Standing Out in a Crowded Bar: Protecting Your Craft Beer with Design Patents

Authored by Elizabeth D. Ferrill and Forrest A. Jones

After a long, hard day, a loyal customer strolls into the welcoming doors of his favorite watering hole. As his eyes adjust to the dim lighting, the crowd near the bartender magically parts and, as if a gift from the gods, he sees the distinctive bottle of your craft beer—his favorite. Pointing to the bottle, he confidently places your order. He takes a sip, expecting that familiar taste—but wait, that's not right. This is an imposter!

As readers of Craft Brewing Business know, craft beer is on the rise. Today, there are more than 3,000 breweries operating in the United States, a far cry from the 1970s and 1980s when that number dipped below 100. All those breweries mean endless choices for consumers, but it also means brewers need to find ways to stand out to consumers on a shelf or bar bursting with rival products and make sure that consumers can readily distinguish your products over your competitors. While most brewers turn to trademark law to protect their brand, design patents are a useful and often overlooked tool to protect innovative packaging, displays, glassware, labeling, and tap handles. Design patents can help brewers keep others from copying a brewer's unique "look and feel."

What are Design Patents?

Design patents are, as you would expect, a protection for a design. Design patents cannot protect the functionality of a product—that is the providence of the utility patent. If you asked someone on the street what a patent is, utility patents are probably what they would describe. Instead, design patents protect the "ornamental design" of a product, known in the law as an "article of manufacture." In other words, a design patent protects the way something looks, not the way it is made or used.

Companies turn to design patents for many different reasons, but primarily it is when a company has invested resources in the design of its product and wants to keep its competitors from outright copying the design or creating a "highly inspired" design. In either case, those copycat products could confuse the consumer, who might think she is buying a product from one company that is actually made by another company. Trademarks serve a similar purpose, but design patents have some different aspects in how they are procured and enforced.

In the United States, design patents are granted through an examination process, where the applicant talks back and forth with the U.S. Patent and Trademark Office (PTO) about whether a design patent should be granted. To get a patent, the design must be new, not an obvious variant of an already existing design, not solely dictated by function, and clearly depicted. Once the PTO agrees that the design meets these requirements, it will issue a design patent which grants the owner 15 years during which no one can make a product with the patented design or one that is substantially the same.

Design patents are enforced more like trademarks than utility patents. A product infringes a design patent if an ordinary observer, familiar with the prior designs of the same type, would be deceived into believing the design of the product is substantially the same as the design protected by the patent. If a product is found to infringe, then a court can either order the maker of the product to stop making the product or to pay the owner of the design patent money, known as "damages". Damages for infringement can be quite substantial. As was recently affirmed by the Federal Circuit in a recent prominent case involving Apple and Samsung, a court can award design patent owners the total profits of an infringing product. In the alternative, a court could award the design patent owner a reasonable royalty on future sales of the infringing product or the design patent owner's lost profits (which can be helpful instances where the infringing product has a lower profit margin).

Protect Old Products Through New Designs

Design patents are particularly useful for established industries, like the brewing industry, because of their ability to protect a new design for what might be an old product. Brewing has been around since the 6th millennium BC, there are not many more established industries out there. While there are still innovations qualifying for utility patents every year, the majority of the brewing industry is about perfecting the craft. But, brewers can still get patent protection to protect the innovative packaging of their brews through design patents.

Copycat Packaging

Given the liquid nature of beer, design patents for beer would likely protect the design of the package it is sold in, or the related products used to serve or promote the beer. The shape of the bottle on a shelf can make a beverage stand out or blend in with the crowd. Famously, Coca Cola has demonstrated the usefulness of distinctive packaging through the years in the soft drink industry, dating all the way back to the design patent on their first contour bottle back in 1915.

Beer is of course not only sold by the bottle. Beer sold at the tap can also have its "packaging" protected. Consumers often identify their favorite beers at the bar through the distinctive shape of the handle it is served with. These handles can also be the subject of design patent protection.

Protecting Your "Look and Feel" Through Related Products

Protecting your brand can extend beyond beer itself. Brewers have successfully protected related products in the past, from bottle openers to bar coasters to glassware. Samuel Adams has rather famously sold their specially designed and branded glasses in which to drink their beer. While the glasses are not the primary product Sam Adams sells, they help interested others know that the people holding them are drinking Sam Adams. Those glasses are the subject of two design patents.

Design patents also do not need to be limited to products sold to customers. With the rise of craft brewing, consumers have become more and more interested in the process of how the beer is made. Design patents on even the brewing equipment can help create a distinctive look in the eyes of curious tour groups, such as this 1960s design patent on a beer fermenting tank.

Using Design Patents to Protect Only Portions of Your Product

U.S. law does not require that a design patent cover an entire product. Through a technique known as "portion claiming," you can get a design patent that claims only part of a design for a larger article of manufacture. Let's look at a typical way beer is sold at the store: a six pack. Through portion claiming, you do not have to just get a design patent on the whole six pack. You could get a design patent on the bottles, the bottle cap, the label shape, and the carrying carton shape.

This can be important also when you are looking to protect a line of beers, and not just one variety. Each will have its own unique name and packaging images. But the shape of the bottles, the design of the caps, and the design of carrying carton may all be the same, building a cohesive brand identity. With portion claiming, you can get protection on each individual element to better protect from an imposter acting like it is part of your product line.

Cost Effective Protection

Typically, design patents are less expensive, quicker, and easier to obtain than utility patents. In some instances, they may be easier to enforce than trademarks. Design patents are attainable even for smaller companies with more niche markets.

However, you should be careful that your design patents are not "cheap." There are many pitfalls during prosecution which an unaware applicant may stumble across. Careful attention has to be paid to the drawings which define the scope of the protection the design patent will give you. In particular, many design patents issue with a trademark or logo included in the design. However, a competing brewer will likely use their own trademark, making your protection less useful. It is important to retain an experienced design patent attorney to help guide you.