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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Check out Starbucks’ new bakery café concept
Starbucks Corp. is expanding its fledgling Princi format with an outpost in New York City.
The coffee giant’s third freestanding Princi location will make its official debut in a few weeks, on the corner of 51st and Broadway in Manhattan, just minutes away from bustling Times Square. A large window on Broadway provides passers-by with views of freshly baked items coming out of the oven.
In 2016, Starbucks announced that it had joined a global investment team – which includes Milan-based Angel Capital Management and Pekepan Investments – to expand Italy’s Princi into international markets. The company opened its first freestanding Princi in July, in Seattle. Last month, Starbucks brought the concept to Chicago, with a location in the city’s West Loop.
The New York store features the full Princi menu, starting with such breakfast items as baked eggs in a spicy tomato sauce to lunchtime items that include soups, salads, focaccia sandwiches, pizza, and hot entrees. A wider selection of Italian cakes, tarts and other desserts is offered in the afternoon. Later in the day, the on-site Bar Mixato will offer traditional Italian wine and beer and complimentary small plates. The signature coffee served is Starbucks Reserve Princi blend, along with a variety of other coffee beverages.
The Starbucks store design team took inspiration from Princi’s original Milan bakery, using natural materials and earth-colored stone. Many of the design elements, such as the hand-blown glass light fixtures, were selected for their high level of craftsmanship. A 20-ft. curated wall displays an array of colorful ingredients – from lemons and peppers to glass jars filled with tomatoes and olives – with a goal to enhance the “feast for the senses.”
The focal point of the space are two ovens, which allow for baking onsite throughout the day. A brightly-lit food case stretches along the width of the store, displaying baked cornetti, brioche and focaccia, pizzas, salads and desserts. The store also features a 20-foot communal table.
The new Princi stand-alone location offers a taste of what’s to come later this year when Starbucks will open its Reserve Roastery New York in the city’s meatpacking district. It will also serve Princi food baked fresh on-site.
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The disruption of retail continues as fashion goes to the office
Two fast-growing disruptors — one that rents clothes and the other that rents co-working office spaces — have entered into a partnership.
Clothing rental service Rent the Runway has teamed up with WeWork to install drop-off boxes with self-service technology in the lobbies at 15 WeWork locations in six cities: Chicago, Los Angeles, Miami, New York City, San Francisco, and Washington, D.C. Runway shoppers will be able to leave their rental returns in the box and, using the technology, also order new items. Previously, Rent the Runway subscribers only had access to the drop-off boxes at the company’s five brick-and-mortar locations (New York City, Chicago, San Francisco, Washington, D.C., and Los Angeles).
“This is really just the beginning,” said Jennifer Hyman, CEO, Rent the Runway, told Bloomberg. “We have subscribers in many places throughout the U.S. and with WeWork’s massive footprint, there’s huge opportunity to grow this drop-box network.”
As part of the collaboration, Rent the Runway will open pop-up shops in several of the WeWork locations, allowing members to browse the latest fashions and take some items home by using the self-checkout technology on the retailer’s app. WeWork members will also receive discounted Rent the Runway memberships.
Rent the Runway was founded in 2009 as an online site where women could rent designer apparel for special occasions. But it has broadened its assortment to include everyday wear, for work and play. It also has greatly expanded its audience by moving beyond one-time rentals to include two monthly subscription plans.
WeWork CFO Artie Minson said that the partnership is one more way the company is moving into retail. In June, WeWork launched a retail concept, WeMrkt, at one of its locations in downtown Manhattan. The small shop sells a curated selection of merchandise, exclusively to the company’s members, with the products made by member companies. The concept, which has since expanded to other locations, is all about promoting members, according to Minson.
“We will offer our member companies an entirely unique channel of distribution for their products and goods, and we’re excited to be able to help them in this way,” he said.
Fashion is personal. Customers want to feel the fabrics and see the fashion on their bodies. Going in the physical retail stores and trying on clothes and building an outfit with a stylist is the only way this happens. Amazon and online retailers cannot give the full fashion experience to the consumer period. Michael Sapir, CEO, Sapir Real Estate Development