In TrafFix Devices v. Mktg. Displays, the Supreme Court held that the existence of an expired utility patent covering a particular product design provides strong evidence that the design is “functional.”* Consequently, a party would be had-pressed to claim non-functional trade dress protection for the previously patented design. In Keystone Mfg. v. Jaccard Corp., the W.D.N.Y. federal court explored how trade dress protection is impacted by an expired design patent.
Expired Design Patent: Jaccard’s hand held meat tenderizer is covered by its U.S. Design Patent No. D 276,685. The design patent expired in 1998 – seemingly leaving an open avenue for direct copycat competition. As part of a larger lawsuit, however, Jaccard asserted trade dress rights over its product.
Functionality: Jaccard argues that design patents should be treated as the mirror image of utility patents in a functionality analysis: If a utility patent creates strong proof of functionality, a design patent should provide presumptive evidence of non-functionality.
The district court rejected the suggestion that the design patent creates a presumption of non-functionality. Instead, the court held that the design patent simply serves as another piece of evidence to be used by the jury in determining non-functionality. This conclusion comports with McCarthy on Trademarks:
“A design patent, rather than detracting from a claim of non-functional trade dress or trademark, may support such a claim . . . [W]hile a design patent is some evidence of non-functionality, alone it is not sufficient without other evidence.”
Curiously absent from this decision is any analysis of the populist notion that expiration of a patent transfers to the public a right to copy and use the patented elements.
- * Although there are various definitions of functionality, in trade dress law the term generally refers to whether the element is essential for the product’s use or affects the cost/quality of the product. Only non-functional designs are protectable as trade dress.
- Keystone Mfg. v. Jaccard Corp., 2007 U.S. Dist. LEXIS 13094 (W.D.N.Y. Feb 26, 2007).
- There are several cases in conflict with Keystone Mfg on this point. Fuji Kogyo Co., Ltd. v. Pac. Bay Int’l, Inc., 461 F.3d 675 (6th Cir. 2006) (noting that a design patent serves as presumptive evidence of non-functionality).
Since it really is always all about the damages, perhaps professor Mooney can explain why trademark damages would be superior somehow to design patent infringement remedies. Or why having both remedies available would somehow be undesirable?
Also, if the trademark plaintiff decided somehow to wait for damages to accrue, a substantial waiver argument could be made that might not have the same effect in a design patent infringement case.
As I’ve said to Mooney before on this issue, what person in their right legal mind would discourage a client from seeking a spectrum of protecting including trademark and design patent protection?
And since in Mooney’s dog-eat-dog survival-of-the-fittest world, throwing dog poop is apparently somehow de rigeur, whats wrong with businesses harassing each other with design patents? After all, you harass readers of Patently-O continuously with your glib posts.
BTW, have you stopped crashing the High School debate team meetings Mooney?
Yes Mooney, Nike thinks design patents are worthless… EVERYONE thinks design patent are worthless. What a m0r0n.
Fox: “If a “right to copy” exists, then protection for a trade dress by Congress under Section 43(a) would seem to be a constitutional violation?”
Exactly right. Others have written articles taking this position.
I think to say as a policy argument that trade dress laws protect consumers and not the design owner is not as strong as you might think, since consumers do not have standing to bring an action under 43(a), only the trade dress owner, who of course is interested in stopping competition (grounded in the policy argument that he is really protecting consumers).
And “just wondering”, read Singer v. June and Kellogg v. National Biscuit where the Supreme Court of the United States says that there is a right to copy the subject matter of an expired patent.
@mooney: no patent trolls because design patents are relatively easy to design around
don’t equate this to their being worthless, however – knock off manufacturers, against which design patents are effective, don’t want to design around, they want to copy.
where does this so-called “right to copy” a design of an expired design patent come from? Doesn’t the expiration of a design patent simply mean that the patentee can no longer sue for design patent infringement?
And the quid pro quo for the 14 year term is the full disclosure of an inventive design and its inventors, disclosure of prior art the applicant is aware of, the payment of a filing fee and the payment of an issue fee — and the patentee has the right to sue for design patent infringement for knock-offs for 14 years
and trade dress law protection continues after the expiration of the design patent
(I am not sure I believe all of this, but I want to keep this valuable discussion going)
Agreed. In exchange for the exclusive right granted to a design patent owner by the government to exclude (no monopoly) others from making, using and selling the claimed design is that upon expiration of the design patent the public is allowed to make, use and sell the claimed design. However, as CAP pointed out, unlike the patent laws, the trademark laws were enacted to protect the consumer and not the owner of a product design. It naturally follows that an inventor of a product design does not really have a choice whether or not to choose a design patent or a trade dress. The inventor of a product design has only one choice that was created specifically for his/her benefit by the founding fathers, namely, to procure a design patent. If a “right to copy” exists in the context of an expired design patent then how should the laws protect the consumer from confusion if that product design has acquired secondary meaning? Now that I think about it, does Congress even have the authority to extend protection under Section 43(a) to a trade dress of a product design claimed by an expired design patent? If a “right to copy” exists, then protection for a trade dress by Congress under Section 43(a) would seem to be a constitutional violation? This would be one way for the Supreme Court to address this issue rather than leave it up to Congress to decide. The question still remains.. how can the laws effectively (and constitutionally) address confusion in the market place?
I can’t wait to see what Randy, Paula and Simon have to say…
‘Or Perry is it, “give me a “monopoly” in this design for 14 years with my design patent and then after the 14 years I can no longer sue you for design patent infringement”?’
That doesn’t sound like much of a bargain to me. Paraphrased, it simply says ‘Give me a time-limited monopoly, and in return I’ll agree that it’s a time-limited monopoly.’
I think Perry wins this round.
Or Perry is it, “give me a “monopoly” in this design for 14 years with my design patent and then after the 14 years I can no longer sue you for design patent infringement”?
Steve,
Thanks for jumping in…
You say: “When a design patent expires, the product design becomes part of the public domain. …. So what? Words are part of the public domain. A company can spend millions of dollars in advertising and turn a descriptive word or two into a protectable mark. Why should a trade dress be treated differently?”
The answer is because, unlike the trademark owner who extracts words from the public domain and promoted them into a protectable mark, the owner who takes the subject matter of his expired design patent and then calls it trade dress has already made his deal with the public: ‘Give me a monopoly in this design for 14 years with my design patent, and then you can have it.’ He breaches that contract by then asserting trade dress rights in the same design.
when a design patent expires you can no longer sue for design patent infringement — that is it
This is one of the best discussions on this blog in quite some time.
Perry – Rarely in 16 years have I ever disagreed with you after considered thought. “There is little doubt in my mind that if squarely presented with the issue, they would decide that when a design patent expires, the subject matter is in the public domain and cannot be extracted therefrom by purported trade dress rights…”
I think whether or not a “right to copy” exists in the context of an expired design patent is a policy argument rather than a legal argument. When a design patent expires, the product design becomes part of the public domain. Ok (the product design actually enters the public domain upon issue). So what? Words are part of the public domain. A company can spend millions of dollars in advertising and turn a descriptive word or two into a protectable mark. Why should a trade dress be treated differently. Congress enacted both design patent and trademark laws. Its up to Congress and not the Supreme Court to decide this one. In my opinion, confusion should be eliminated whenever and however it arises because it serves the interst of the public.
“the importance of designs to Apple or P&G”
Just so there’s no confusion, neither I or anyone else disputes the importance of designs to attract consumer attention. The issue is whether design patents are necessary to encourage the development of new designs versus something that giant corporations use to harasss each other (passing the costs of that harassment down to the public, of course).
“This would involve quality control, price control, marketing, luck, etc.”
What is so difficult about this exactly? Seriously. I run a business with a distinctive mark and distinctive products. It isn’t “hard” to do this. Very little training required. No degrees necessary.
“Anybody with a pen and paper can also invent stuff in a utility patent”
Nice try. Trying to equate utility and design patents is ridiculous. When is the last time a design patent was found invalid as non-enabled?
“can you think of a reason why Apple has not been “sued all the time”?”
The question is: have they ever been sued successfully by an individual owning a design patent? I can ask the same of Proctor and Gamble. Have they ever been taken to court and lost for infringement of a design patented by an “ordinary designer”. You know what I mean by “ordinary designer”? I mean a guy with a pen and paper, or maybe a computer, who designs stuff and files design patents on it. If design patents are so important for “protecting” Apple’s and Proctor’s really really hard work, I’d guess that there’d be lots of people filing design patents on their types of products in an effort to nail them down the road. Sort of like what folks do with utility patents, except in the case of design patents it’s a whole hell of a lot easier because the statutory hurdles for obtaining a design patent are virtually non-existent.
In other words, where are the design patent trolls? I mean, if design patents are so important I’d imagine there’d be a lot of folks out there deeply concerned about abuse of the system.
Mooney,
What if X = Y? Then Y did create a patentable design.
More fundamentally, Y’s hard work, according to my hypo, was directed to making a distinctive product. This would involve quality control, price control, marketing, luck, etc. X’s contribution was to the patentability of the design, Y’s contribution was to the commercial distinctiveness of the design.
Therefore, I disagree that my description of the differential contribution of X and Y is glaring or contradictory. It was, however, internal, so you got me there.
I believe you misunderstood Mr. Saidman’s statement regarding the importance of designs to Apple or P&G.
In your now-repeated question: “Has Apple ever been sued successfully by an individual owning a design patent? You’d think they be sued all the time, deep pockets and everything, since anybody with pen and paper can design stuff.”
Anybody with a pen and paper can also invent stuff in a utility patent, so I’m not sure this is a relevant criterion for dismissing the importance of design patents.
More to the point, Mooney, can you think of a reason why Apple has not been “sued all the time”? (Please no helping)
“Mr. Saidman, CAPat, SF, I certainly would not lump any of you with Mooney.”
And I would not lump SF in with Saidman, CAPat or CD, each of whom reek of self-satisfication. Grow up, children.
CD your hypo contains a glaring internal contradiction. You write: “X creates a patentable design from elements in the pre-IP public domain. The design patent expires and the design lays dormant for another 10 years in the post-IP public domain. Y comes along, appropriates the design for his own goods, and invests time and money into making a distinctive product.I am a cheater and begin to copy Y’s product and mark, invoking the populist right to copy notion. Y did all the hard work”
Actually Y plainly did not do all the “hard” work because in a world of infinite design possibilities, Y decided to appropriate a design from an expired patent. Is that “hard work”? If so, it confirms my suspicions about the vast majority of professional designers.
Oh, and I’m still be interested in an answer to my question from the peddlers of the fabulousness of design patents. I’ll repeat it: “Has Apple ever been sued successfully by an individual owning a design patent? You’d think they be sued all the time, deep pockets and everything, since anybody with pen and paper can design stuff.”
Public domain is interesting, isn’t it? I submit that there are at least 2 public domains.
(1) A pre-IP public domain where is everything is ownable by anyone.
(2) A post-IP public domain where nothing is ownable by anyone.
(There is possibly a third during-IP public domain where there is a narrow band [penumbra ;)] of non-infringement and non-ownership, but that’s not relevant here.)
In (1), the potential to own solves the commons problem (no one does anything because any effort helps everyone else as much as it helps the person doing the work, who ends up being the worst off). In (2), the commons problem is much harder to solve, if solvable at all.
X creates a patentable design from elements in the pre-IP public domain. The design patent expires and the design lays dormant for another 10 years in the post-IP public domain. Y comes along, appropriates the design for his own goods, and invests time and money into making a distinctive product.
I am a cheater and begin to copy Y’s product and mark, invoking the populist right to copy notion. Y did all the hard work and now cannot protect his trade dress. I profit. Thanks Y!
SF argues that the right to copy exists only where X = Y, but I don’t believe that Mr. Saidman’s public domain is so limited. Forgive me if I have mischaracterized your statements.
I prefer the everything-up-for-grabs (1) pre-IP public domain. The (2) post-IP right to copy world sounds nice but probably does not work so well.
Mr. Saidman, CAPat, SF, I certainly would not lump any of you with Mooney.
Thank you for your thoughtful response.
You ask: ‘ What is the “subject matter of an expired patent”? Is it limited to the claims, or does it include everything disclosed?’
You must read the Keystone case. In perhaps a distorted interpretation of TrafFix, the court performed a Markman claim construction of the expired utility patent claims to determine whether the alleged trade dress fell within the scope of the claims, determined that it did not, leading to its conclusion that the expired utility patent was not evidence of functionality. Their logic regarding functionality was a bit weird, but their notion of expired patents was not.
You say: ‘ It would take a very activist court [your “a black-robed oligarchy”] to step in and presume that Congress intended for the consumer protections afforded by the Lanham Act to be extinguished because a trade dress owner also obtained design patent rights on the same configuration.’
I don’t think the US Supreme Court would favor being characterized as a black-robed oligarchy. There is little doubt in my mind that if squarely presented with the issue, they would decide that when a design patent expires, the subject matter is in the public domain and cannot be extracted therefrom by purported trade dress rights, your well-reasoned policy arguments notwithstanding. Check out my “TrafFix Kops…” article, cited in my earlier post (available on my website link to designlawgroup.com) where I make the case.
Also, you must read the Fuji case, from your own 6th Circuit (father of the Ferrari case, and BTW I completely agree with Judge Cudahy’s dissent). In Fuji (cited in my earlier post), the court said that trade dress rights cannot exist in the subject matter of expired utility patents. Perhaps your dear 6th Circuit is the black-robed oligarchy?
Finally, of course I advise my clients on what the law is, and not what I predict it might be someday. But having done the research, actually before the Supreme’s TrafFix decision came down, I became convinced that there is such a thing as the public domain, asserted in many, many Supreme Court decisions, and that if squarely faced with the issue (which I thought was the case in TrafFix, but for the low hanging fruit of functionality), they would hold as I predict.
Perhaps a side wager is in order?
LOL, thank you, Mr. Saidman. Being lumped with Mooney was very uncomfortable.
The facts in the TrafFix case made the expiration of the patent important, even though you are correct that it wasn’t crucial to the holding. TrafFix waited until the patent expired, and then began marketing product with the same dual spring design as was covered by the patent claims — because it was a very good design. Then MDI came after TrafFix for trade dress infringement. If the patent had not been expired, the issue would not have arisen. First, TrafFix would not have been making and selling the accused product. Second, MDI would have simply sued for patent infringement. So,theoretically, you are correct that the holding would apply in the case of an unexpired utility patent as well, but, practically, it is difficult to see how that situation would have arisen in real life.
Your comment that the Court could have simply stated that “the subject matter of an expired patent is in the public domain and can’t be extracted by purported trade dress (or other) rights” to resolve the TrafFix question, rather than defining functionality is interesting. However, it would not have given bright line guidance. What is the “subject matter of an expired patent”? Is it limited to the claims, or does it include everything disclosed? Because a patentee claims a valve in a pump, should he be forever foreclosed from claiming trade dress rights in the unique shape of that pump, which has a purely aesthetic (not functional) purpose? There would be no logical reason for such a broad prohibition. Moreover, as you suggest in your post, such an approach would not have resolved the split in the circuits regarding the definition of “functional” for ascertaining entitlement to trade dress protection, and could theoretically have resulted in an assertion of trade dress rights in a functional configuration which was the subject of an unexpired utility patent, or was unpatented.
I haven’t read the Keystone case, just the synopsis given in the original post above, but I don’t think that case will lead to the holding you desire. I agree with the holding, by the way, that a design patent does not provide presumptive evidence of non-functionality. Most design patents show both functional and non-functional elements, and the nature of a design patent claim does not lend itself to ready analysis. If anything, the court in that case seemed to be acknowledging that design patents and trade dress peacefully co-exist. It would take a very activist court to step in and presume that Congress intended for the consumer protections afforded by the Lanham Act to be extinguished because a trade dress owner also obtained design patent rights on the same configuration. There is no compelling reason to reach such a result, except for the notions of theoretical “fairness” which you and Crouch advance. This is because the continuation of trade dress rights, by definition, does not impair the ability of competitors to make and sell equivalent products, and such a holding would vitiate the public policy interest in consumer protection which is the foundation of trade dress law. If Congress thinks this issue is a problem, of course, it is free to address it. I still like to think that we are somewhat of a Constitutional republic, and still prefer to make new policy legislatively, rather than by a black-robed oligarchy, although there is increasing doubt on this score.
My clients are not typically consumer product companies, as I largely represent medical device manufacturers. I realize there is a role for design patents in that niche of mass consumer products. I guess I am confused a bit by your stand on this issue of design patent vs. trade dress. Given your practice area, I would think you would favor the current law, and advise your clients to pursue both types of protection concurrently when possible. And your point is well taken about design patents being aimed at low-life copycats, not legitimate competitors. So why are you so insistent that they be given free reign to pursue their knock-offs once the design patent expires, by stripping your clients of the ability to maintain trade dress protection?
Mr. CAT,
I accept your apology.
I agree with you about Dastar; it did not directly address the design patent/copyright/public domain issue we’ve been discussing. But it is at least a reaffirmation of what happens to the subject matter of an expired patent and copyright: public domain time.
Do you really think that the owner of an expired utility patent (MDI, for example) could successfully assert trade dress rights in the same subject matter, absent the functionality doctrine? If so, I’m curious about your reaction to the Fuji case.
And as I have already stated, I agree that no modern court has actually held that expiration of a design patent dedicates the subject matter to the public which cannot be recaptured by an assertion of trade dress rights. But that issue may squarely present itself sooner or later (see Keystone), and I will put my money on the Supremes reasserting the sanctity of the public domain. Too bad Mr. Roberts is no longer available.
I guess I disagree with you about your TrafFix case. I think the whole thing turned on the functionality issue, because whether the patents had expired or not made absolutely no difference in the Court’s holding, even though the Court mentioned expired claims. In other words, the result would have been exactly the same if MDI was asserting trade dress rights in the functional features claimed in a subsisting utility patent. This is why I think the Supremes dodged the issue kinda, sorta; i.e., they never had to mention the word “functional” if they had simply said that the subject matter of an expired patent is in the public domain and can’t be extracted by purported trade dress (or other) rights. Of course, as you pointed out, they really didn’t have to reach the (much bigger) public domain issue, because MDI’s purported trade dress was oh so functional – it was low hanging fruit. One day they will reach it, either in a utility patent case, or better yet, a design patent case since the functionality issue won’t resolve a design patent/public domain situation.
Finally, saying that design patents are “quite limited” is a bit different than your previous assertion that they are “worthless”. Compared to utility patents, of course design patents are limited. They cover only one particular species, and never the genus. It’s like the idea/expression dichotomy of copyright: design patents never protect the idea, only the particular manner of expression of the idea.
Yet, when one is faced with shutting down knock-offs, design patents (properly drafted and prosecuted) are of immense value. Understand that design patents are not primarily aimed at legitimate competitors who see the “idea” of a design, and make their own expression of it and compete with the original design owner. That’s fine. Design patents are aimed at the copycats, the guys who don’t have a nickel of investment in the original design, and simply trade on the popularity of the appearance of the original product by knocking it off. Perhaps your clients are not consumer product companies, who I can assure you place a great deal of value on design patents precisely because they are extremely effective in stopping knock-offs.
p.s. I don’t think you (or anyone else) deserve(s) to be lumped with Mooney.
… perhaps a key distinction between copyright and trade dress is that the copyright vests upon creation, whereas the trade dress may need the leverage from the design patent in order to obtain secondary meaning and thus vest.
Mr. Saidman:
My apologies concerning the inadvertent typo in your name.
Dastar deals with copyright expiration due to natural causes,doesn’t it? In other words, Scalia’s quote has to do with the effect of natural copyright expiration rather than the premature extinction of copyright due to the owner’s choice to obtain design patent protection. Stiffel is a preemption case. I don’t think these cases bear on whether a copyright expires because of a design patent. I was joking in my comment, trying to show the absurdity of stretching the point of patent expiration too far.
As for knock-offs, if the public knowingly purchases a knock-off, there is no confusion. It is the person who buys a knock-off thinking it is genuine who is burned, and this person is the target of trade dress protection. You guys still haven’t addressed the rights of this person to not be confused, and how you will remedy that situation if you extinguish the patent holder’s trade dress protection.
“I believe strongly in trade dress rights that meet the legal criteria, but when the owner of a design patent makes a deal with the public for a limited (14 year) monopoly, when it’s over, it’s over.” — You should cite to Saidman on this statement, not Scalia, because it only represents the law as you would like it to be. The bottom line is that the Constitutional requirement for a limited duration monopoly is met because the design patent expires. Trade dress protection, while having some overlap with design patent protection, is significantly different and has different requirements than design patent protection.
The club of those who believe design patent protection, particularly as currently interpreted by the courts, is quite limited, is a lot bigger than Mooney and me. Design patents have value for a very limited segment of the market, but I seldom recommend them to clients and very few are filed nationally compared to utility patents. The attempted extension of utility patent protection, as was attempted by MDI in the TrafFix case, was a huge deal, and a clear affront to the requirement that utility patents be limited in duration, as well as to the idea that utility patents are for protecting functional ideas, and trade dress is for protecting non-functional configurations. In the case of design patents, not so much. It’s not a big deal and does not substantially restrict competitors from effectively competing, because the definition of “non-functional” necessarily requires that competitors not be competitively disadvantaged by the trade dress rights. Additionally, there are public policy reasons for continuing to protect the public from source confusion.
Sorry, but attempting to stretch the issues and holding of TrafFix from utility patents to design patents is apples and oranges.
“let’s ask Apple & Procter & Gamble what they think about design patents”
Regardless of how they choose to answer, it would not disprove the point that nearly everybody thinks that design patents are worthless.
Has Apple ever been sued successfully by an individual owning a design patent? You’d think they be sued all the time, deep pockets and everything, since anybody with pen and paper can design stuff.
“So, SF, I assume in your world you also extinguish all copyright interests in the design when the design patent expires?”
No. You’d at least be able to keep some sort of derivative work right. You’d just be estopped from saying that using the patented design in a product infringes the copyright.
And I don’t care about “double-dipping” per se. I care about the applicant making a deal that the public will get to use the design after the 14-year term expires, but then the applicant leverages the 14-year term to develop secondary meaning that (under your belief) permits, even demands, that the applicant back out of its promise.
You say: >>Everyone else in the world thinks that design patents are nearly worthless.<< I can't let this one go. It is a patently ridiculous, and borderline ignorant, statement with which only you and Mooney agree. It hardly bears comment, but let’s ask Apple & Procter & Gamble what they think about design patents.
CAP,
If you’re going to mischaracterize the things I devote my life to, you should at least spell my name correctly.
Regarding copyright expiration, I suggest you take a gander at Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003), where Justice Scalia, in his infinite wisdom (I like him only when he agrees with me) said: “The right to copy, and to copy without attribution, once a copyright has expired, like “the right to make [an article whose patent has expired]–including the right to make it in precisely the shape it carried when patented–passes to the public. Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225, 230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 121-122 (1938).”
You said: >>By the way, you conveniently ignored the plight of the portion of the public which gets burned by knock-offs because of the resultant confusion in the marketplace due to the extinguishment of the design patentee’s trade dress rights.<< In my experience, the public who buy knock-offs do not think they are getting burned, they think they are getting something a lot cheaper than the original (this is the argument used by those who want to sell knock-off crash parts and knock-off fashion designs). It’s the trade dress owner who is getting burned. I believe strongly in trade dress rights that meet the legal criteria, but when the owner of a design patent makes a deal with the public for a limited (14 year) monopoly, when it’s over, it’s over. [cite to Justice Scalia, supra].
So, SF, I assume in your world you also extinguish all copyright interests in the design when the design patent expires?
Everyone else in the world thinks that design patents are nearly worthless, while you and Seidman are devoting your lives to saving us from the scourge of those nasty design patent “double-dippers”.
By the way, you conveniently ignored the plight of the portion of the public which gets burned by knock-offs because of the resultant confusion in the marketplace due to the extinguishment of the design patentee’s trade dress rights.
“Note this would apply even where the owners of the patent and trademark were different.”
We’re talking about a potential design patent applicant being forced to choose either (1) a guaranteed 14 years with a design patent; or (2) trying to obtain trademark rights when the public is free to copy the design at will before secondary meaning occurs. We’re talking about the design patentee being prevented (perhaps estopped) from alleging trademark infringement of a copy of the expired-design.
We’re not talking about the design patent defeating the trademark rights of others because the party with the trademark rights did not implicitly make an assertion that it would dedicate the subject matter of the design patent because it didn’t file the design patent.
“None of those of you who are arguing that there must be an unfettered right to copy when a design patent expires have been able to explain why this is so important, or why it outstrips the right of the public to be protected from market confusion due to knock-offs.”
Sure we explained it: implicit in the “limited times” provision is that, after the “limited times,” the public eventually gets unfettered use. Otherwise, why should the public give the inventor the exclusive right when it could just copy the design immediately and never have to worry about confusion from after-arising secondary meaning?
The subject matter of a patent and trademark is different because patents and trademarks protect different aspects of IP, even where the design at issue is exactly the same. I disagree that design patents and trademarks are mutually exclusive. They just cover different subject matter that can coexist.
Let’s say the design is a squiggly thing that satisfies both patent and trademark standards.
After 14 years the design patent expires, I then make or use the squiggly thing. A zealous advocate promptly serves me with a complaint alleging trademark infringement.
If my use was drawing the squiggly thing to decorate my kitchen, the use may not be a use in commerce, thus defeating a trademark claim.
If my use was using the squiggly thing as a “keyimage” in an image search engine (as opposed to a keyword in a text search engine), the use may not be a use in commerce depending on what Circuit you are in.
Let’s say my use was in fact a use in commerce. Is there confusion under the relevant multifactor (e.g., Polaroid, DuPont) legal test? If the trademark owner only registered and used the mark for women’s clothes and I use the mark on a nuclear submarine, then there may not be confusion.
On the other hand, any of these uses would have likely infringed the design patent. Upon its expiration, you are free to copy the claimed design as long as there is no trademark confusion.
Regarding the counterexample. The difference in duration is a necessary consequence of a “right to copy” world. If there is an unqualified right to copy, even if there is confusion, upon the expiration of a design patent, then the trademark owner’s right to enforce the trademark necessarily expires at the same time as the patent.
Design plus trademark = 14 years if right to copy includes right to confuse
Trademark alone = infinity
Note this would apply even where the owners of the patent and trademark were different. Interestingly, courts do not appear to allow double-dipping for patent and trademark damages that would occur during the period of overlap. The pick your poison option occurs at the damages phase rather than the infringement phase.
Mr. Seidman:
So because the law is not to your liking, the Supremes “dodged” the issue? Until they squarely address this settled law that a product configuration which was subject to the protection of a design patent can afterward be protected under the Lanham Act as trade dress by changing it to your view of the law, they are “dodging”. Curious.
None of those of you who are arguing that there must be an unfettered right to copy when a design patent expires have been able to explain why this is so important, or why it outstrips the right of the public to be protected from market confusion due to knock-offs. Why should other thermostat makers be able to make round thermostats, since round thermostats are identified in the mind of the public with a particular manufacturer, Honeywell? What about the person who buys an inferior round thermostat made by a third party copyist, thinking it’s a Honeywell? What about his rights to be protected from that? If the copyist can show that there is a competitive necessity to make round thermostats, other than to pass off their products as Honeywell products, then they can overcome the claim to trade dress protection.
I fail to see the basis for alarm.
@ moooney (“Our tax dollars at work: promoting the advancement of non-functional unseen designs.”)
USPTO fees, not tax dollars
>>So am I or am I not absolutely free to practice the subject matter of any expired design patent? If not, it’s not dedicated to the public, is it?<< You are not absolutely free, under the weight of current case law, although you should be, in my view. There is such a thing as the public domain, and there are many older Supreme Court cases that hold just that. But with the proliferation of section 43(a) actions, and some poor precedent (e.g., Mogen David), it's gone the other way, i.e., current cases pretty much say that design patent & trade dress rights are mutually exclusive and can co-exist. This is the issue, albeit with expired utility patents, that the Supremes dodged in TrafFix (excuse me, it was just judicial restraint) perhaps because the public domain (as usual) had no amicus advocate. I'm actually somewhat surprised that the Supremes, lovers of open and free competition (i.e., anti-monopoly), didn't grab ahold of this. But, in the concluding paragraph of TrafFix, they hinted that they very well might in the future, if the functionality doctrine didn't quiet things down on the 43(a) front.
“A trademark of infinite duration does not prevent the subject matter of a design patent to be secured for a limited time because the subject matter of a design patent is different than the subject matter of a trademark.”
So am I or am I not absolutely free to practice the subject matter of any expired design patent? If not, it’s not dedicated to the public, is it? As noted above, the phrase “different than” is tellingly not the same as “mutually exclusive.”
CD
>>if one could not have trademark rights after the expiration of a design patent, then an owner that was entitled to only trademark protection would have longer protection than an owner that was entitled to both patent and trademark protection.<< How can potentially perpetual rights in a trademark be "longer" that potentially perpetual rights in a trademark (plus patent)?
CD
>>Because it is formally possible to copy the expired patent design without causing trademark confusion, trademark rights do not prevent the public dedication of the subject matter of an expired design patent.<< Trademark rights absolutely prevent the public dedication of the subject matter of an expired design patent. If I were to make and sell the subject matter of long expired D242646, you can bet your sweet bippy that the owner of Reg. No. 1846873 would serve me with a complaint before you can say “no confusion”.
CD:
>>A trademark of infinite duration does not prevent the subject matter of a design patent to be secured for a limited time because the subject matter of a design patent is different than the subject matter of a trademark.<< Depends what you mean by “different”. The subject matter can be exactly the same. Ask Honeywell about its storied (and hotly litigated) round thermostat whose design patent D176657 expired in 1970.
Re: CAP –
>>The Court didn’t really believe the issue could ever really arise, because it couldn’t conceive of an instance where, “…despite the rule that functional features may not be the subject of trade dress protection, a case arises in which trade dress becomes the practical equivalent of an expired utility patent.”<< I can conceive of such an instance, because that's exactly what happened in the Fuji case (which I pointed out). Judicial restraint notwithstanding, the functionality doctrine doesn't work to resolve the question of whether trade dress rights can exist in the subject matter of an expired design patent. That's why Keystone is so interesting.
“A trademark of infinite duration does not prevent the subject matter of a design patent to be secured for a limited time because the subject matter of a design patent is different than the subject matter of a trademark.”
I think I agree but I would put this differently: the *protection* afforded by a design patent is (or should be) different than that afforded by a trademark. The protection of the design patent is limited.
One of the many problems with design patents, however, is the apparent merging of the scope of their protection with trademark. That a test for design patent infringement could depend on a showing of “consumer confusion” is beyond silly. The test should be: either the design is copied or it isn’t. If you don’t like that protection, then don’t get a design patent.
But if design patents are intended to offer more proection than that, then design patents should be chucked in the garbage because (again) they provide precisely zero benefit to the public. None. Nada. Zilcho.
SF, here is why I disagree:
A trademark of infinite duration does not prevent the subject matter of a design patent to be secured for a limited time because the subject matter of a design patent is different than the subject matter of a trademark.
Once the patent expires, but while the trademark is still active, I may be able to use an exact or equivalent copy of the design without causing consumer confusion (for example, if the use was not a “use in commerce” at all).
Because it is formally possible to copy the expired patent design without causing trademark confusion, trademark rights do not prevent the public dedication of the subject matter of an expired design patent.
Looking at a counterexample, if one could not have trademark rights after the expiration of a design patent, then an owner that was entitled to only trademark protection would have longer protection than an owner that was entitled to both patent and trademark protection.
It appears unfair and unproductive to penalize an applicant that can meet the standards for both patents and trademarks.
“I submit that you are creating a constitutional tension that does not really exist.”
I disagree. If a law (whether created under the commerce clause or whatever), prevents the subject matter of a design patent to be for “a limited time,” there is constitutional tension.
Mr. Saidman, that is a very interesting analysis. I would predict that there is a right to copy but not a right to confuse.
I admit that in the case of design patents, which have very narrow claims, the act of copying the design may always cause confusion and therefore infringe the trade dress. As a practical matter, then, there would be no right to copy.
CAPat/SF, federal trademarks and trade dress “derive” from the Constitution, specifically the Commerce Clause. The limited times provision of the Copyright/Patent clause is inapplicable to trademarks. Instead, trademarks are dedicated to the public once the owner stops using the mark. (But see the neat NYT story last Sunday about resurrecting old brands).
I submit that you are creating a constitutional tension that does not really exist.
Mr. Seidman, I don’t understand your comment that the Court “dodged” the “right to copy” issue in the TrafFix case. The primary question presented to the Court was whether a design covered by an expired utility patent, equivalent in all significant respects to a design which the patentee had successfully litigated against as infringing that patent, could be construed as being non-functional for the purpose of qualifying for protection as trade dress. The reason the case was accepted on cert. by the Court was because there was a split in the circuits at the time as to the definition of functionality for the purposes of determining trade dress protection. The 6th Circuit ultimately had held that, even though the design at issue (two side-by-side upstanding springs forming a part of a sign stand) was functional for the purpose of qualifying for utility patent protection, it was non-functional for the purpose of qualifying for trade dress protection, because there were equivalent alternative designs available to TrafFix. In other words, in the opinion of the 6th Circuit, the design was non-functional because there was no competitive necessity for TrafFix to adopt the contested design. This was nonsensical.
The Court took this question head-on in its holding, and set forth a two-part test. 1) is the feature essential to the use or purpose of the device?; 2) Does the feature affect the cost or quality of the device? If the answer to either of these questions is “yes”, then the feature is functional. If both answers are “no”, then you move to the above-noted “competitive necessity” test (aesthetic functionality).
With the above holding, there was no justification for reaching the broader Constitutional question concerning the so-called “right to copy”. The Court didn’t really believe the issue could ever really arise, because it couldn’t conceive of an instance where, “…despite the rule that functional features may not be the subject of trade dress protection, a case arises in which trade dress becomes the practical equivalent of an expired utility patent.”
I wouldn’t call that “dodging”. I would call it “judicial restraint”.
I think that the interesting part of Keystone is its “right to copy” aspect (meaning that once a patent expires, the subject matter is in the public domain and thus can be copied at will). And I can’t believe I’m writing these words, but of all the silly things Mooney has said, I (gasp) agree with him about the potential need to “pick your poison” as between design patent & trade dress rights. I suggested the same thing in my “right to copy” article: “Kan TrafFix Kops Katch the Karavan Kopy Kats? -or- Beyond Functionality: Design Patents are the Key to Unlocking the Trade Dress/Patent Conundrum”, 82 JPTOS 839 (December, 2000).
And although the great weight of authority says that patent and trade dress rights can co-exist, in Fuji Kogyo Co., Ltd. v. Pacific Bay International, Inc., 461 F.3d 675 (6th Cir. 2006), the 6th Circuit affirmed the lower court’s cancellation of Fuji’s trademark registration covering one of its designs, and dismissing its section 43(a) Lanham Act claims covering another design, on the grounds, inter alia, that the alleged trade dress was the subject matter of two of Fuji’s expired utility patents and as such, was in the public domain, relying on one of the earliest “right to copy” cases – Singer v. June, 163 U.S. 169 (1896).
I disagree with the post concerning Kellogg v. National Biscuit, which I consider to be one of the strongest “right to copy” cases. The Court in fact specifically considered the design patent: “And a design patent was taken out to cover the pillow-shaped form. Hence, upon expiration of the patents the form, as well as the name, was dedicated to the public.” Id. at 119, 120. While there was a footnote (FN4) to the effect that the design patent had been invalidated, the footnote actually said: “In 1908 [the design patent] was declared invalid….and therefore had already been dedicated to the public.” The word “already” indicates that had not the invalidity been effective to dedicate the design patent to the public, the expiration thereof certainly would have.
Another interesting part of Keystone v. Jaccard was that the court granted the alleged infringer Keystone’s motion to conduct a Markman claim construction on the trade dress owner Jaccard’s expired utility patent claims. It then determined that the expired utility patent claims did not cover Jaccard’s trade dress. Thus, in accordance with the court’s interpretation of the TrafFix case, they concluded that the expired utility patent was not evidence of functionality, rebuking the alleged infringer Keystone’s assertion to the contrary.
The court then engaged in a Markman claim construction of Jaccard’s expired design patent, and found that the design patent did in fact cover the alleged trade dress at issue. And, as pointed out by Professor Crouch, the design patent was not deemed to be presumptive evidence of non-functionality, as asserted by the trade dress owner Jaccard. Even more interestingly, the court went on to consider a request by Keystone for an interlocutory appeal on the issue of whether Jaccard’s expired patents created a “right to copy” the subject matter thereof, independent of any alleged trade dress rights. The court denied the request, using somewhat circuitous reasoning, saying it was contrary to the Supreme Court’s holding in TrafFix. Thus, it concluded that an immediate appeal on that issue was unlikely to succeed, and therefore facilitating such an interlocutory review will not ultimately advance the termination of the litigation. This case, currently in its final pre-trial stage, is worth keeping an eye on, because this same “right to copy” issue may be raised again.
If Keystone perchance winds up in the Supreme Court, it will squarely present the Court with the “right to copy” issue, which the Court dodged in TrafFix where it relied instead on the functionality doctrine to invalidate the alleged trade dress. The reason the “right to copy” issue would be squarely presented is because in Keystone, there is an expired design patent, rather than the expired utility patent as in TrafFix, and the trade dress functionality doctrine cannot be used to resolve the issue of whether the subject matter of an expired design patent (which protects only ornamental features of a design) can later be claimed as trade dress. The Court will therefore be forced to finally resolve the “right to copy” issue.
A sidelight on both Keystone & Fuji is that they were pure trade dress cases, having no patent infringement count, and thus are presumably not appealable to the Federal Circuit. Thus, you have the quite strange situation (perhaps of first impression) of federal courts engaging in interpreting the meaning and scope of patent claims under Markman with no recourse to the ‘expert’ court that to my knowledge has been the only appellate court to review lower court’s Markman patent claim constructions.
“I would like to know why it is so important to you that third parties be permitted to knock off non-functional aesthetic product configurations anyway?”
Because after the patentee receives its part of the quid pro quo (that is, the 14-year exclusive right), the public should receive its part of the quid pro quo (that is, the free use of — or in your words, the ability to “knock off” — the design). Your use of an inflammatory phrase (“knock off”) for post-patent-expiration copying that is expressly contemplated under our patent scheme speaks volumes as to your bias. But you have a duty to be biased as an advocate, so I can’t say I blame you.
“When a design patent on a configuration expires, the remaining trade dress protection on that configuration, if it exists, is not the same and so there is no violation of the Constitutional “limited times” provision at all.”
Tellingly you use the phrase “not the same” instead of “mutually exclusive.” If those rights are not mutually exclusive, then, to the extent they overlap, there is a “limited times” problem.
“why it is so important to you that third parties be permitted to knock off non-functional aesthetic product configurations anyway? How does that “freedom” benefit the public?”
I am trying to remember if I’ve ever seen a question that was so mind-bogglingly self-answering.
I will address the strawman, however, as I never tire of pointing out the use of this oft-abused and dishonest argumentative “strategy.” It is not “so important” to me that third parties be permitted to “knock off” so-called “product configurations.” What is important to me is that businesses (and even “ordinary product configuration designers” — LOL!) are not given intellectual property rights to “designs” under a completely broken, contradictory and (from the perspective of the vast majority of non-patentee citizens) pointless bureaucratic regime.
SF,
Patents are constitutionally derived, and thus subject to the “limited times” provision. Trade dress protection is not derived from the Constitution, and is not subject to a fixed term, but rather only to a requirement of continued use.
You seriously overstate my “admission”. Most trade dress protection claims do not involve configurations previously protected by design patents. And most unpatented product configurations which are ultimately the subject of trade dress protection are not copied by third party competitors, thus permitting them to acquire secondary meaning over time. I was merely trying to cite an example of how design patents and trade dress protection differ, both in philosophy and practice, and how one might use one type of protection initially to boost their chances of later being able to take advantage of the other type of protection.
I think you need to read back through this thread so you will better understand that design patent protection and trade dress protection are substantially different. When a design patent on a configuration expires, the remaining trade dress protection on that configuration, if it exists, is not the same and so there is no violation of the Constitutional “limited times” provision at all.
If you disagree with the public policy permitting trade dress protection for previously patented (design patent) product configurations, lobby for legislative change. It’s not the job of the courts to substantively change the law because you don’t like it. However, while you and Mooney might not care about the ensuing marketplace confusion, the guy who mistakenly bought product B instead of product A because of that confusion might disagree with you.
And, by the way, since you and Mooney feel so strongly about this issue, I would like to know why it is so important to you that third parties be permitted to knock off non-functional aesthetic product configurations anyway? How does that “freedom” benefit the public?
“I have no problem with the initial confusion that may arise after the design patent expires.”
Suffice it to say that you are not alone. Nobody cares about design patents except the companies who enjoy harassing each other with them. They accomplish absolutely nothing.
This is the simplest explanation and most likely explanation for the embarrasing state of design patent “case law,” by far.
Take it to the bank.
“Design patents and trade dress are two different forms of IP. I am unaware of any statutory prohibition to using both.”
It’s not statutory. It’s constitutional. Remember the “for limited times” part?
CAPat admits that there wouldn’t be any confusion at all if the patentee doesn’t obtain a design patent, presumably because other market participants would copy the design and thus prevent the design acquiring sufficient secondary meaning.
How is the design patent “for limited times” if it’s used to acquire the secondary meaning that provides an infinitely long trade dress right that’s effectively the same as the design patent?
This is really a question of policy. Does the public benefit more from having patents that are “for limited times” or does the public benefit from avoiding an initial bout of confusion after a design patent expires? Where there wouldn’t be any confusion were it not for a design patent, I have no problem with the initial confusion that may arise after the design patent expires.
confused, you are well named. You ask “How is Company [C] damaged and how is compensating for that damage related to preventing the harm of consumer confusion?” You also say “I agree that third parties should enforce the public policy, but why should they receive 100% of the compensation if they haven’t been damaged?”
If someone infringes a trademark or trade dress, the IP owner (Company C) is damaged by loss of sales and probable loss of goodwill if substandard products are being sold by the infringer. This is a very real loss and is the incentive for the third party to correct the infringement. Infringement occurs because someone wants to capture part of the market share that the legitimate owner has.
The public benefits from the enforcement by being able to identify the true source of a product by the trademark or trade dress. That is, members of the public will not be duped into buying substandard products thinking it came from the legitimate owner of the mark.
Confused,
When I said that the trademark owner has the most to lose, I simply meant that he/she/it likely has more to lose than any single consumer. Thus, the economics favor enforcement by trademark owners.
Also, you say that “it’s the public who gets damaged by the confusion, not the third party…” and that “One hundred percent of the compensation goes to third parties who have not been damaged…” That’s just not true – a trademark owner clearly can be damaged by lost sales, lost goodwill, etc. Section 1117 allows the infringer’s profits to serve as a proxy for the trademark owner’s damages, but this doesn’t suggest that the trademark owner hasn’t sustained any actual damages.
Sorry, while we may agree on a lot of things, I don’t agree that the current system is can’t be justified on consumer protection grounds. You ask, “How does compensating the third parties help to promote the goal of consumer protection?” My answer is that from the infringer’s standpoint it makes no difference who gets compensated. As long as somebody does, then the law serves as a deterrent. The issue of who gets compensated can be (and has been) determined in view of efficiency considerations.
Design patents do not require a product, while trademark and trade dress do. This allows some efficiencies:
1) The associated right to exclude with a design patent may amplify a first mover effect and accelerate market distinctiveness and therefore acquisition of trademark rights.
2) A small inventor or NPE owner of the design patent can license the design to a large company who has the capacity to manufacture and market a commercial embodiment. This is quite similar to a utility patent paradigm (small nimble innovator, large economy of scale distributor).
Design patents may fall more towards the “useful arts” rather than “science” part of the Patent/ Copyright clause but seem to be comfortably supported by the clause in any event.
I doubt the Supreme Court will grant cert in Egyptian Goddess, if it goes that far. Judge Moore created a new infringement test of out whole cloth and the en banc court will get rid of it.
Private actors often protect consumers as a whole (trademark, unfair comp., and antitrust for example). Other areas of law (say tort law) also arguably benefit the public as a whole while the immediate damages for that particular lawsuit go only to the plaintiff.
Sorry, the first paragraph should read: How is Company C damaged…?
@Leopold Bloom: Because compensating people for harm is not the only function of law. Indeed, it is not even the primary function of law – law is much more beneficial when it prevents harm.
I agree, but then why do we compensate third parties who haven’t been damaged? Company A confuses Person B into purchasing a good or service because Company A used a mark confusingly similar to Company C’s mark. Company C sues Company A to protect the public from this confusion under 1125(a). How is Company B damaged and how is compensating for that damage related to preventing the harm of consumer confusion? Why is Person B (and others similarly confused) not compensated?
@Leopold Bloom: While a consumer always has access to remedies for fraud, the threat of fraud litigation is not a particularly effective prophylactic against deceptive practices in low-dollar consumer transactions.
Of course, consumers can bring their own trademark infringement actions under 1125(a), which allows “any person” to file a civil action. There’s no need to file an action for fraud.
@Leopold Bloom: Thus, who better to “police” government regulations that seek to minimize consumer deception through product marking and trade dress than those who have the most to lose – legitimate users of the trademarks and/or trade dress? This approach is compelled by efficiency concerns.
Why do legitimate users of trademarks or trade dress have the most to lose? I thought the public had the most to lose as they are the primary policy reason behind trademark law and trade dress law. It’s the public that gets damaged by the confusion, not the third-party. Again, I agree that third parties should enforce the public policy, but why should they receive 100% of the compensation if they haven’t been damaged? How does compensating the third parties help to promote the goal of consumer protection? I think we should entice third parties to enforce the rights through the payment of a percentage of the award and an award of attorneys’ fees, but the public should receive the bulk of the award similar to the False Claims Act.
@Leopold Bloom: Indeed, in my opinion, the fact that many have lost sight of this fundamental motivation for trademark law is a primary cause of the over-reaching often seen today, by trademark users who confuse a mark as “property.”
Now this I agree with! If consumer protection is the primary policy reason behind trademark law and trade dress law, then compensation for violations of the policy should reflect that. Currently, it does not. One hundred percent of the compensation goes to third parties who have not been damaged. Thus I ask, is consumer protection truly the primary policy reason, or is the primary policy reason to protect competitors from each other, which is valid enough in its own right, but not the reason often recited by courts and trademark users who confuse a mark with “property”.
“You can also register design patents for internal components of a product, things that are never seen by consumers.”
Our tax dollars at work: promoting the advancement of non-functional unseen designs.
“How much protection do these design patents give? Either not much or none, but that doesn’t stop people from filing them.”
Of course it doesn’t. And even if it’s a really crappy design patent, that doesn’t stop people from asserting it against their competitors. It’s called “doing business.”
“You can also register design patents for internal components of a product, things that are never seen by consumers.”
Who’s the “ordinary observer” in that instance?
“Courts should help protect the public from confusion. And I have no problem with using private parties to promote public purposes. But my question dealt with compensation, not enforcement or protection. If it is the public that is damaged by confusion, why isn’t the public compensated with money damages?”
Because compensating people for harm is not the only function of law. Indeed, it is not even the primary function of law – law is much more beneficial when it prevents harm.
Several of the commentators are quite right to link trade dress and trademark law to consumer protection. One problem that a consumer faces is that it is often not worth his or her while to challenge deceptive or misleading trade practices. Furthermore, a consumer may never realize that he has been fooled. While a consumer always has access to remedies for fraud, the threat of fraud litigation is not a particularly effective prophylactic against deceptive practices in low-dollar consumer transactions.
Thus, who better to “police” government regulations that seek to minimize consumer deception through product marking and trade dress than those who have the most to lose – legitimate users of the trademarks and/or trade dress? This approach is compelled by efficiency concerns.
Your observation that consumers can’t directly recover losses due to abuses of trademarks and trade dress does NOT lead to a conclusion that consumer protection is not the primary policy reason behind trademark law and trade dress law. (Design patents are a somewhat different beast, in my view.) Indeed, in my opinion, the fact that many have lost sight of this fundamental motivation for trademark law is a primary cause of the over-reaching often seen today, by trademark users who confuse a mark as “property.”
@Needing Some Distraction: Confused and Federally Circuitous just don’t know much about trademark and trade dress law.
What is the basis for this statement? I know that the courts “recite this mantra” of protecting the public from confusion and I agree with that mantra. Courts should help protect the public from confusion. And I have no problem with using private parties to promote public purposes. But my question dealt with compensation, not enforcement or protection. If it is the public that is damaged by confusion, why isn’t the public compensated with money damages? If the public isn’t compensated by money damages, then perhaps this policy decision isn’t as strong as courts like to believe despite their recitals.
@CAPat: “Confused” seems startled by this basic tenet of trademark law, but it’s not unique to this field to use private parties to promote public purposes. Qui tam actions come to mind, as well as many environmental laws which are enforced privately, with private environmental groups collecting damages. “Confused”, the public is compensated by the enforcement of the trademark/trade dress rights so they are not confused when they enter the marketplace to purchase something.
I’m not startled. I have no problem with using private persons to promote public purposes. As I noted in my original post, I’m concerned about compensation. In qui tam actions, such as those brought under the False Claims Act, most of the damage award (75-85%) goes back to the public, not the private party suing on behalf of the public.
On compensation, you state that the public’s compensation is no further confusion, but this is no compensation at all. There’s nothing to prevent a party from confusing the public again in the future other than the threat of money damages if caught and perhaps an injunction, which can be enforced only if the party gets caught. So the public’s compensation is an illusory promise of enforcement. Sounds like a poor deal, thus my thought that the reasoning behind the policy is dubious.
Law Student, thanks for your good question.
Confused and Federally Circuitous just don’t know much about trademark and trade dress law.
First CAPat has it right. Private Prosecution is the only venue available in the States to protect the public good on trade dress. Anyone interested in a cheap Rolex??? Certainly John Q. Public can’t affectively sue for trade dress issues.
Secondly, from my first hand experience, though having a design patent is presumed protection, it is not when you go to court. Everyone and their cousin will try to prove the patent as ‘invalid, void and unenforceable’. I still don’t understand how the defendant’s counsel can say a patent is void! The PTO tells you they aren’t patent police; they issued you a legitimate patent but can’t lift a finger to enforce your right to the patent. The Courts say the infringer doesn’t have to come up with clear and convincing evidence because they, the Fed. District courts in some of the out of the way Districts, don’t know the first thing about Patents, trade dress or Copyrights, since they might see one or two in their courts a decade. The District I’m dealing with thinks I have to PROVE my right to my Patent and the infringer just has to sit pat! By statue, the patentee is presumed to have a valid, enforceable patent by the act of the PTO’s issuance of said patent, but not according to this District’s actions.
Thirdly, so if the Chief Justice is knowledgeable in patent and trade dress matters, which way is he going to jump when Egyptian Goddess goes eventually before the Supreme Court?
I used this argument to defeat a Rule 12 motion to dismiss my client’s trade dress claims (which overlapped my client’s design patent claims) in AddVenture Products, Inc. v. Simply Smashing, Inc. (S.D. Cal. Case 3:07-cv-00499-BTM-AJB Document 20 Filed 09/20/2007). In the Order the Court stated:
Although Plaintiff does not explicitly state that its claimed dress is nonfunctional, that fact can be implied by the existence of the design patents. “A design patent protects the nonfunctional aspects of an ornamental design as shown in the patent.” Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995).
just wondering asked “is Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) relevant to this discussion?”
Nope. In that case the Court held that the expiration of a utility patent that made only pillow-shaped shredded wheat dedicated the machine, and the product it produced, to the public. Id. at 120-21. The design patent was not considered by the court because it had been held invalid for being anticipated. fn. 4.
Law student: “Why would anyone bother paying for a design patent for non-functional design (application and prosecution costs) when they could get longer last protection much cheaper???”
Because you have to have a real product on the market to get trade dress protection, whereas you can register design patents for things that you never have any intention of producing or selling. You can also register design patents for internal components of a product, things that are never seen by consumers. How much protection do these design patents give? Either not much or none, but that doesn’t stop people from filing them.
is Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) relevant to this discussion?
I wasn’t trying to be controversial or to “advocate” anything in my previous post, just explain the difference between the two different forms of I.P., and why both are potentially valuable for somewhat different reasons.
Unlike other types of intellectual property, trademarks have a public policy purpose of protecting the consumer from source confusion. The same is true of trade dress rights. Read any case in this area of the law and you will see the court recite this mantra. Private parties own the rights, and can enforce them and collect damages, but the purpose for the existence of this type of intellectual property right is to protect the public. If you doubt this, read the Wikipedia entry on trademarks (under the “Public Policy” heading) for a quick confirmation of this point. Patents and copyrights are constitutionally mandated for promoting the progress of science and the useful arts. The quid pro quo for granting authors/inventors an exclusive right of limited duration is to encourage public disclosure. On the other hand, trademarks/trade dress are not constitutionally based, but are rather legal creations. A right is granted to the owner of the mark. The quid pro quo to the public for this grant is not a disclosure of some sort, but rather the owner’s obligation to consistently use its marks for offering its goods/services and to enforce its rights to prevent other parties from using the same/similar marks to confuse the public. Thus, even though there is a public purpose for trademarks/trade dress, the rights are enforced by private parties (the rights owners) and those parties collect damages when they prevail. “Confused” seems startled by this basic tenet of trademark law, but it’s not unique to this field to use private parties to promote public purposes. Qui tam actions come to mind, as well as many environmental laws which are enforced privately, with private environmental groups collecting damages. “Confused”, the public is compensated by the enforcement of the trademark/trade dress rights so they are not confused when they enter the marketplace to purchase something.
“Federally Circuitous”, I wasn’t advocating, but rather suggesting that design patents are a good tool to give you a sufficient exclusive period to actually establish secondary meaning for your unique non-functional product configuration so that you can acquire trade dress rights. And Mr. Kulaga is correct — there is no law preventing one from using both design patents and trade dress law to protect their product configuration. So why would you think that “case law” is required? Courts only decide real cases and controversies presented to them (at least that’s the theory in our present world ruled by those in black robes), and since there is no law preventing one from asserting both design patent and trade dress protection for their product configuration, how could there be case law?
Mooney, you didn’t bother explaining why my comment was “baloney”. Presumably, you have never had to prove secondary meaning in a contested trade dress case or you wouldn’t have made such an ill-considered statement.
Federally Circuitous says “A person should hyave to pick their poison: either go with a design patent to protect the non-functional aspects, in which case your protection is shorter in duration but you don’t have to prove your entitlement to the right (the design patent does that for you), or go with trade dress, in which case you need to establish reputation etc. If there’s case law that authorizes doing what you propose – and there certainly have been screwier things allowed under case law – please give us the cite(s). Thanks.”
Design patents and trade dress are two different forms of IP. I am unaware of any statutory prohibition to using both.
I think you have it backwards. We don’t need permission from the courts. You seem to think that there should be an affirmative decision that authorizes someone to do something. That is not how it works.
The better question is do you have a cite to case law that prohibits using both?
CAPat, that bit about protecting the public makes no sense. As “confused” noted, the right under trade dress law belongs to a legal person, not to the public.
More to the point, what you advocate is to effectively extend the exclusivity under the design patent. I’ve never looked into this, so there may be case law that supports your position, but what you advocate seems to be entirely *contrary* to public policy. A person should hyave to pick their poison: either go with a design patent to protect the non-functional aspects, in which case your protection is shorter in duration but you don’t have to prove your entitlement to the right (the design patent does that for you), or go with trade dress, in which case you need to establish reputation etc. If there’s case law that authorizes doing what you propose – and there certainly have been screwier things allowed under case law – please give us the cite(s). Thanks.
“Here we go again. In Mooney’s paranoid world, everyone gets property rights just to harass competitors… yawn.”
‘Here we go again’, indeed, CaveMan. Did I not say “one answer” in my comment, CaveMan? Not “the only answer”. But “one answer”.
One honest answer.
Words are important, CaveMan. Or perhaps you need someone to draw you a picture?
Here we go again. In Mooney’s paranoid world, everyone gets property rights just to harass competitors… yawn.
As for huge piles of baloney, or worse, no one is more preeminent than you Mooney, or is it your cat talking again?
“Why would anyone bother paying for a design patent for non-functional design (application and prosecution costs) when they could get longer last protection much cheaper???”
One answer is because design patents are a convenient way to harass your competitor(s) in Federal Court.
“if you decide to pursue only trade dress protection, you have to establish the product in the marketplace and, over a substantial period of time, establish the unique ornamental design features of that product as a distinctive identifier of its source in the mind of the relevant public market. This is no easy trick.”
That last sentence may represent the hugest pile of baloney I’ve ever seen dropped here. Seriously, reel it in. My god.
@CAPat: There is a public policy interest in protecting the public from confusion regarding the source of goods and services.
This seems dubious. If the public is damaged by the confusion, then why do the damages awarded in a trade dress action accrue to the successful plaintiff rather than the public? Company A sues Company B for confusing the public in a trade dress action and wins. If there is a public policy interest in protecting the public, shouldn’t the public be awarded the damages rather that Company A? How has Company A been damaged when it is the public that has been confused? Now I’m confused.
Is the rationale that the public purchaser would have purchased the product from Company A but for Company B’s causing confusion? Again, this seems rather dubious. Is there any empirical support for this position?
I guess this is my ultimate question: If the public is damaged, then how are they compensated?
The two types of protection for non-functional designs, trade dress and design patents, are complementary, not contradictory. To answer Dr. Crouch, you must remember that trade dress, like trademarks, exists to serve the public, not the owner. There is a public policy interest in protecting the public from confusion regarding the source of goods and services. To arbitrarily deny trade dress protection for non-functional aesthetic product configurations because of a prior design patent would be to deny the public protection from source confusion because of a product owner’s decision to pursue design patent protection.
To answer law student, there is certainly an overlap between the protection a design patent offers to a patentee for ornamental product configuration features and the protection similarly afforded under trade dress law. However, there are also many differences. One can predictably obtain a design patent by filing an application and progressing through its prosecution until it finally issues. On the other hand, if you decide to pursue only trade dress protection, you have to establish the product in the marketplace and, over a substantial period of time, establish the unique ornamental design features of that product as a distinctive identifier of its source in the mind of the relevant public market. This is no easy trick. In litigation, you will have to prove that the product truly is entitled to trade dress protection by providing convincing evidence of its distinctiveness. A high hurdle indeed. And what if someone copies your product design before you establish this distinctiveness? You have no recourse if you have not first obtained design patent protection. The copying vitiates the distinctiveness necessary to establish trade dress status.
So, here’s the strategy. First, you obtain design patent protection for your unique product configuration. Then, during the term of the design patent, while you have exclusive rights to this unique configuration, you establish it in the market as a source identifier, so that trade dress protection piggybacks onto the design patent protection, and supplants it when the design patent expires.
By the way, I was patent counsel for TrafFix Devices during the referenced litigation, and managed the litigation through the 6th Circuit. We retained the future Chief Justice John Roberts to handle the Cert. petition and subsequent appeal before the Supreme Court. He was masterful, and the decision was 9-0.
Why would anyone bother paying for a design patent for non-functional design (application and prosecution costs) when they could get longer last protection much cheaper??? My old assumed guess was that the two forms of IP offered different scopes of protection, and that design patents were stronger. But, now I’m just confused. It seems like overlapping IP rights, with trade dress being a better deal (when it comes to non-functional design).
Am I right? We haven’t spent much time on design patents in my patent law class.
That’s hardly a mere “populist notion”.
This case does shine a spotlight on the awkward logic between design patents and trade dress though: how are exclusive rights to an ornamental design justified in promoting the Progress of Science and useful Arts?
DDC writes: “Curiously absent from this decision is any analysis of the populist notion that expiration of a patent transfers to the public a right to copy and use the patented elements.”
My first guess would be that that notion didn’t appear in the parties’ briefs.
Also, from what little I remember, I think the populist notion is more applicable to things like copyrights. (see, e.g., Dastar v. 20th Century Fox (U.S. 2003)). The patentee loses his right to exclude others when the patent expires, but patents can overlap with other patents and–apparently–with trade dress, and I’d think that whatever passes to the public when a patent expires would be quite limited.
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