MPEP § 1512 — MPEP § 1512
Current through: 2022-07-01

1512-Relationship Between Design Patent, Copyright, and Trademark 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1500 

 Section 1512 
 

 
 
 
 
 
 1512 Relationship Between Design Patent, Copyright, and
 Trademark [R-07.2022]
 
 I. DESIGN PATENT/COPYRIGHT OVERLAP There is an area of overlap between copyright and design patent
 statutes where the author/inventor can secure both a copyright and a design patent. Thus
 an ornamental design may be copyrighted as a work of art and may also be subject matter
 of a design patent. The author/inventor may not be required to elect between securing a
 copyright or a design patent. See In re Yardley, 493 F.2d 1389, 181
 USPQ 331. In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (1954), the
 Supreme Court noted the election of protection doctrine but did not express any view on
 it since a design patent had been secured in the case and the issue was not before the
 Court.
 

 See form paragraph 15.55 which repeats this
 information.
 

 II. INCLUSION OF COPYRIGHT NOTICE It is the policy of the U.S. Patent and Trademark Office to permit the
 inclusion of a copyright notice in a design patent application, and thereby any patent
 issuing therefrom, under the following conditions.
 

 
 (A) A copyright notice must be placed adjacent to the copyright
 material and, therefore, may appear at any appropriate portion of the patent
 application disclosure including the drawing. However, if appearing on the
 drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and
 must be placed within the “sight” of the drawing immediately below the figure
 representing the copyright material. If placed on a drawing in conformance with
 these provisions, the examiner will not object to the notice as extraneous matter
 under 37 CFR
 1.84 .
 

 (B) The content of the copyright notice must be limited to only those
 elements required by law. For example, “© 1983 John Doe” would be legally
 sufficient under 17 U.S.C. 401 and properly limited.
 

 (C) Inclusion of a copyright notice will be permitted only if the
 following waiver is included at the beginning (preferably as the first paragraph)
 of the specification to be printed for the patent:
 
 A portion of the disclosure of this patent document contains
 material to which a claim for copyright is made. The copyright owner has no
 objection to the facsimile reproduction by anyone of the patent document or the
 patent disclosure, as it appears in the Patent and Trademark Office patent file
 or records, but reserves all other copyright rights whatsoever.
 

 
 

 (D) Inclusion of a copyright notice after a Notice of Allowance has
 been mailed will be permitted only if the criteria of 37 CFR 1.312 
 have been satisfied.
 

 
 Any departure from these conditions may result in a refusal to permit
 the desired inclusion. If the waiver required under condition (C) above does not include
 the specific language “(t)he copyright owner has no objection to the facsimile
 reproduction by anyone of the patent document or the patent disclosure, as it appears in
 the U.S. Patent and Trademark Office patent file or records....”, the examiner will
 object to the copyright notice as improper.
 

 See form paragraph 15.55 which repeats this
 information.
 

 ¶ 15.55 Design Patent-Copyright Overlap

 There is an area of overlap between Copyright and Design Patent Statutes
 where an author/inventor can secure both a Copyright and a Design Patent. Thus, an ornamental
 design may be copyrighted as a work of art and may also be the subject matter of a Design
 Patent. The author/inventor may not be required to elect between securing a copyright or a
 design patent. See In re Yardley , 493 F. 2d 1389, 181 USPQ 331 (CCPA 1974).
 In Mazer v. Stein , 347 U.S. 201, 100 USPQ 325 (U.S. 1954), the Supreme
 Court noted the election of protection doctrine but did not express any view on it since a
 Design Patent had been secured in the case and the issue was not before the Court.
 

 It is the policy of the Patent and
 Trademark Office to permit the inclusion of a copyright notice in a Design Patent application,
 and thereby any patent issuing therefrom, under the following conditions:
 

 
 (1) A copyright notice must be
 placed adjacent to the copyright material and, therefore, may appear at any
 appropriate portion of the patent application disclosure including the drawing.
 However, if appearing on the drawing, the notice must be limited in print size from
 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately
 below the figure representing the copyright material. If placed on a drawing in
 conformance with these provisions, the examiner will not object to the notice as
 extraneous matter under 37 CFR 1.84 .
 

 (2) The content of the copyright
 notice must be limited to only those elements required by law. For example, “© 1983
 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly
 limited.
 

 (3) Inclusion of a copyright
 notice will be permitted only if the following waiver is included at the beginning
 (preferably as the first paragraph) of the specification to be printed for the
 patent:
 
 A portion of the disclosure of this patent document contains
 material to which a claim for copyright is made. The copyright owner has no objection
 to the facsimile reproduction by anyone of the patent document or the patent
 disclosure, as it appears in the Patent and Trademark Office patent file or records,
 but reserves all other copyrights whatsoever.
 

 
 

 (4) Inclusion of a copyright
 notice after a Notice of Allowance has been mailed will be permitted only if the
 criteria of 37 CFR
 1.312 have been satisfied.
 

 
 Any departure from these conditions
 may result in a refusal to permit the desired inclusion. If the waiver required under
 condition (3) above does not include the specific language “(t)he copyright owner has no
 objection to the facsimile reproduction by anyone of the patent document or the patent
 disclosure, as it appears in the Patent and Trademark Office patent file or records...,” the
 examiner will object to the copyright notice as improper.
 

 

 The files of design patents D-243,821, D-243,824, and D-243,920 show
 examples of an earlier similar procedure.
 

 III. DESIGN PATENT/TRADEMARK OVERLAP A design patent and a trademark may be obtained on the same subject
 matter. The CCPA, in In re Mogen David Wine Corp., 328 F.2d 925, 140
 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593
 (CCPA 1967), held that the underlying purpose and essence of patent rights are separate
 and distinct from those pertaining to trademarks, and that no right accruing from one is
 dependent or conditioned by the right concomitant to the other.
 

 See form paragraph 15.55.01 which repeats this
 information.
 

 ¶ 15.55.01 Design Patent - Trademark Overlap

 A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp. , 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has
 held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks,
 and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.
 

 
 IV. INCLUSION OF TRADEMARKS IN DESIGN PATENT APPLICATIONS 

 A. Specification The use of trademarks in design patent application specifications is
 permitted under limited circumstances. See MPEP § 608.01(v) . This section
 assumes that the proposed use of a trademark is a legal use under federal trademark
 law.
 

 B. Title It is improper to use a trademark alone or coupled with the word
 “type” (e.g., Band-Aid type Bandage) in the title of a design. Examiners must object
 to the use of a trademark in the title of a design application and require its
 deletion therefrom.
 

 C. Drawings When a trademark is used in the drawing disclosure of a design
 application, the specification must include a statement preceding the claim
 identifying the trademark material forming part of the claimed design and the name of
 the owner of the registered trademark. Form paragraph 15.76 may be
 used.
 

 ¶ 15.76 Trademark in Drawing

 The [1] forming part of the claimed design is a registered trademark of [2] . The specification must be amended to include a statement preceding the claim identifying the trademark material forming
 part of the claimed design and the name of the owner of the trademark.
 

 Examiner Note:
 
 1. In bracket 1, identify the trademark material.

 2. In bracket 2, identify the trademark owner.
 
 

 Any use of a trademark in a derogatory manner in a design
 application is prohibited and will result in a rejection of the claim under
 35 U.S.C.
 171 as being offensive and, therefore, improper subject matter
 for design patent protection. Cf. Dallas Cowboys Cheerleaders, Inc. v.
 Pussycat Cinema, Ltd., 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979) and
 Coca-Cola Co. v. Gemini Rising Inc., 346 F. Supp. 1183, 175
 USPQ 56 (E.D.N.Y. 1972).
 

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 1501-Statutes and Rules Applicable 

 1502-Definition of a Design 
 1502.01-Distinction Between Design and Utility Patents 

 1502.02-Design Patent Practitioner Bar 

 
 

 1503-Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16 
 1503.01-Specification 

 1503.02-Drawing 

 
 

 1504-Examination 
 1504.01-Statutory Subject Matter for Designs 
 1504.01(a)-Computer-Generated Electronic Images 

 1504.01(b)-Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article 

 1504.01(c)-Lack of Ornamentality 

 1504.01(d)-Simulation 

 1504.01(e)-Offensive Subject Matter 

 
 

 1504.02-Novelty 

 1504.03-Nonobviousness 

 1504.04-Considerations Under 35 U.S.C. 112 

 1504.05-Restriction 

 1504.06-Double Patenting 

 1504.07 - 1504.09-[Reserved] 

 1504.10-Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) 

 1504.11-1504.19-[Reserved] 

 1504.20-Benefit Under 35 U.S.C. 120 

 1504.21-1504.29-[Reserved] 

 1504.30-Expedited Examination 

 
 

 1505-Term of Design Patent 

 1506-1508-[Reserved] 

 1509-Reissue of a Design Patent 

 1510-Reexamination 

 1511-Protest 

 1512-Relationship Between Design Patent, Copyright, and Trademark 

 1513-Miscellaneous 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:27