seen design, but it must be something more than a direct copy of an existing design. The bar for originality is very low and generally withholds copyright protection from works that require no creativity at all, such as a list of names in a telephone book in alphabetical order.
- Fixation: A work must be “fixed” in a tangible medium to qualify for copyright protection. In most cases, this means that the work is capable of being reproduced, such as via a photograph, compact disc, drawing, or another medium. Like the article of manufacture requirement for design patents, the fixation requirement does not present a major hurdle to copyright protection for jewelry.
A major advantage of jewelry copyrights over jewelry design patents is that copyrights arise automatically when the work is created. While copyright holders may choose to register their copyrights with the U.S. Copyright Office, registration is not required and will not result in a loss of rights. Copyrights also remain in force for much longer than design patents — in most cases, for the life of the author plus 70 years after the author’s death.
Examples of Jewelry Copyrights
- VA0001887745: Bracelet
- VA0001255573: Hug me pendant
- VA0000900053: Necklace
- VAu000368824: Celtic triangle hair tie
Jewelry Trademarks and Trade Dress
Trademarks protect source-identifying information, such as brand names, logos, slogans, jingles, and any other type of mark that could reasonably identity the source of a particular good to the public. In the jewelry industry, trademarks can be particularly iconic — most consumers will immediately recognize a product with a pair of reversed, interlocking “Cs” on it as being a Chanel product, for example. Trademarks can apply both to brand names (e.g., Tiffany & Co.) and to specific lines of products within the brand (e.g., Tiffany & Co.’s Atlas collection).
Trade dress protection can also be highly valuable for jewelry makers. Similar to trademarks, trade dress refers to the visual appearance of a product, its packaging, or the environment in which it is sold that the consuming public has come to understand as being source identifiers. For example, the signature orange boxes in which Hermès packages its products have come to be so closely identified with the brand that they may be considered protectable trade dress.
There are two key requirements for a brand element to qualify for trademark protection:
- Use in commerce: Trademark rights arise primarily through use. To qualify for trademark protection, the brand owner must show that the mark has been affixed to its goods and services or used in connection with its goods and services in the marketplace or that the owner intends to use the mark as such.
- Distinctiveness: To function as a trademark, the mark must be capable of distinguishing the owner’s goods and services from those others and identifying their source. The more distinctive the mark, the easier it is for the mark to function as a source identifier. Generally, marks that consist of made-up words or words that are unrelated to the product to which they are applied (e.g., Fossil), are more distinctive than marks that are merely descriptive of their products (e.g., “Alabama Necklace Company”).
Unlike patents and copyrights, trademarks have no fixed expiration date — they remain in force so long as the marks are being used in commerce, although registrants must nonetheless comply with the USPTO’s trademark maintenance requirements.
Examples of Jewelry Trademarks
- 97315866: “YSL” logo
- 90394867: “CC” logo
- 86571740: Tiffany Blue
- 90419567: Link d’Hermès
Protect Your Jewelry with a Design Patent or Other form of IP Protection
The best way to get started on protecting your jewelry IP is to file a jewelry design patent application at the USPTO. However, patent prosecution is no small task, and many applicants fail when they try to do it alone. To maximize your chances of success in getting a patent on your jewelry products, you should consider speaking with an attorney who has significant experience handling these types of matters.