Protecting Nontraditional Trademarks Under Trademark...

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Protecting Nontraditional Trademarks Under

Trademark, Copyright and Design Patent Law Using Conventional and Unconventional Approaches to Establish, Register and Enforce Marks

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, MARCH 28, 2017

Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta

Robert D. Litowitz, Partner, Kelly IP, Washington, D.C.

Linda K. McLeod, Partner, Kelly IP, Washington, D.C.

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Protecting Non-Traditional

Trademarks Under Trademark,

Copyright and Design Patent Law

Ted Davis

[email protected]

http://www.straffordpub.com/products/protecting-non-traditional-trademarks-under-trademark-copyright-and-design-patent-law-2014-02-18





mailto:[email protected]

Focus In Previous Years Was On Non-Traditional

Trademarks.

Purpose of Today’s Program Is To Explore How

To Fashion Best Protection for Product Design

and Untraditional Trade Dress.

AGENDA

6

© 2014 Kilpatrick Townsend

A Quick Overview

Copyright Applies To Any Work With A

Modicum of Creativity:

- Advertisements and Promotions

- Web Sites and Software

- Books, Music, Art and Photographs

- Textile, Graphics, Sculpture, Clothing and Jewelry

Design (including furniture and wallcoverings)

- Product Labels and Applied Designs

I. Copyrights In Business:

Not Just For Writers And Artists

8

Conceptual Separability

Copyright law does not protect functional

aspects of objects.

Consumer products with an intrinsic utilitarian

function are protectable “only if, and only to the

extent that, such design incorporates pictorial,

graphic, or sculptural features that can be

identified separately from, and are capable of

existing independently of, the utilitarian aspects

of the article.”

17 U.S.C. § 101.

Mazer v. Stein, 347 U.S. 201, 205 (1954).

9

Star Athletica v. Varsity Brands, 580 U.S. __ (March 22,

2017)

10

Star Athletica v. Varsity Brands, 580 U.S. __ (March 22,

2017)

“In sum, a feature of the design of a useful article is eligible for

copyright if, when identified and imagined apart from the useful

article, it would qualify as a pictorial, graphic, or sculptural work

either on its own or when fixed in some other tangible medium.

Applying this test to the surface decorations on the cheerleading

uniforms is straightforward. First, one can identify the decorations

as features having pictorial, graphic, or sculptural qualities.

Second, if the arrangement of colors, shapes, stripes, and

chevrons on the surface of the cheerleading uniforms were

separated from the uniform and applied in another medium—for

example, on a painter’s canvas—they would qualify as “two-

dimensional . . . works of . . . art,” …” Slip Op at 10

11

Infringement?

Copyrighted Accused

Tufenkian Imp./Exp. Vent. v. Einstein Moomjy, Inc., 338

F.3d 127 (2d Cir. 2003) (the court held a close visual inspection of the rugs confirms material portions of

the infringed work corresponds to material portions of the original)

12

Benefits of Copyright Protection

• Do Not Need To Show Confusion

• Can Prove Copying Either By Direct Or Indirect

Evidence

• For Works Registered Prior To Infringement, Can

Obtain Statutory Damages And, In Many Cases,

Attorneys’ Fees.

• Copyright Registration – Still The Best IP Deal In

Town.

• Registration Fee $35 -$55 if filed electronically.

13

Available For:

– “new, original and ornamental design for an article of

manufacture”

– (35 USC §171)

• entire article

• portion of article

• surface ornamentation

U.S. Design Patents

14

U.S. Design Patent No. 300,180 U.S. Design Pat. No. 269,550

U.S. Design Patent No. 506,092 U.S. Design Patent No. 352,833

U.S. Design Patents

15

Benefits of Design Patents:

– relatively inexpensive to obtain (about 3K)

– exclusive monopoly for 15 years

– relatively straightforward to enforce

– supplement / alternative to trade dress protection

• no distinctiveness requirement

• provides 14 years of exclusivity to develop distinctiveness

• design patents and trade dress are not mutually exclusive

U.S. Design Patents

16

Consider

Your Product Your Competitor

17

Cosmos Jewelry Ltd. v. Po Sun Hon Co.,

470 F. Supp. 2d 1072 (C.D. Cal. 2007),

aff’d, 2009 WL 766517 (9th Cir. Mar. 24, 2009)

• District Court held design of plumeria flowers not

protectable except for minor additions not copied.

• However, Plaintiff proved secondary meaning and

therefor obtained judgment based on violation of

trade dress.

• No Design Patent on work but if protected may well

have provided additional claim.

18

• We will now explore issues with respect to

registration of trade dress and non-traditional

trademarks

• Followed by policing strategies for trade dress and

non-traditional trademarks

• Conclude with Discussion of Design Patents.

• Your Questions

Agenda

19

Sound

Packaging

Linda McLeod 202-808-3574

[email protected]

Registration of Nontraditional

Trademarks in the U.S.

Functionality and Distinctiveness

• Two key hurdles for registration of nontraditional marks:

1) Functionality

• If mark is functional, it is not entitled to registration

2) Distinctiveness

• Mark must be distinctive either

– Inherently distinctive, or

– Acquired distinctiveness

21

Functionality - Overview

• TrafFix Devices, Inc. v. Mktg.

Displays Inc., (2001)

– Mark is functional if it is

“essential to the use or

purpose of the product or if it

affects the cost of quality of the

product.”

22

Functionality – Burdens and Evidence

• Morton-Norwich Evidentiary Factors:

(1) Existence of utility patent (even abandoned) that discloses utilitarian advantages

(2) Advertising that touts utilitarian advantages

(3) Availability of alternative designs

(4) Whether design results from comparatively simple or inexpensive method of manufacture

23

Inherent or Acquired Distinctiveness

• Seabrook Test for Inherent Distinctiveness:

– Whether mark is a common basic shape or design

– Whether mark is unique or unusual in field

– Whether mark is merely a refinement of a commonly

adopted and well-known form of ornamentation recognized

by public for those goods

– Whether mark is capable of creating a commercial

impression separate from any word mark

24

Acquired Distinctiveness

• Yamaha Int’l Corp. v. Hoshino Gakki Co. (Fed Cir. 1998)

– “[E]xact kind and amount of evidence necessary to establish

such secondary meaning necessarily depends on the

circumstances of the particular case.”

– As mark's non-distinctiveness increases, greater

evidentiary showing pursuant to Section 2(f) is required

• Proof of Acquired Distinctiveness:

– Prior existing Principal Registration

– Five years substantially exclusive and continuous use in

commerce

– Direct and circumstantial evidence

25

Acquired Distinctiveness – Direct & Circumstantial Evidence

• Length of use:

– In re Gibson Guitar Corp., (TTAB 2001) (sixty-six years of use insufficient for guitar design)

– In re Howard Leight Indst., LLC, (TTAB 2006) (fifteen years insufficient for earplug configuration)

– In re F. Schumacher & Co., (TTAB 2004) (five years sufficient to prove 2(f) for rounded book binding constituting product packaging)

• Significant Sales & Advertising Figures:

– Yamaha Int’l Corp. v. Hoshino Gakki Co. ($120K guitars sold 1980-85, and 1 million promotional materials distributed sufficient for guitar-head design)

– Goodyear Tire & Rubber Co. v. Interco Tire Corp. (TTAB 1998) ($56 million revenues and 740,000 tires sold insufficient for tire tread design)

26


• Significant Sales & Advertising Figures:

– In re Haggar Co., (TTAB 1982) ($5 million advertising; $150 million sales for five years sufficient for black swatch clothing label)

– In re Kwik Lok Corp., (TTAB 1983) (several hundred thousands of dollars advertising insufficient for closure device)

• Nature & Extent of Use:

– Number of stores, signs, visitors, viewers, accounts, consumers readers exposed to mark

– Location of signage and billboards on major highways, intersections, major malls and streets, high visibility

– Number of products/units sold over years bearing mark

27


• Sophisticated Consumers & Industry Practice:

– Such consumers are accustomed to and “could expect color to serve a source-identifying function.” In re Chun Kee Steel & Wire Rope Co., (TTAB 2002) (color of rope and wire found to have acquired distinctiveness)

• Nature & Extent of Advertising:

– Identify major national magazines, newspapers, television containing advertising

– Number of issues, rotation, circulation, and viewership information related to advertisements

– Sponsorships and sporting events, and any media coverage

• “Look For” Advertising:

– Advertising and/or packaging that displays or touts mark (but not utilitarian or aesthetic features)

28


• Unsolicited Media & Internet Attention:

– Major national magazines, newspapers, television coverage mentioning or referring to mark, including “distinctive,” “unique,” “well-known,” “famous” mark

– Internet mentions or references to above

• Consumer, Dealer, Industry Affidavits/Declarations:

– Affidavits/declarations should specifically identify product,

mark, and source-identifying function

– Form affidavits/declarations unpersuasive

• Surveys, Market Research, and Consumer Studies:

– Evidencing public identifies mark as source indicator

29

Product Design - Functional

• Valu Eng’g, Inc. v. Rexnord Corp. (Fed. Cir. 2002)

30


• M-5 Steel Mfg., Inc. v. O’Hagins Inc. (TTAB 2001)

31


• In re Howard Leight Indus., LLC (TTAB 2006)

32


• In re Richemont Int’l, S.A., (TTAB 2006)

33

Color - Functional

• Brunswick Corp. v. British Seagull Ltd. (Fed. Cir. 1994)

34

• In re Orange Comm., Inc. (TTAB 1996)

Color - Functional

35

Color - Functional

Saint-Gobain Corp. v. 3M Co. (TTAB 2007)

36

Color – Acquired Distinctiveness

• Reg. No. 3317268 (Oct. 23, 2007) for the color

yellow used on wristbands in the nature of a

bracelet for use in fundraising and education in the

field of cancer, cancer research, cancer recovery

and survival

• Reg. No. 2359351 (June 20, 2000) for a shade of

blue often referred to as “robin's-egg blue” for use

on boxes for jewelry and other goods

• Reg. No. 2901090 (Nov. 9, 2004) for the color

chocolate brown, which is the approximate

equivalent of Pantone Matching System 462C, as

applied to the entire surface of vehicles and

uniforms for transportation and delivery of personal

property by air and motor vehicle

37

Bottle Shape – Inherently Distinctive

• In re Creative Beauty Innovations, Inc. (TTAB 2000)

38

Bottle Cap – Not Inherently Distinctive

• In re Pacer Tech. (Fed. Cir. 2003)

39

Bottle Cap & Shape – Inherently Distinctive

• In re The Procter and Gamble Co., (TTAB 2013)

40

Taste/Flavor - Functional

• In re N.V. Organon (TTAB 2006)

41

Taste/Flavor - Functional

• In re Pohl-Boskamp Gmbh & Co., (TTAB 2013)

42

Scents

• In re Clarke (TTAB 1990), floral plumeria blossom fragrance

non-functional and registrable for yarn

43

Scents – Acquired Distinctiveness/Supp. Reg.

Reg. No. 2463044 (June 26,

2001) for cherry and other

scents for synthetic

lubricants

Supp. Reg. No. 3140692

(Sept. 5, 2006) for grapefruit,

lavender, vanilla, peppermint,

and other scents for file

folders, hanging folders,

paper expanding files

44

Scents— Application to Watch

• Hasbro’s App. Serial No. 87335817, filed Feb. 17, 2017, for the scent of Play-Doh.

• 2(f), claiming use since 1955.

45

“A unique scent formed

through the combination of

a sweet, slightly musky,

vanilla-like fragrance, with

slight overtones of cherry,

and the natural smell of a

salted, wheat-based

dough.”

Van/Auto Trade Dress – Inherently Distinctive

In re PRG Parking Mgmt., L.L.C. (TTAB 2003)

46

Sound - Functional

• In re Vertex Group LLP (TTAB 2009)

47

Sound – Not Inherently Distinctive

• Nextel Comm., Inc. v. Motorola, Inc. (TTAB 2009)

“The mark consists of an electronic chirp consisting of a tone at 1800 Hz played at a cadence of 24 milliseconds ON, 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON.”

48

Sounds – Not Inherently Distinctive

• In re Powermat, Inc., 105 USPQ2d

1789 (TTAB 2013)

“The mark is a sound. The mark consists of five short electronic chirps, lasting less than a half second, with each chirp increasing slightly in pitch from the previous chirp.”

49

Sounds – Acquired Distinctiveness

Reg. No. 2187082 (Sept. 8, 1998) for a combination of the

sounds of thunder and rain with a strobe representation of

lightening - for automatic produce misting units for delivering a

timed water mist to fruits and vegetables in display cases

Reg. No. 2495301 (Oct. 9, 2001) for a musical excerpt of

fourteen bars from the second movement (Andante con

tenerezza) of Howard Hanson's Symphony 2, op. 30

(Romantic)) - for live and broadcast musical concerts

50

Sound Marks – Inherently Distinctive

Human Voice: Pillsbury

Dough Boy Giggle

Musical Themes:

“I don’t wanna grow up,

I’m a Toys R Us Kid”

Animal Sounds:

Duck quacking word AFLAC

Animal Sounds:

lion roaring

Electronic Sounds:

a metallic resonating sound

followed by two electronic beeps

and followed by a mechanical

ratcheting sound

Single-note sounds:

synthesized vibraphone-

musical note B

Rhythmic mechanical

human breathing

created by breathing

through a scuba tank

regulator.

51

Reg. No. 3155702 (Oct. 17, 2006) for

wine

– The mark consists of a velvet textured

covering on the surface of a bottle of wine.

The dotted line in the drawing is not a

feature of the mark but is intended to show

the location of the mark on a typical

container for the goods; the dark/lower part

of the container drawing shows the mark.

The stippling in the drawing is not a feature

of the mark, but a representation of how

one type of velvet covering may appear in

visual form. The mark is a sensory, touch

mark

Touch Mark – Inherently Distinctive

52

Reg. No. 3250178 (June 12, 2007) for soft drinks

Touch Mark – Acquired Distinctiveness

53

Color & Interior Motif– Not Inherently Distinctive

• In re Hudson News Co. (TTAB 1996), aff’d (Fed. Cir. 1997):

“Applicant's blue design motif for retail newsstand services is

not inherently distinctive, and therefore is not registrable

without showing of acquired distinctiveness.”

54

Building Interior/Exterior – Acquired Distinctiveness

• Reg. No. 3707623 (Nov. 10, 2009) for college sporting events

55

Building Interior/Exterior – Inherently Distinctive

• Doyle v. Al Johnson’s Swedish Restaurant & Butik, Inc., Cancellation

No. 92054059

Reg. No. 2007624

56

Buildings – Supp. Reg./Acquired Distinctiveness

Supp. Reg. No. 3150142 (Sept. 26, 2006) for restaurant services

Reg. No. 1761655 (March 30, 1993) securities and stock market services

Supp. Reg. No. 3310161 (Oct. 9, 2007) for car wash

57

Holograms – (Some) Inherently Distinctive

Clothing Charge card and credit card

services

Trading cards Pharmaceutical

prescription pads Cosmetic products

PTO allows registration of hologram marks where application covers

hologram of a particular design or shape.

58

Motion – Inherently Distinctive

• Reg. No. 1928423 (Oct. 17, 1995) for computer

generated sequence showing the central element from

several angles as though a camera is moving around the

structure – for motion picture films and other products

• Reg. No. 2092415 (Sept. 2, 1997) for moving image

design mark, comprised of an approximately five second

visual sequence, depicts a city skyline, sky and water,

enclosed in two concentric circles containing the words

"BROADWAY VIDEO.” As the city skyline comes into

view the words "BROADWAY VIDEO" rotate clockwise

within the circles surrounding the city. The image

concludes with a red lightning bolt entering the circle and

forming a “V.”

59

Motion – Acquired Distinctiveness

• Reg. No. 2793439 (Dec. 16, 2003) for a mark consisting of the

unique motion in which the door of a vehicle is opened. The

doors move parallel to the body of the vehicle but are gradually

raised above the vehicle to a parallel position – for automobiles

60

Motion – Human Gestures & Movement

• Reg. No. 3182163 (Dec. 12, 2006)

for telecommunications services

61

Sound

Packaging

Registration of Nontraditional

Trademarks in the U.S.

Linda McLeod 202-808-3574

[email protected]


Policing And Enforcing

Rights In

Non-traditional

Trademarks

Ted Davis

[email protected]


• Courts have continued trend making enforcement

of trade dress claims difficult but not impossible.

• Remember, registration and protection of trade

dress is highly subjective and unpredictable.

• Courts treat evidence of copying in vastly

different ways.

• Use of Brand Name on Trade Dress Can

Sometimes Mitigate Likelihood of Confusion.

Trends in Trade Dress Enforcement

64

• Difficult if not impossible to commission trade

dress watch report that extends beyond

applications for new marks.

• Train employees

• Capitalize on fan base among consumers. – Incentives

• Quarterly review of trade press and Internet

searches

• Update registrations to cover product expansion – You Lose Presumptions Flowing From Registration if Mark

Has Changed.

Best Practices for Enforcing Trade Dress

65

• Must balance need to move quickly with

requirement for preparation.

• Plaintiff filed for TRO on May 21; hearing set for June 7;

plaintiff seeks extension of TRO to hear PI in August after

expert testimony and expedited discovery.

Miche Bag v. Marshall Group, 2010 WL

2175837 (N.D. Ind. 2010)

66

“Simple arithmetic combines with Rule 65 to warn a

movant that a TRO petition likely will lead to a

preliminary injunction hearing within five or six weeks

of the TRO petition filing. One who can’t prepare in

that time should think twice before beginning the

process.”

Miche Bag, LLC v. Marshall Group, 2010 WL

2175837

Plaintiff Must Be Fully Prepared When

Seeking TRO or Preliminary Injunction

67

Christian Louboutin S.A. v. Yves Saint Laurent

America, Inc., 778 F. Supp. 2d 44 (S.D.N.Y. 2011)

68

• District Court found:

– With respect to fashion, rejected concept that one

can protect single color.

– PTO registration was rebutted by evidence of third

party use and perceived inconsistencies between

position before Court and TTAB

• What style shoes? What shades of red?

• The Monet Picasso Argument



69

• Second Circuit reversed finding that single color can

never be protected in fashion industry

• Second Circuit found on record (?) that Plaintiff had

trade dress rights on red outsoul that contrasted with

color used for rest of shoe.

• Since YSL used red for both outsoul and entire shoe,

affirmed denial of preliminary injunction.


America, Inc., 696 F.3d 206 (2d Cir. 2012)

70

• Real import of Second Circuit decision was extensive

discussion of functionality.

• Functionality begins with consideration of whether

feature is essential to its purpose or affects cost or

quality of the product.

• But if mark passes those inquires it must still be

examined to ensure does not have effect on

competition.

• This analysis is highly fact specific.


America, Inc., 696 F.3d 206 (2d Cir. 2012)

71

• This litigation does focus our inquiry:

• The registration at issue here covered “lacquereed

red.”

• How far different does one have to be to avoid

confusion?

• What is lacquered red?

• Trademark lawyers try and be as broad as possible in

recitation. Is it better to be more specific in defining

the scope of covered trade dress?

• Second Circuit “rescued” registration in this case. Is

that beginning of new trend?



72

Wolf Appliances v. Viking Range Corp.,

668 F. Supp. 2d 878 (D. Wis. 2010)

73

• Wolf long associated with red knobs on stoves even if

most retailer displays show standard black knobs.

• Viking offered consumers choice of stainless steel,

black, white or red through accessory kit. Finished product only shipped with stainless steel or black knobs.

Facts

74

• One Viking dealer displayed range with red knobs

and poster above it:

“WHO'S AFRAID OF BIG BAD WOLF?”

• No other colors except red offered as accessory kit.

• Sufficient for jury to conclude intentional copying

supporting finding of secondary meaning.

– Also supports intent to confuse.

Was Viking Copying Defendant?

75

Weber-Stephens Prods v. Sears Holding,

145 F. Supp. 3d 793 (N.D. Ill. 2015)

76

• Sears was former licensee before introducing its own

product line.

• Evidence showed intent to copy.

• Therefore, in absence of registration and based on

confession by defendant executive that consumers

seeing their products would think of plaintiff (plus

minor evidence of actual confusion), court found for

Plaintiff.

Weber-Stephens Prods v. Sears Holding,

145 F. Supp. 3d 793 (N.D. Ill. 2015)

77

• Each circuit uses multifactor test to evaluate likely confusion. Third Circuit has developed several different variations of this multifactor test depending on circumstances.

• In Versa Products, 50 F.3d 189 (3d Cir. 1995), Third Circuit questioned if appropriate to see copying as evidence of anything in trade dress claim.

Consider Third Circuit Versa Products Decision

78

“Where product configurations are concerned, we must be especially wary of undermining competition. Competitors have broad rights to copy successful product designs when those product designs are not protected by (utility or design) patents. It is not unfair competition for someone to trade off of the good will of the product. (Citing Kellogg v. National Brand).”

50 F.3d at 193

79

• Courts continue to disagree over whether to

analyze trade dress under distinctiveness

spectrum or to use Seabrook test.

– Compare Djarum v Dhanraj Imps., Inc., 876. F.Supp. 2d 664

(W.D.N.C. 2012) and Brighton Collectibles, Inc. v. RK Tex.

Leather Mfg., 923 F.Supp. 2d 1245 (S.D. Cal. 2013) with

Medisism Ltd v. Best Med LLC, 910 F.Supp. 2d 591

(S.D.N.Y. 2012) and Urban Grp. Exercise Consultants Ltd.

V. Dick’s Sporting Goods, Inc., 106 U.S.P.Q.2d 1756

(S.D.N.Y. 2012)

2012 and 2013 Cases

80

• In the product configuration context, a defendant’s

intent weighs in favor of a finding of confusion only if

intent to confuse or deceive is demonstrated by clear

and convincing evidence, and only where the

product’s labeling and marketing are affirmatively

misleading.

According to the Third Circuit…..

81

• Courts continue to differ over probative value of

evidence of copying. – Compare Predator Int’l, Inc. v. Gamo Outdoor USA, Inc., 863

F.Supp. 2d 1055 (D. Colo. 2012) with Brighton Collectibles, 923

F.Supp. 2d at 1252 and Heckler v Koch, Inc., v German Sports Gun

GmbH, 71 F.Supp 3d 866, 920 (S.D. Ind. 2014).

82

• Continuing debate about whether combining

functional features can create a “non-functional”

whole.

• One District Court held, “although functional features

cannot be protected, an arbitrary combination of

functional features, ‘the combination of which itself is

not functional, properly enjoys protection.’” Clearline

Techs, Ltd v Cooper B-Line, Inc., 2013 WL 2422581,

at *5 (S.D.Tex. June 3, 2013).

Combining Functional Features

83

• Trade Dress claims need to be carefully and skillfully

prepared and executed. – Define trade dress precisely

– Be prepared for functionality claims

– Have solid evidence of both inherent and acquired distinctiveness

– Do Not Skimp on Survey Evidence

– Carefully Evaluate Where to Bring Claim • (Hint: Avoid Third Circuit)

The Take Away

84


Policing And Enforcing

Rights In

Non-traditional

Trademarks

Ted Davis

[email protected]


DESIGN PATENTS

Robert D. Litowitz

Kelly IP [email protected]

Design Patents: No Respect?

• The “Rodney Dangerfield of IP”

87

A Goddess and Apple

• Egyptian Goddess, Inc. v. Swisa • 543 F.3d 665 (Fed. Cir. 2008)

• Not This

• Apple v. Samsung

• Not This

88

Egyptian Goddess v. Swisa

• Returned to the “ordinary observer” test as

the sole test of infringement

• Rejected the “point of novelty” test

89

Ordinary Observer Test

• Gorham v. White, 81 U.S. 511 (1871)

• Would an ordinary observer, familiar with the prior art, and giving the attention of a purchaser, be deceived into thinking that the accused and patented designs are the same?

90

Crocs Case—Design Patents Have Bite

• Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294

(Fed. Cir. 2010)

• Minor differences cannot prevent a finding of

infringement; overall impressions are key

91

Apple v. Samsung

Design Patents Mean Business

Jury Verdict--$1 billion dollars; reduced to $450 million

92

Pros of Design Patents

• Quick—3 to 6 months (expedited

examination)

• No need to prove use or even have a product

• Protection immediate—no need for

secondary meaning or distinctiveness

• Last 14 years from issuance (15 years – AIA)

– Control product configuration

– Create “time and space” for secondary meaning

93

Important Issues

• The design must be new

• The design must not be “obvious”

• The patented design cannot be entirely

functional; they must be ornamental

• The drawings define the scope

– Everything shown in solid lines is part of the claim

– The drawings must be precise; otherwise patent

may be invalid

94

More Pros of Design Patents

• Different test for infringement than trademark

test

• Ordinary “observer,” not consumer

• Marketplace factors cannot avoid infringement

– E.g., logos, brand names, colors, size, advertising channels, etc.

– But, sophistication of buyers and cost of goods may come into

play in determining “attention” of the buyer

• Test is whether the designs look the same; not

whether there is a likelihood of confusion

95

More Differences between Design

Patent and Trade Dress

• Validity of design patent can be challenged

– Prior art

– Defects in drawings

– Design “on sale” or “in public use”

• Prior art is relevant to determining

infringement

– Minor differences may or may not avoid

infringement, depending on prior art

96

Example of Prior Art’s Impact On

Infringement

• Question: Is Accused design closer to

patented design or prior art?

97

Prior Art and Obviousness

• Obvious to who? Designer of ordinary skill in

the art; compare to infringement test’s

“ordinary observer” standard

– Test: is there a primary reference that is “basically

the same” as the patented design? – If so, would an ordinary designer, familiar with prior art,

combine features in the prior art to achieve the patented

design?

98

High Point Design, LLC v. Buyers Direct, Inc., 2013 WL 4826282 (Sept. 11, 2013)

• Background:

– Buyers Direct owns U.S. Design Patent No. D598,183 (“D’183”)

– The patent claims “the ornamental design for a slipper, as shown

and described” in two drawings:

99

High Point Design, LLC v. Buyers Direct, Inc.,

2013 WL 4826282 (Sept. 11, 2013)

• Background:

– The D’183 Patent also discloses 2 additional design features for

soles (a smooth bottom sole and a raised dotted sole):

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2013 WL 4826282 (Sept. 11, 2013)

• Buyers direct sells Snoozies®

which it asserted is an

embodiment of the D’183 patent:

• High Point Design, LLC

manufactured and distributed

FUZZY BABA® slippers:

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2013 WL 4826282 (Sept. 11, 2013)

• High Point sued for a declaratory judgment

“(1)that the manufacturing and sale of FUZZY

BABA® slippers did not infringe on the D’183

Patent and (2) that the patent was invalid

and/or unenforceable”

• High Point moved for summary judgment.

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2013 WL 4826282 (Sept. 11, 2013)

• The district court granted the motion for summary judgment, holding the

′183 patent invalid on the ground that the design claimed in it was both (1)

obvious in light of the prior art and (2) primarily functional rather than

primarily ornamental.

Prior Art: Buyer’s Direct Patent

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http://www.westlaw.com/Link/Document/FullText?findType=Y&serNum=2019624823&originationContext=document&vr=3.0&rs=cblt1.0&transitionType=DocumentItem&contextData=(sc.Search)


2013 WL 4826282 (Sept. 11, 2013)

• The Federal Circuit reversed the district court’s grant of summary

judgment finding the following errors:

• The district court failed to translate the design into a verbal description for purposes of comparison with the prior art, and to allow the appellate court to discern its reasoning.

– District Court’s description was too abstract

– Remanded for a verbal description sufficient to “evoke a visual image”; no guidance on how much detail would be sufficient.

• This case possibly in conflict with Egyptian Goddess Inc. v. Swisa, Inc. en banc 2008, where Fed, Cir. warned against verbal claim construction of design patents for purpose of infringement analysis.

• Question—is there really any legitimate distinction between infringement and obviousness analyses?

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2013 WL 4826282 (Sept. 11, 2013)

• The Federal Circuit also found that the district court erred in

failing to adequately explain why primary reference was

basically the same as the patented design

– Called for a side by side comparison on remand to see if

designs create the same visual impression

• Additionally, the district court erred in using an ordinary

observer standard:

– Proper test evaluates design and prior art from the

vantage of an ordinary designer

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Damages

• 35 U.S.C. 284. Damages

– Same damages as for utility patent

– Injunction, money damages, attorney’s fees

– Reasonable royalty, price erosion, incremental profit

• 35 U.S.C. 289. Additional Remedy…

– Infringer’s total profit for sale of an article including the design

– Not less than $250

– Cannot recover profit twice—in other words you can’t get 284 and 289 damages, and you can’t multiply 289 damages

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Samsung v. Apple

What is the “patented article?” End product as sold to consumers, innards and all? Or Component of that end product?

Held: “article of manufacture is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” 137 S.Ct. 429, 436 (2016) Two step test (1) identify the “article of mfg;” (2) calculate the infringer’s profits made on that article of mfg Supreme Court declined to set out a test for defining the relevant article of manufacture.

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Ornamentation v. Functionality

• Ethicon Endo-Surgery, Inc. v. Coviden, Inc., 796 F.3d

1312 (Fed. Cir. 2015).

– Section 171: Design patents cover only “ornamental” designs

• if design is “primarily functional rather than ornamental, the patent is invalid”

• But, the function of the article itself must not be confused with the “functionality of the design”

– Key part of the inquiry is whether alternative designs are available

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Sports Dimension, Inc. v. Coleman Co., Fed. Cir. 2016 Lexis 6992

• Illustrates Functionality/Ornamentation dichotomy—can’t automatically nix structural elements (here armbands and side torso taper)

— That features may posses function and even serve an important function does not mean they must be ignored

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INJUNCTIONS

• Permanent Injunctions, post e-Bay

– Apple Inc. v. Samsung Electronics Co., Ltd., 735 F.3d 1352 (Fed. Cir. 2013)

• Patent owner must prove that patented design played some role in creating demand for the infringing product

– Fed. Cir. rejected stringent test that design be the “sole” reason behind sales

– Anecdotal evidence insufficient to prove nexus

– “[Apple] refer[red] to such isolated characteristics as glossiness, reinforced glass, black color, metal edges, and reflective screen… [but Apple] does not begin to prove that those particular features drive consumer demand in any more than anecdotal way… Id. at 1365

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INJUNCTIONS (Cont.)

• Preliminary Injunctions

– Hutzler Mfg. Co. v. Bradshaw Int'l, Inc., 2012 U.S.

Dist. LEXIS 103864 (S.D.N.Y. July 24, 2012)

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Hutzler “Savory Savers case” (cont.)

• Hutzler met burden of showing:

– Bradshaw’s functionality defense not likely to

succeed

• Function did not dictate appearance

• Numerous design alternatives exist e.g.,

– Likelihood of proving infringement

• Minor differences in design details do not avoid

infringement

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• Hutzler established irreparable harm

– Price erosion

– Lost customers

– Loss of market leadership

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• Hutzler court grappled with pivotal design patent questions

– Who is the “ordinary observer?” Someone familiar with products or one who sees them for the first time?

– How should courts determine amount of attention ordinary observer gives?

– Should designs be compared side-by-side or apart?

– How similar must the designs be?

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Hutzler Court’s Answers

• Ordinary observer is neither an expert nor a novice; has some experience with “like items”

• “Attention” does not involve “critical examination” – Greater attention paid to expensive items

• Substantial similarity looks at “overall visual appearance,” not isolated portions

• Side-by-side comparison of patent drawings to accused product is acceptable, although law is not clear; patentee’s embodiment can also be considered if not different from drawings

• Identity no required, but “high degree of similarity” usually is

• Size, color, sheen, construction material not relevant

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Design Patents: Conclusion

• No longer

• More like

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DESIGN PATENTS

Robert D. Litowitz

Kelly IP [email protected]

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