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Intellectual Property Insights from Fishman Stewart
Mini Article – Volume 23, Issue 9

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Taco ‘Bout Innovation: Cinco de Mayo and the Importance of Design Patents

By Melissa M. Chapman

Did you know General Mills got a patent on a tortilla shell?

When we think of the word “patent,” most of us think of a utility patent—which is a patent for protecting the function or a utilitarian feature of an invention. However, US patent law also allows for a patent to be granted to a design of product. A design patent protects the appearance of a product. For example, a design patent can be directed to the configuration or shape of a product, an ornamentation on the surface of the product, or to a combination of the two.

In other words, a utility patent covers how something works, but a design patent covers how something looks.

In fact, a design patent can cover a new design for an existing product. This is how General Mills obtained design patent USD759,342 for a “shaped tortilla”—a concept that has been around probably as long as the tortilla itself.  The patent is not directed to a method of making a bowl out of a tortilla or to a bowl made from a tortilla. It is only directed to “the ornamental design for a shaped tortilla”—essentially, a tortilla in the drawing below:

But what if you make a tortilla bowl at home? Are you infringing the patent? Generally speaking, the test for infringement of a design patent is whether the accused design would appear substantially similar to the patented design in the eye of the ordinary observer. Additionally, courts will disregard from protection the functional features of a design, for example, the bowl function of the tortilla shell. Thus, if you happen to be celebrating Cinco de Mayo, feel free to make your own bowl-shaped tortilla shell design and top it off with all of your favorite taco toppings. That’s what I’ll be doing!

Melissa M. Chapman is an associate attorney at Fishman Stewart and works in the firm’s Patent Practice Group. Check out her full bio here.


Published May 5, 2023

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