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Protection of Product Designs in the U.S. under Trade Dress and Patent Law

Patchen M. Haggerty

April 5, 2012

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What Is Protected By a Design Patent

• New, original and ornamental design for an article of manufacture

• Design for an article generally consists of Visual Characteristics

• A Visual Characteristic may include:

– Configuration or Shape of Article

– Surface Ornamentation

– Combination thereof

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Differences Between Design Patents and Trade Dress

Trade Dress

• Requires that design has Acquired Distinctiveness

• The design must be non-functional

• The design must be sold or in commerce

• Unlimited time for trade dress protections

Design Patents

• No need to prove likelihood of confusion between accused product and protected design

• Even if parts of design may be functional, the overall design can still be protected

• No need to actually use or sell the design

• Expires 14 years from the date of issuance

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Trade Dress - Defined

• The design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to the consumer.

• i.e., a product's "look and feel." Can include size, shape, color, texture, graphics.

• A broad concept, encompassing both product packaging and product design.

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Types of Trade Dress

• Product Packaging– e.g., product box, bottle

• Product Configuration– e.g., shape, size, a color or color combination, pattern,

design, texture, or a combination of those elements

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Protectable Product Designs under U.S.Trade Dress Law

Two Primary Issues to Consider:

1.Distinctiveness: trade dress must be recognized by customers to identify and distinguish source.

2.Non-Functional: features must not be functional, i.e., can’t be dictated by utilitarian concerns.

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Distinctiveness

• Product Packaging: can be inherently distinctive

• Product Configuration: can’t be inherently distinctive

– protectable only with a showing of acquired distinctiveness (secondary meaning). Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000)

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How To Prove Acquired Distinctiveness

Direct and Circumstantial Evidence

Direct Evidence

• customer surveys

• declarations or testimony from customers, distributors or dealers showing recognition of product design as a source indicator

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Proof of Acquired Distinctiveness, cont.

Circumstantial Evidence

• Length of Use

• Exclusivity of Use

• Type, Expense and Amount of Advertising and Promotional Efforts Directed To Use of Design As AMark

• Sales figures ($$ and unit amounts)

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Proof of Acquired Distinctiveness, cont.

• Unsolicited Media Coverage

– e.g., Press clippings, blog references, news reports

• Evidence of advertising must relate to the promotion of the product configuration as a trademark (and not as a product)

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Advertising Strategies To Establish Secondary Meaning

1. Prominently identify the product feature to be promoted as a mark, e.g., large photos of product.

2. Associate the product feature with the source (“look for” advertising).

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Advertising Strategies (continued)

3. Promote the product feature consistently.

4. Avoid touting the product feature as being functional.

5. Reinforce perception of the product feature as a trademark through proper trademark notices.

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Product Configuration: Acquired Distinctiveness

• Must show feature acts as a source identifier, not merely to make the product more appealing

• Acquired distinctiveness occurs when the public views the primary significance of the trade dress as identifying the source of a product rather than the product itself

• Look to ones success, rather than its efforts, in educating the public to associate the claimed mark with a single source.

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Product Packaging: Inherent Distinctiveness?

“Seabrook Test”: Four Factors

1. Common basic shape or design?

2. Unique or unusual in the field in which it is used?

3. Mere refinement of a commonly-adopted and well-known form of ornamentation for the particular class of goods, viewed by the public as ornamentation for the goods?

4. Capable of creating a commercial impression distinct from the accompanying words?

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Non-Functionality

• Functional product features are not protectable

– As trade dress protection is capable of lasting a century or longer

– Avoid monopoly in useful product features

• Functional features meant to be covered by a utility patent, which has a limited term

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Test for Functionality of a Feature

Primary Test:

• Essential to the use or purpose of the product

• Affects the cost or quality of the product

or

• Would put competitors at a significant (non-reputational) disadvantage

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Functionality: Four Factor (Morton-Norwich) Test

1. Feature covered by a utility Patent

- most important indicator

- utility patent ~ strong evidence of functionality

- whether owned by Applicant or 3rd party

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Functionality: Four Factor Test, cont.

• “A prior patent, we conclude, has vital significance in resolving the trade dress claim.”

• A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001)

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Functionality: Four Factor Test, cont.

2. Advertising promotes utilitarian advantages of design

3. Whether design results from comparatively simple or inexpensive method of manufacture

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Functionality: Four Factor Test, cont.

4. Availability of alternate designs for competitors to use

• when there is evidence that the feature is essential to the use or purpose of the device or affects its cost or quality, the availability of alternative designs is irrelevant.

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Functionality & Design Patents

• Design patent weighs against a finding of functionality

– protect only ornamental and non-functional features

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Functionality Review

• If found functional, absolute bar to protection/registration

– Even if the feature/proposed mark has acquired distinctiveness

• Courts and the PTO are careful to prevent the misuse or over-extension of trade dress.

• “‘product design’ almost always serves purposes other than source identification.” TrafFix

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Functionality Review, cont.

• If utility patent, advertising or other evidence establishes utilitarian nature, and evidence shows effect on cost or quality of manufacture - no need for examiner to consider factor regarding availability of alternate designs

• Carefully scrutinize patents and patent applications covering the product feature to determine impact on issue of functionality.

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Examples of Inherently Distinctive Product Packaging – Coca-Cola Bottle

• Principal Register, U.S. Registration No. 696,147

• The Coca-Cola Company; Int’l Class 32 - carbonated soft drink

• Description of Mark:

The trademark consists of the distinctively shaped contour, or confirmation, and design of the bottle as shown

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Examples: Acquired Distinctiveness- Apple iPhone

• Principal Register, U.S. Registration No. 3,475,327; Section 2(f)

• Apple, Inc.; Int’l Class 9 goods

• Description of Mark:

The color(s) gray, silver and black is/are claimed as a feature of the mark. The mark consists of the configuration of a handheld mobile digital electronic device. The material shown in dotted lines, namely, the buttons and openings on the device show the position of the mark in relation to the device and are not considered a part of the mark. The color gray appears as a rectangle at the front, center of the device. The color black appears on the front of the device above and below the gray rectangle and on the curved corners of the device. The color silver appears as the outer border and sides of the device. The color white is shown solely to identify placement of the mark and is not claimed as a part of the mark

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Apple iPhone

Evidence Presented:

• Articles from trade magazines and popular press regarding pre-launch publicity and advertising

– About the unique design of the phone

• Number of unique visitors to iPhone section of Apple’s website

– 1,800,000 visitors in January 2007 alone

• Sales figures

– 1,000,000 units in 74 days

• Significant advertising expenditure figures

• Examples of consumer postings of pictures of iPhone on the Internet and creation and posting of videos about their iPhone

• Examples of political cartoons and television spoofs commenting on the success of iPhone

• Specimen of distinctive box and tote bag offered with iPhone featuring distinctive look of the device

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Examples

– Metal folding chair designs held to be presumptively functional because the features sought to be protected were disclosed in the plaintiff’s expired utility patents

Greenwich Industries v. Specializing Seating, 616 F.3d 722 (7th Cir. 2010)

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U.S. Trade Dress Applications

Requirements:

• Drawing of product, with broken lines for portion of mark not being claimed, e.g., functional features

• Detailed description of design claimed,e.g., “mark consists of …”

• Specimen – match drawing as closely as possible, e.g., same perspective

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U.S. Trade Dress Applications, cont.

• Enter a claim of acquired distinctiveness in the trademark application if in use for five years

– Often insufficient to prove secondary meaning

• Submit declarations or other evidence of acquired distinctiveness, if requested by examiner

• Can amend to Supplemental Register

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Contents of a Design Patent Application

• Drawings showing the ornamental features of the design.

– The drawings should contain a sufficient number of views to disclose the complete appearance of the design claimed

• Specification which is essentially a brief description of the Drawings.

• One claim which can be as follows:

• “An ornamental design for [an article of manufacture] as shown and described.”

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Drawings of a Design Patent Application

• Each and every feature of the design shown in solid lines is claimed, and thus must also be present in the accused device for infringement purposes.

• Any portion of the design shown in broken lines is not considered part of the claimed design

– An accused product does not have to include broken line portions or can have a variation of that portion, and would likely still be covered by the claimed design of the patent

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Example Drawings for a Helmet Design

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Enforcement of Product Designs

Enforcing product design trade dress under

Section 43(a) of the Lanham Act

– One must prove: (1) ownership of protectable trade dress; (2) trade dress is nonfunctional; and (3) a likelihood of confusion.

– Wal-Mart v. Samara and TrafFix Devices v. Marketing Displays govern

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Examples – Trade Dress Infringement

• Expired utility patents scrutinized to determine whether the design was merely an “arbitrary, incidental or ornamental” feature found in the patent claim, which would be a “narrow exception” to the TrafFix standard

• Court found that Honeywell had obtained its expired patent by persuading the PTO that the circular, convex shape was novel and useful

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Examples – Trade Dress Infringement

• On a motion for a preliminary injunction, court held that Asics’ striped design on running shoes was functional.

ASICS Corp v. Target Corp., 282 F. Supp.2d 1020 (D. Minn 2003)

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Examples – Trade Dress Infringement

• Plaintiffs’ patent claims mentioned “longitudinal reinforcements” and “lateral reinforcement portions” which were, in effect, the striped design

• Asics’ marketing materials also promoted the utilitarian features of the design, e.g., logo support stripes were included in a section of the Asics catalog entitled “Featured Functions”

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Determining Infringement of Design Patents

• Requires a showing that an ordinary observer, having knowledge of the prior art, would be deceived by believing that accused product is substantially the same as the claimed design

• The patentee has the burden of showing a substantial similarity between patented design and accused design

• The whole ornamental portion of patented design must be compared to accused product

• Minor differences will not prevent a finding of infringement

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Similarities Between Design and Utility Patents

• Must comply with novelty and non-obviousness requirements

• May protect less than the entire product

• Both undergo an examination process before the U.S. Patent and Trademark Office

• Presumed valid after issuance

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Differences Between Design and Utility Patents

Design Patents

• Protect the way the article of manufacture looks (i.e., the ornamental features of the article) -but not functional features.

• Expire 14 years from the date of issuance.

• No maintenance fees needed to keep design patents in full force.

• Each include only ONE claim, directed to a single embodiment of design (sometimes more than one).

• Cannot claim priority from provisional applications.

• Applications for design patents do not publish

Utility Patents

• Protect structure, operation of an article of manufacture (i.e., the utility of the article) - including functional features.

• Expire 20 years from the earliest utility priority date.

• Maintenance fees required for maintaining full term of patent.

• Can include more than one claim, and possibly more than one independent claim directed to different embodiments.

• May claim priority from provisional applications.

• Published in 18 months from the earliest priority date.

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U.S. Design Patent Application Timeline

Prepare design patent application

Year 0: File patent application – “patent pending,” description substantively frozen

Year 1.5: Claim is examined; typically rejection on formalities

Years 1.5-2: “Patent Prosecution” – Amend claim and/or drawings to overcome rejections

Year 2: Notice of Allowance

Issued U.S. Patent – “Patented” – mark with patent #

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Protect Both Design and Utility of a Product Using Patents

• Design and utility patents can be used together to provide overall patent protection for a product

• Design patent to protect the visual characteristics of the product

• Utility patent to protect the technical features of the product

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Design Patent

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• QUESTIONS?