It is widely accepted that some designs may be entitled to both copyright protection (as original, creative expressions of an idea) and trademark protection (as indicators of the source of a product or service). Brand owners can benefit from exercising both copyright and trademark rights in such property. However, they should be mindful of potential conflict when commissioning a design from an outside designer. A potential unintended consequence is bifurcated ownership where the original copyright in the design is held by a party that can re-claim its rights long after the copyright was assigned to the trademark owner.

This feature article explores how we arrived at this divide from a U.S. perspective. It considers some arguments available to trademark owners to protect their existing rights and potential steps to mitigate the conflict between these two competing rights.