Trade Dress

INTELLECTUAL PROPERTY
PROTECTION FOR PRODUCT DESIGNS
The Search for an IP Trifecta
Darius Gambino
Partner
Darius.Gambino@dlapiper.com
215-656-3309
William L. Bartow
Senior Associate
William.Bartow@dlapiper.com
215-656-2458
Copyright 2013 © Darius C. Gambino & William L. Bartow. All Rights Reserved.
http://delvacca.acc.com
What Are Product Designs?
• Product Designs are the shape and configuration of
goods.
• Some examples include:
What Are Product Designs?
• Product Designs are a type of trade dress that includes the
shape and ornamental features of a product.
• Product Designs (sometimes called Product Configurations)
should be contrasted with Product Packaging, which includes
the graphics and color combinations used in connection with
products and services (e.g., the color scheme, decor and
signage used for a restaurant, the packaging for M&Ms, etc.)
• Product Designs should also be contrasted with Product Color
(e.g., pink for insulation, yellow for artificial sweetener, etc.).
• There are also other types of trade dress including sounds,
smells, and textures.
What Are Product Designs?
• Note: It matters whether the product you are trying to protect is
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classified as Product Design or Product Packaging
(presumption of secondary meaning).
Product Packaging may be considered ‘inherently distinctive,’
making enforcement easier for certain types of Product
Packaging.
Product Designs and Product Color may not (Two Pesos).
Practice Tip: Enforcement for Product Design requires
additional evidentiary burdens (i.e., proof of acquired
distinctiveness/secondary meaning).
Product Designs can be protected through not only trade dress,
but also patents and copyrights (the “IP Trifecta”).
In most cases, Product Packaging and Product Color can only
be protected through trade dress.
What Are Product Designs?
Wal-Mart Stores, Inc. v. Samara Brothers Inc., 529 US 205
(2000)
• Samara Brothers brought trade dress claim against Wal-Mart
for sale of knock-off children’s clothes.
• Jury found for Samara Brothers, Wal-Mart appealed to 2nd.
Circuit, 2nd. Circuit affirmed for Samara; Supreme Court
reversed and remanded.
• SC: Trade dress for product designs can never be inherently
‘distinctive’ – secondary meaning must always be proved.
• SC: Product designs are distinguishable from product
packaging, which can be inherently distinctive.
• SC: Samara Brothers must prove that public associates
product design with only them.
What Are Product Designs?
Wal-Mart Stores, Inc. v. Samara Brothers Inc., 529 US 205
(2000)
What Are Product Designs?
Traffix Devices Inc. v. Marketing Displays Inc., 532 US 23 (2001)
• District court granted summary judgment to Defendant Traffix
on trade dress claim, 6th Circuit reversed, Plaintiff appealed to
Supreme Court, Supreme Court reversed and remanded.
• SC: Dual-spring feature of signs could not be protected as
trade dress because it is functional (as evidenced by expired
utility patents).
• SC: Product features which are functional cannot serve as
trade dress.
• SC: Utility patents on the same product are evidence of
functionality which can defeat subsequent trade dress claim.
What Are Product Designs?
Traffix Devices Inc. v. Marketing Displays Inc., 532 US 23
(2001)
Open Questions
• 1. What is the effect of a prior design patent on a
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subsequent trade dress claim?
Design patents are presumed devoid of functionality, so
Traffix plays no role in outcome.
Some use design patents as evidence of non-functionality.
2. What if the design patent is expired?
Some argue that granting trade dress protection
essentially creates a patent of unlimited term
The argument is based on a claim that the essence of the
patent system is a bargain – public disclosure for limited
exclusivity.
Post-Traffix Decisions
• E-Z Bowz v. PPR (SDNY 2003) – defendant’s motion for
summary judgment on trade dress claim denied; design
patents do not preclude trade dress protection, AND are
evidence of non-functionality.
• Fuji Kogyo v. Pacific Bay (6th Cir. 2006) – presence of
expired utility and design patents should bar subsequent
trade dress protection (functionality of utility patents
trumped non-functionality of design patents).
• Keystone Mfg. v. Jaccard (WDNY 2007) – Judge Skretny
denies the defendant permission under 28 USC 1292(b)
to appeal the ‘right to copy’ defense to the Federal Circuit.
What About The ‘Right To Copy’?
• Some legal commentators do not believe patents and trade
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dress can peacefully coexist.
Shredded Wheat case - Kellogg Co. v. National Biscuit Co.,
305 U.S. 111 (1938) (shredded wheat biscuits not protectable
after expiration of design and utility patents).
SC ultimately found biscuit design was functional – thereby
preventing subsequent trade dress protection.
Judge Cudahy & Kennedy dissents in Kohler Co. v. Moen Inc.
(7th Cir. 1993) & Ferrari v. Roberts (6th Cir. 1991) – public
should have right to copy designs covered by expired patents.
Kohler – Majority found that faucet designs could be protected
as trade dress; Ferrari – Majority found that shape of
automobile bodies were protectable as trade dress.
What About The ‘Right To Copy’?
• Winning Ways v. Holloway (D.Kan. 1995) – there is an inherent
“tension” between patent and trade dress.
• District Court ultimately denied defendant’s motion for
summary judgment on trade dress count.
• “[Prior cases do] not compel acceptance of the position
defendants advance here: that the right to copy precludes any
attempt to afford trade dress protection to any product
configuration under any circumstances.”
• Fuji Kogyo v. Pacific Bay (6th Cir. 2006) – post-Traffix decision
which considers ‘right to copy’ arguments (but does not rule on
that ground), and ultimately finds for defendant on trade dress
claim based on functionality of features described in expired
utility patent.
Questions Answered
• 1. Will the existence of a prior design patent impair a
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subsequent trade dress claim? No, but it can help.
2. What if the design patent is expired? It doesn’t matter.
Current precedent does not discriminate against trade dress
merely because design patents exist for the same product or
features.
In fact, subsisting design patents are evidence of nonfunctionality which may be used to further strengthen a trade
dress claim.
Finally, design patents by their nature create a period of
continuous and exclusive use which may be used to develop
secondary meaning in the trade dress.
Design Patents – Why Not?
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Term: 14 Years from issue.
Pendency: 8-12 months.
Obstacles: Claiming, Functionality
Benefits:
Infringement is arguably easier to prove than ever before
– Ordinary Observer test (Egyptian Goddess).
Pendency of application can be relatively short compared to trade
dress.
No need to show secondary meaning (which can take 5 years or
more).
Design patent provides evidence of non-functionality which may be
used in trade dress prosecution or enforcement.
Design patent also provides period of exclusive and continuous use
for secondary meaning purposes.
Trade Dress – Why Not?
• Term: Indefinite – As long as design is used.
• Pendency: 12-16 months; possibly 2-3 years if secondary
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meaning and/or functionality are disputed.
Obstacles: Showing Non-Functionality, Secondary Meaning
Benefits:
Novelty not required – trade dress can be used to protect a
product’s appearance even after it has been in public use for
more than a year.
Two Infringement Options: Likelihood of Confusion or
Likelihood of Dilution (for famous trade dress).
Ability to register with US Customs.
Trade Dress – Why Not?
• Example: Successfully obtained trade dress protection for a
kitchen timer design which was unpatentable due to being in
the public domain for over 60 years.
• Registered with Customs to stop imports from China.
• Varying scope of protection for same device.
Copyrights – Why Not?
Term: 100-120 Years.
Pendency: 3-6 months in most cases.
Obstacles: Functionality, Originality
Benefits:
Easily and cheaply obtained – low originality standard and
perfunctory examination; Statutory damages.
• Infringement is easy to prove – “substantial similarity” as
judged from the perspective of an ‘ordinary observer’ (similar to
design patent test).
• Can be used to prevent copying even in the absence of
competition (much like patents); Be careful about originality – if
not met, may also doom trade dress arguments (Jeffrey
Milstein case).
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The Apple Example
• Apple protects the unique shape of its computers and
portable electronics thorough trade dress, design patents
and copyrights.
• Apple has multiple design patents and trademark
registrations covering the iPod, iPhone and iPad shapes.
The Apple Example
• The Apple v. Samsung litigation
concerned Apple’s design patents
and trade dress on the iPhone and
iPad vs. the Samsung Galaxy phones
and tablets.
• This litigation resulted in $1B verdict
for Apple.
• That verdict was subsequently
reduced to about $600M, but it still
shows the value of product design
litigation.
Louboutin v. YSL
• Another trade dress case which has been
receiving significant publicity lately is
Christian Louboutin v. Yves Saint Laurent
(SDNY 2011).
• In August 2011, a New York court refused to
grant a preliminary injunction barring Yves
Saint Laurent (YSL) from selling fashion shoes with red
outsoles, despite Louboutin’s registration for the same
(U.S. Reg. 3,361,597).
• The court relied heavily on fashion industry standards and
practices in ruling that the color red for high-heeled shoes
could not function as a trademark.
Louboutin v. YSL
• Louboutin appealed to the 2nd Circuit and won.
• The 2nd Circuit held that color can act as a trademark
(even in the fashion industry) so long as it does not
“significantly undermine competitors' ability to
compete in the relevant
market” by severely limiting the range of alternative
designs.
• The 2nd Circuit found that where Louboutin’s trade
dress was limited to a red sole that contrasts with the
rest of the shoe, competition could be prevented.
Not Just For Consumer Products
• GSK has registered the shape (and color) of a
Flovent® inhaler (US Reg. No. 2,625,335).
• The mark consists of the configuration of an orange inhaler
with a peach tethered cap. The cap has generally flat
sidewalls to cover the mouthpiece of the same shape. The
upright portion has a cross section shaped like the letter "U"
which has a generally flat surface facing the user. The
drawing is lined for the color peach, shown by the horizontal
-vertical cross hatching and the color orange, shown by
diagonal cross-hatching.
• GSK has also registered the color (dark blue/light
blue) of a Ventolin® inhaler (US Reg. No. 1,957,230).
• Pfizer has registered the shape (and color) of a
Viagra® tablet (US Reg. No. 2,593,407).
• The mark consists in part of the configuration of the
goods consisting of a diamond-shaped dosage tablet,
combined with the color blue as applied to the entire
surface of the goods. The drawing is lined for the color blue.
Trade Dress in the Pharmaceutical &
Medical Device Fields
• However, drug shape and color may
also be functional. See, Shire US Inc. v.
Barr Labs, Inc., 329 F.3d 348 (3d Cir.
2003).
• The Shire case dealt with color and
shape of Adderall® pills
• The District Court found that “the record
developed for purposes of this injunctive
relief application fails to support the
conclusion that Shire’s alleged trade
dress is non-functional.”
Trade Dress in the Pharmaceutical &
Medical Device Fields
• GSK has registered various other configurations for inhalers as trade
dress (both on the Principal and Supplemental Registers), including
the ones shown below:
Trade Dress in the Pharmaceutical & Medical
Device Fields
• “The mark consists of a three-
dimensional configuration of a blood
chamber consisting of the following
features: a set of two raised and stepped
rings placed on each side of a square
piece with rounded corners; the top ring
on one side containing two notches
thereby dividing the top ring through the
center; the inner ring's circumference
being truncated on opposing sides
around a flat viewing lens..” US Reg. No.
4,058,490 (Fresenius).
Trade Dress in the Pharmaceutical & Medical
Device Fields
• More applications are being filed in
medical device field every day.
• “The color(s) black, green, yellow and
blue is/are claimed as a feature of the
mark. The mark consists of alternating
helical bands of the color black with the
colors yellow, green and blue applied to
the surface of medical guidewires.” US
App. No. 76/583,765 (Boston Scientific).
• “The mark consists of a surgical implant
comprised of a pattern of interlocking
circles and a rounded rectangular or
elliptical shapes.” US App. No.
85/539,384 (Synthes).
Trade Dress in Other Fields
• A ‘yellow and black color
scheme’ for rooftop wire
supports (Clearline
Technologies) - $5.9M verdict
• A line of beauty products
including clear pumps,
translucent bottles, orange
lettering, and similar color
palettes for the contents of the
bottles (Mixed Chicks) - $8.5M
settlement.
Trade Dress in Other Fields
• The color green as applied to
the inside surface of cookware
(Telebrands) – registered trade
dress.
• Meyer Manufacturing Company
v. Telebrands Corp., (EDCA
2011) – defendant citing
Louboutin and alleging it
should be free to make an
entirely green frying pan – what
do you think?
Trade Dress in Other Fields
• The shape of a guitar
(Gibson) – registered trade
dress.
• Gibson vigorously protects
its unique designs against
copiers, and has been
successful for the most part.
• Compare: Gibson Guitar v.
Paul Reed Smith Guitars (6th
Cir. 2005) – injunction
reversed because there was
little evidence of confusion at
point of sale (i.e., music
store).
Trade Dress Registration
• Registrations can be key in: (1) establishing a defensive
position with regard to competitors, (2) ensuring that
cease and desist letters are taken seriously (due to the
burden of proving non-functionality), and (3) surviving a
motion to dismiss/motion for summary judgment in federal
court.
• The mere presence of a trade dress registration may
deter competitors from copying.
• As companies become more attuned to trade dress, new
product introductions will necessarily encompass trade
dress searches (in addition to the more typical patent
Freedom to Operate searches).
Guess The Trade Dress – Part 1
• Who is the manufacturer of these hard drives?
• Both are protected by design patents, but not by trade
dress. Can they be protected by trade dress?
Guess The Trade Dress – Part 1
• The manufacturer of the first is Maxtor.
• The manufacturer of the second is Seagate.
• Maxtor and Seagate have filed for federal registration of other
marks, but not for trade dress.
• Why: Possibly because of the perception that trade dress
protection is time-consuming and ultimately difficult to obtain.
• Practice Tip: The issued design patents are evidence of nonfunctionality which can be used to streamline the trade dress
application through the Trademark Office.
Guess The Trade Dress – Part 1
• Who is the manufacturer of this jacket?
• This jacket is protected by a design patent, but not trade
dress. Can it be protected as trade dress?
Guess The Trade Dress – Part 1
• The manufacturer is Arc’Teryx.
• Arc’Teryx lost a Motion for Summary Judgment of non-
infringement brought by Defendant over this jacket. See,
Arc‘Teryx Equipment, Inc. v. Westcomb Outerwear, Inc.,
89 U.S.P.Q.2d 1894 (D. Utah 2008).
• Query: Would Arc’Teryx have lost on a registered trade
dress infringement claim? How about copyright
infringement? Assuming Arc’Teryx could prove fame in
the trade dress, how about trade dress dilution?
• Advice: Exhaust all your avenues.
Comparison of Product Design
Protections
• Design Patent – protects claimed features
• Requirements – novelty, non-functionality
• Benefits – no need to show sales / advertising for secondary meaning;
can be done early in product life or development
• Copyright – protects artistic image of product
• Requirements – originality, non-functionality
• Benefits – no need to show sales / advertising for secondary meaning;
ease of registration
• Trade Dress – protects commercial impression of product
• Requirements – secondary meaning, non-functionality
• Benefits –can be obtained using exclusivity provided by other forms of
protection; duration of protection; no need to show novelty or originality
Develop a Protection Strategy
• 1. Determine whether the product design is patentable
• Perform a patentability analysis looking at both design and utility
patents.
• 2. Consider functionality issues
• Do prior utility patents exist for the same product?
• Do marketing materials tout utilitarian features?
• 3. File design patents (before releasing product)
• 4. File trade dress registrations
• Consider waiting 3-4 years so that secondary meaning can develop.
• Use issued design patents as evidence of non-functionality and proof
of exclusive use.
• 5. File copyright applications
Conclusions
• With the costs of patent infringement litigation in the $3.5-5.5M
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range on average, trade dress/design patent/copyright litigation
presents a potentially lower-cost alternative.
The average trademark or copyright infringement case is in the
$750K-$1.5M range (for $1M-25M at risk). Design patent
cases would be in a similar range.
Significant cost savings, and end result is the same –
competitor prohibited from selling product.
Protection for virtually the entire lifetime of the product – often
have to wait 2-3 years for a single utility patent to issue.
Cost to maintain is minimal – no maintenance fees for design
patents; no post-registration copyright fees; Sec. 8, 9 & 15
Affidavits only due once every 6-10 years.
The Future of Trade Dress
• What do you think?
• (1) Beats Electronics v. Yamaha (CDCA 2013) – motion to
dismiss denied.
The Future of Trade Dress
• What do you think?
• (2) Cointreau v. Pura Vida (NDTX
2012) – preliminary injunction issued
barring Controy sales in US.
The Future of Trade Dress
• What do you think?
• (2) Bern Unlimited v. Burton et al. (D.Mass 2011) –
summary judgment to defendant denied.
Conclusions
• Check out Trade Dress: Evolution,
Strategy and Practice from Oxford
University Press and Lexis/Nexis.
Conclusions
• Follow Darius on Twitter
http://twitter.com/PhillyIP
• Questions?