Conflating Design Patent & Trademark Infringement – Can you just not?

By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

Converse v. ITC and Sketchers, New Balance, et al. (Fed. Cir. 2018) [ConverseITC]

As Professor Crouch already pointed out, the majority here held that “[i]n the context of trade-dress infringement, . . . accused products that are not substantially similar cannot infringe.” In doing so, the majority cited a perfectly good and persuasive authority, Versa Prods. Co. v. Bifold Co. (Mfg.), 50 F.3d 189, 202 (3d Cir. 1995). The discussion could have just stopped there.

But no. The majority, in a decision written by Judge Dyk, went on to add this bit of dicta:

We have applied an analogous requirement in the design-patent context, where infringement cannot be found unless an ordinary observer would perceive that the “two designs are substantially the same.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc) (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)).

Hold up. “An analogous requirement?” I’m honestly not sure what the majority thinks is analogous here, other than the use of the words “substantially” and “similar” in these two areas of law (which are already rife with faux amis).

So, just for the record: The tests for design patent and trademark infringement are different.

A design patent is infringed when the defendant’s goods are too visually similar to the claimed design. (Yes, this is true even under Gorham v. White, as I explained at p. 177 here.) A trademark is infringed when consumers are likely to be confused as to the source, sponsorship, or origin of goods or services. Thus, factors like labeling, marketing, etc. are (at least in theory) relevant to the question of product-design trade dress infringement. But they’re not relevant to the question of design patent infringement.

It’s true, as the majority points out, that visual similarity is one element of the various likelihood-of-confusion tests. To the extent that these judges are suggesting that they’d like to import the (very high) degree of visual similarity required for a finding of design patent infringement into the trade dress infringement test, that would be a wise and welcome addition to the law. But I’m not sure that’s what they’re trying to say.

Reading the whole paragraph in context (as reproduced below with the citations omitted), it seems like they might be trying to import the anticipation-infringement symmetry rule from patent law into trade dress law. Here is the entire paragraph for context:

The likelihood-of-confusion analysis for determining infringement turns in part on the similarity of the accused products to the asserted mark. We described earlier that, in the invalidity determination, marks that are not substantially similar cannot be considered. In the context of trade-dress infringement, we also hold that accused products that are not substantially similar cannot infringe. We have applied an analogous requirement in the design-patent context, where infringement cannot be found unless an ordinary observer would perceive that the “two designs are substantially the same.”

I’m not aware offhand of any trademark cases that stand for the proposition that there must be symmetry of this type (though I haven’t researched this precise issue and would be happy to hear from anyone who has seen such cases). In any case, this seems like the type of situation where asymmetry would actually be a good rule. We might want product-design trade dress claimants to establish more visual distance from other users in the field than we would allow them to capture in any eventual trade-dress scope.

In the end, I’m not sure what the majority was trying to do here. But this decision could do without the design patent dicta. At best, it’s harmless surplusage. At worst, it unhelpfully conflates two dissimilar infringement standards and could cause unintended mischief in the future. So, Federal Circuit, when it comes to conflating design patent and trade dress infringement – can you just not?

20 thoughts on “Conflating Design Patent & Trademark Infringement – Can you just not?

  1. 5

    On the one hand, me thinketh that the Professor prematurely soundeth the alarm. In other words, I disagree that the court here was conflating the two tests. It did explicitly say that “The likelihood-of-confusion analysis for determining infringement turns [only] ‘in part’ on the similarity of the accused products to the asserted mark.”

    On the other hand, I agree with Professor Burstein in not conflating the two forms of infringement. The Federal Circuit in Unette v. Unit Pack, Inc., 775 F2d 1026, 1029 (1986) seems to agree, albeit in dicta:

    “Concluding that a purchaser is unlikely to be confused by any similarity in a competitor’s product only serves to blur the otherwise clear line that exists between the test for infringement of a design patent and the “likelihood of confusion” test for infringement of a trademark.”

  2. 4

    Ugh. The snark is invading Patently-O . . .

  3. 3

    SarahB: To the extent that these judges are suggesting that they’d like to import the (very high) degree of visual similarity required for a finding of design patent infringement into the trade dress infringement test, that would be a wise and welcome addition to the law.

    This is an interesting assertion. I’m curious whether SB or other commenters have in mind any recent cases (a trend?) in which a dubious finding of trademark infringement involved marks that were (1) not visually similar; and (2) did not involve textual content (e.g., a slogan, title or “catch-phrase”). Obviously with respect to (1) I’m thinking of the commentariat, and not the judge or the plaintiff in the case. ;)

  4. 2

    Agreed, the two test are not and should not be the same.
    Trade dress infringement is for protection against confusing the source of origin of the goods.
    Design patent infringement should be determined by whether or not the allegedly infringing product is covered by the scope of the design patent claim, like a real patent. The claim is the solid line drawing of the design patent minus any limiting descriptive terms. [But instead we let lay juries to determine that “an ordinary observer would perceive that the “two designs [one a drawing and the other physical] are substantially the same.””] But in any case design infringement has nothing to do with customer confusion over the source of origin of two sets of goods, or how well known and recognizable the product of one source is.

    1. 2.1

      I cannot agree that the two have nothing to do with each other.

      It should be abundantly clear that a case of design patent infringement may very well directly lead to a confusion as to a source of a good.

      I can easily see some no-name (or even similarly named) soda provider, engaged in design patent infringement of a swirled Coke-Cola bottle, causing source confusion by the mere act of design patent infringement.

      The “better” notion here would be to recognize that Design Patents in total should not be grafted into a system meant to protect utility.

      Such is, was, and remains an exceedingly p00r fit.

      1. 2.1.1

        They two tests may both wind up with a finding of infringement, but a proper legal analysis requires each separate burden of proof to be met.

        1. 2.1.1.1

          The point being, SVG, is that the burden of proofs (or perhaps more correctly, the elements in the burden of proofs) may well be NOT separate.

          1. 2.1.1.1.1

            yes but, for trade dress infringement the proof must be that the consumer is likely to be confused as to the source of the goods, and for design patent the consumer need only be confused into thinking that the accused device is the same as the patented device, even if the consumer is not confused into thinking that the accused device comes from a source other than the patentee.

            The consumer can say, “this knock-off sure looks like the original, but I know it is not.” That can prove design patent infringement but not trade dress infringement.

            1. 2.1.1.1.1.1

              SVG: for design patent the consumer need only be confused into thinking that the accused device is the same as the patented device

              Cite for this? I think the term “confusion” is not correct here.

            2. 2.1.1.1.1.2

              … not even getting to Malcolm’s point, your general aim is off, SVG.

              No one is saying “identical,” SVG — and there is a clear difference between that and the comment I took exception to (stating NO intersection).

              Do you recognize this?

  5. 1

    Considering it is Dyk who wrote the opinion…and his policy leanings (per his history of weakening practical intellectual property law enforcement via judicial interpretation)….color me not surprised by his deliberate attempts to conflate these issues or add dicta which confuse the straightforward application of using precedent to decide the instant issue before the Court.

    The more confusing cases he can spew….the more likely that they won’t be reversed by the CAFC en banc or SCOTUS (just due to the very few cases they can address)…and the easier it will be for infringers to later cite bad case decisions like this as justification for defenses to charges brought against them in the future.

    O’Malley’s discussion in dissent is really good about all the various problems Dyk is introducing here.

    1. 1.1

      It’s a good thing that Judge Dyk is just a normal judge and not on a dedicated patent court in which case one would expect better.

      Oh wait…

    2. 1.2

      Generally speaking, “confusion” in the case law favors IP owners. Why is that? Because there is generally no confusion about who owns the IP. The property owner always has a leg up initially (so to speak).

      1. 1.2.1

        Malcolm,

        As to “who owns” has NO meaningful impact to the types of confusion and uncertainty that is the point of the comment.

        In other words, you are flat out wrong as to the “favors.”

        There is little surprise to this feeling of yours, given your long-outstanding anim0sity towards patents (and patent holders) — as has long been noted with the cognitive dissonance that so greatly affects you.

        1. 1.2.1.1

          As to “who owns” has NO meaningful impact to the types of confusion

          Never suggested otherwise.

          But my point stands. “Confusion” in IP law generally benefits the owners. That’s demonstrable simply by pointing out (1) the CAFC’s undeniable efforts to create confusion when there need not be any and (2) the current PTO Director’s efforts to create additional confusion and (3) the maximalists cheering on (1) and (2).

          Sure, you and your cohorts would prefer a clear and absolute rule stating that “anything is eligible as long as you call it a method or thing” over the current confusion but you’re never, ever going to get that (and you know it — but you’d rather kick up dust and pretend otherwise because … confusion benefits you).

          This isn’t difficult or controversial stuff, Billy.

          1. 1.2.1.1.1

            Never suggested otherwise.

            Your post was a direct statement otherwise.

            Your “point” is non-sense to the point to which you were replying.

            Here’s a hint: If you want to make an additional point, make it clear that you are doing so. As here though, you responded to a statement and provided a counter TO that statement.

            As to your “separate” point, “.”Confusion”.” does NOT generally benefit owners.

            What you dissemblingly call “efforts to create confusion” are nothing more than your own anti-patent feelings towards ANY thing that may indicate a strong patent system or that may benefit a patent holder.

            As I noted – this is nothing more than your extreme cognitive dissonance.

            As to what “me and my cohorts would prefer,” you remain c1ue1ess as to how innovation is best protected — as is evident by your (usual) descent into mindless ad hominem.

            1. 1.2.1.1.1.1

              nothing more than your own anti-patent feelings

              Yawn. Keep mewling, Billy.

              1. 1.2.1.1.1.1.1

                How Accuse Others of you Malcolm.

    3. 1.3

      color me not surprised by his deliberate attempts to conflate these issues or add dicta which confuse the straightforward application of using precedent to decide the instant issue before the Court

      Thank goodness none of the other members of the CAFC ever engage in this behavior. Can you imagine if the Supreme Court handed down some straightforward decisions regarding, say, the eligibility of carrying out old logic on “new” information content using a computer and then the CAFC bent over backwards spewing out nonsensical dicta about fake structures? Can you imagine?

      LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

      1. 1.3.1

        Can you imagine if the Supreme Court handed down some straightforward decisions regarding, say, the eligibility of carrying out old logic on “new” information content using a computer and then the CAFC bent over backwards spewing out nonsensical dicta about fake structures?

        1) the Supreme Court has NEVER handed down “some straightforward decisions regarding, say the eligibility… [“]logic[“] as you incorrectly assert.

        2) your “penchant” for blaming the CAFC vis a vis any “fake structures” happened LONG BEFORE your attempted misrepresentations of the scrivining of the Supreme Court.

        You cannot even get your own “logic” correct.

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