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[lene quattlebaum]

My family has begun duplicating and producing a unique style of funiture designed by my great grandfather, several decades ago.  What is the best suggested way of protecting his design?  Patenting or trademarking?

[JimIvey]

The short answer is neither.  

Patents must be filed within one year of the first public use or offer for sale.  Too late.

Trademarks won't protect the furniture designs themselves, only the name/phrase you use to designate yourselves as the supplier.  Here are some examples of trademarks so that you might get the idea:  IKEA, Eames, Barcelona (chair), Aeron (chair), etc.  

While trademarks won't protect the designs themselves, you can see from the examples above that trademarks can be quite valuable and important.  

Other things you might consider are trade dress/unfair competition and copyrights.

Trade dress/unfair competition.  This is a fairly close relative of trademarks.  They pertain to trying to fool the public by making one product look and/or feel confusingly similar to another product.  Suppose I made Jimbo Cola and packaged it in red cans with a white/silver swoosh/wave.  Suppose also that Coca-cola didn't trademark the color or swoosh design (they may have for all I know).  It's arguable that my design is too similar to that of Coca-Cola's so I might be unfairly benefiting from consumer confusion.  That's trade dress.  

Now, notice that I focused on the can (i.e., packaging), not the product itself.  It's perfectly okay that Jimbo Cola is brown and carbonated.  It's also perfectly okay if Jimbo Cola tastes exactly like Coca Cola, assuming I didn't have unauthorized access to their trade secrets.  I don't know under what circumstances, if any, trade dress can apply to the product itself and not just its marketing/packaging.

Trade dress is a subset of unfair competition, I think.  Unfair competition can include other types of behavior that really isn't pertinent here.

Copyrights.  This could be a bit of a stretch, but it's one of my favorite clever arguments.  To the extent you can claim that your great grandfather's designs were artistic scultures, you can claim copyright in them.  The good news there is that you may already be protected -- however, copyright law was different decades ago so I'm not clear on that.  The bad news is that copyright protects against copying, not independent creation or even works "inspired" by copyrighted works.  Well, up to a point -- at some point, a subsequent "inspired" work is considered "derivative" and is protected.

I hope that helps.

Regards.

[George]

For other countries, there may be  another story.

Public use or offer to sale in US may not affect the novlety of a patent application in another countries. For detailed information, please consult a patent attorney from those countries you may want to protect your product.

If you have interest to seek for a patent for the furniture design in China, I would like to provide your detailed information.

Regards,

George

[JSonnabend]

I disagree with Jim's characterization of trade dress.  Trade dress is a form of trademark, and is registerable as such.  There is no substantive distinction between trade dress protection and trademark protect, generally speaking, as both arise from precisely the same legal foundations.

- Jeff

[JimIvey]

Thanks for the clarification, Jeff.

The case I was remembering was from about 10-15 years ago and involved the use of a particular color/design can for powdered kitchen cleanser.  (Bon Ami maybe?)  I may be remembering the facts wrong, but I don't believe there was any registration involved, nor was there much in the way of traditional trademark analysis -- though the analysis was similar as I recall.  

That's where I got the impression that trade dress was similar to, but distinct from, trademarks.  Of course, it's entirely possible that it was a district court that simply got the law wrong -- happens all the time (cf. the rumored but non-existent business method exception to elibigle subject matter for patents).

As you can see, my familiarity with trade dress law is quite sketchy.  Thanks for filling in details.

Regards.