protecting non-traditional trademarks under trademark, copyright and design patent...

Protecting Non-Traditional Trademarks Under Trademark, Copyright and Design Patent Law Using Conventional and Unconventional Approaches to Establish, Register and Enforce Mark

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TUESDAY, FEBRUARY 18, 2014

Presenting a live 90-minute webinar with interactive Q&A

Stephen Feingold, Partner, Kilpatrick Townsend & Stockton, New York

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

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

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Protecting Non-Traditional Trademarks Under Trademark,

Copyright and Design Patent Law

Stephen W. Feingold [email protected]

(212) 775-8782

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

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© 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

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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).

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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)

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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 Most Cases, Attorneys’ Fees.

• Copyright Registration – Still The Best IP Deal In Town. • Registration Fee $35 if filed electronically and $65 if paper

filing.

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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

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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

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Benefits of Design Patents: – relatively inexpensive to obtain (about 3K) – exclusive monopoly for 14 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

13

Consider

Your Product Your Competitor

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.

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• 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

16

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

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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.”

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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

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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

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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

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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)

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• 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

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• 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)

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• 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

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Product Design - Functional

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

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

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Kistner Concrete Products, Inc. v. Contech Arch Tech., Inc. (TTAB 2011)

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

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

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Color - Functional

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

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

Color - Functional

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Color - Functional

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

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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

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Color – Non-Functional

• Newborn Bros. & Co. v. Dripless, Inc. (TTAB 2002)

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Bottle Shape – Inherently Distinctive

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

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Bottle Cap – Not Inherently Distinctive

• In re Pacer Tech. (Fed. Cir. 2003)

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Bottle Cap & Shape – Inherently Distinctive

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

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Taste/Flavor - Functional

• In re N.V. Organon (TTAB 2006)

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Taste/Flavor - Functional

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

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Scents – Acquired Distinctiveness

• In re Clarke (TTAB 1990), floral plumeria blossom fragrance non-functional and registrable for yarn

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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

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Van/Auto Trade Dress – Inherently Distinctive

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

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Sound - Functional

• In re Vertex Group LLP (TTAB 2009)

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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.”

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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.”

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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

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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.

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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

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

Touch Mark – Acquired Distinctiveness

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Chippendales’ Cuffs and Collar – Not Inherently Distinctive

In re Chippendales USA, Inc. (Fed. Cir. 2010)

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Three-dimensional Costume -Inherently Distinctive

• Reg. No. 3893339 (Dec. 21, 2010) for educational services.

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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.”

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Building Interior/Exterior – Acquired Distinctiveness

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

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Building Interior/Exterior – Inherently Distinctive

• Doyle v. Al Johnson’s Swedish Restaurant & Butik, Inc., Cancellation No. 92054059

Reg. No. 2007624

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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

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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.

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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.”

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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

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Motion – Human Gestures & Movement

• Reg. No. 3182163 (Dec. 12, 2006) for telecommunications services

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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

Stephen W. Feingold [email protected] (212) 775-8782


• 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

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• 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

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• 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)

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“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

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Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 44 (S.D.N.Y. 2011)

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• 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


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• 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.

Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696 F.3d 206 (2d Cir. 2012)

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• 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.

Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696 F.3d 206 (2d Cir. 2012)

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• 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?


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Wolf Appliances v. Viking Range Corp., 668 F. Supp. 2d 878 (D. Wis. 2010)

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• 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

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• 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?

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• 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

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“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

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• 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

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• 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…..

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• 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.

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• 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

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• 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

82


Policing And Enforcing Rights In Non-traditional Trademarks

Stephen W. Feingold [email protected] (212) 775-8782


DESIGN PATENTS

Robert D. Litowitz Kelly IP

[email protected]

Design Patents: No Respect?

• The “Rodney Dangerfield of IP”

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

• Not This

• Apple v. Samsung

• Not This

86

Egyptian Goddess v. Swisa

• Returned to the “ordinary observer” test as the sole test of infringement

• Rejected the “point of novelty” test

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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?

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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

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Apple v. Samsung Design Patents Mean Business

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

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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

91

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

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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

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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

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Example of Prior Art’s Impact On Infringement

• Question: Is Accused design closer to patented design or prior art?

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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?

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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:

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• 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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• 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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• 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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• 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

101

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


• 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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• 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

104

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 105

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)

106

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

108


• 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?

109

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

110

Design Patents: Conclusion

• No longer

• More like

111

DESIGN PATENTS

Robert D. Litowitz Kelly IP

[email protected]

protecting non-traditional trademarks under trademark, copyright and design patent...

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