October 23, 2021

Volume XI, Number 296

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"Types" of Protection for Font and Typeface Designs

As a counterpoint to our article last month regarding a copyright infringement and breach of contract lawsuit filed against Target over a computer font program, we provide a brief overview of the options for protecting the IP in a typeface design in the U.S. 

Design Patent

First, font designs are protectable by design patents–in fact, the very first U.S. design patent, issued in 1842, covered a typeface designed by George Bruce. Design patents can cover the underlying design of the typeface, so long as the design is deemed to be novel and non-obvious by the USPTO.  Design patent applications filed after May 13, 2015 provide a 15-year protection term from the date of grant.

Unlike some countries that allow only one typeface set of letters, numbers, or signs and symbols in a single design patent, the U.S. allows a typeface set of all the letters of the alphabet, numbers, and signs and symbols in a single design patent; the U.S. also does not limit protection of the font design to a particular font size.

Copyright

Second, the Target case notwithstanding, the U.S. Copyright Office has determined that typeface, lettering, calligraphy, and typographic ornamentation are generally not registrable, no matter how creative. Compendium (Third) § 906.4, citing 37 C.F.R. § 202.1(a), (e). This is because the Office considers typefaces to be mere variations of un-copyrightable letters or words, which are “the building blocks of expression” and therefore not protectable by a single owner. Id.

However, a typeface may be registrable if they are made up of “pictorial or graphic elements that are incorporated into un-copyrightable characters or used to represent an entire letter or number.” The Office provides the example of “original pictorial art that forms the entire body or shape of the typeface characters, such as a representation of an oak tree, a rose, or a giraffe that is depicted in the shape of a particular letter.”

Notably, copyright law can (and often does) protect computer software programs used to create or use digital versions of a typeface, or font. It is important to note, though, that such a registration will only cover the source code that generates these designs, as opposed to the resulting typeface, typefont, lettering, or calligraphy itself. 

Trademark

Finally, trademark law can protect the name of a typeface (e.g., “Times New Roman” has been registered by The Monotype Corporation since 1985), but not the underlying design. 

However, a font design can be the subject of some trademark protection if it is incorporated into a logo, as in the case of Disney’s famous script. 

As with all trademark rights, it is important to note that trademark rights – registered or unregistered -- pertaining to a font or logo design extend only to the goods and/or services for which they are used (and those that may be considered similar or related); thus, protection for a logo in a particular service area likely does not cover any and all uses of that logo design and the font contained within.

© 2021 Sterne KesslerNational Law Review, Volume VII, Number 333
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About this Author

Associate

Dana Justus is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice, with a practice focused on U.S. and international trademark clearance, prosecution, enforcement, and portfolio management for clients in a wide variety of industries. She has significant experience in civil litigation related to trademark and copyright matters in federal district court and administrative proceedings at the Trademark Trial and Appeal Board (TTAB) and International Trade Commission (ITC). In addition, she conducts due diligence analysis of intellectual property assets, provides...

202-772-8691
Ivy Clarice Estoesta, Mechanical Design Attorney, Sterne Kessler Law Firm
Associate

Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler.  Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights.  Her legal experience, which began at the firm, and academic background provide her a multidimensional perspective in securing comprehensive IP rights for an array of clients in various industries, including pharmaceuticals, dietary food and beverages, footwear, electronic devices, and household cleaning products.

Ms. Estoesta joined the firm in 2006 as a legal assistant in...

202-772-8686
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