Anti-TrafFix: Design Patent Provides Evidence of Non-Functionality in Trade Dress Claim

PatentLawPic302In 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).


Re-Litigating Gorham v. White: Design Patents at the Supreme Court

ScreenShot016Saint-Gobain Calmer, Inc. (now MeadWestvaco Calmer) v. Arminak & Associates, Inc. (on petition for certiorari 2008)

In 2007, the Federal Circuit dealt a serious blow to design patent protection by determining that an intermediate corporate purchaser is the “ordinary observer” for infringement analysis.  A professional corporate purchaser is presumably more likely to see differences between the patented design and an accused infringing device — thus making infringement more difficult to prove.

Calmer’s design patent, for instance, covers a sprayer shroud that is then combined with the trigger mechanism, bottle, etc.; filled with some liquid; and shipped to Wal-Mart for retail sale. The Federal Circuit’s holding looks to the typical buyer at the point where the allegedly infringing shroud is first sold to determine whether that individual would believe that “the patented design as a whole is substantially the same as the accused design.”   

Calmer has now petitioned the Supreme Court asking two questions:

  1. Whether the [Federal Circuit’s] use of expert viewpoints to determine design patent infringement is in direct conflict with this Court’s decision in Gorham Co. v. White, 81 U.S. 511, 529 (1871)?
  2. Whether the [Federal Circuit’s] test for design patent infringement of a component product, which considers deceptive similarities only as to the first purchaser of any product including the patented design, directly conflicts with its own precedent and with this Court’s “ordinary observer” test mandated by Gorham Co. v. White, 81 U.S. 511, 529 (1871), by excluding not only unsophisticated purchasers but also later purchasers of products including the patented design as a component?

As I write in an upcoming paper, the justification for design patent protections is more akin to traditional trademark policy than utility patent policy. With that in mind, it makes some sense allow design patents to operate at the retail level.


Oakley’s Sunglasses and Design Patents

Patent.Law070Oakley recently sued Fox, Marvel, and others for infringement of its design sunglasses design patent No. D470,166. According to the complaint, the movie industry has knocked-off Oakley’s design to promote Silver Surfer DVDs.

Oakley owns over 100 design patents on its various sunglass designs. Since 2004, the fashion trend-setter has filed over 30 complaints against accused infringers.

Apparently, Mardsen wore genuine Oakley in his role as Cyclops. What damages if they had been fakes?

Patently-O Bits and Bytes No. 14

  • Design Patent Law: The House Subcommittee on IP held hearings on amendments to the design patent laws. The two primary specific issues on the table are (1) whether to eliminate design patents covering replacement automobile parts and (2) whether to extend IP protection to fashion designs. [LINK].  The IP group will hold PTO oversight hearings again next week.  
  • Replacement Parts: IPO recently voted to oppose any legislative exemption for particular products or technologies from the IP laws:  “In particular, IPO opposes legislation that would exempt replacement automobile parts from infringing U.S. design patents.”
  • LexisNexis Patent Center: lexisnexis is now in the blog world with their “Patent Center.”
  • Missing Dates: The PTO revived Aristocrat’s national stage application even though filed a day late.  During litigation, however, the district court found the revival an improper extension of the law. [Link] The patentee appealed to the CAFC with the question of “Whether a patent application abandoned for failure to comply with deadlines set forth in 35 U.S.C. §§ 371(d) and 133 may be revived based on mere ‘unintentional’ delay where those provisions provide for revival only for “unavoidable” delay.” Now, IGT responds.
  • New Administrative Judge: According to Hal Wegner, the PTO has appointed Professor Lorelei Ritchie de Larena to the position of administrative judge on the TTAB BPAI. Judge Ritchie has been working in tech-transfer for several years while teaching at the same time. As the rate of appeals continues to rise, the PTO will need to continue to hire high quality judges. At the same time, these judges will begin to feel an even stronger pull to jump ship to law firms looking for inside experience and connections. [Related note: can someone send me a list of BPAI Judges?]

Design Patents: Controlling Pendency

Over the past decade, the PTO has taken control of pendency problems in the design patent area. In the early 1990’s design patents averaged over 30 months in prosecution. By 2001, that average pendency had fallen to less than 15 months.


The low pendency can allow design patents to serve as a preliminary substitute for future trade dress protection.  A design patent application offers immediate ‘patent pending’ status and would, in all likelihood, issue before the product would garner the secondary meaning sufficient for trade dress protection.  This is the approach taken by Apple with its iPod design patent applications. One of its issued iPod design patents (US D549,237 filed Aug 24 2005) appears identical to the company’s trademark design application (Serial No. 78925932 filed July 2006). The trademark case is still pending because Apple must make the required showing of secondary meaning.

The major problem with this ‘patent then trademark’ approach is the narrow scope generally offered by design patents during litigation. This may change as the Federal Circuit is set to reconsider its design patent infringement jurisprudence in the upcoming Egyptian Goddess en banc case.

There are major differences between the design patent examining corps and the utility patent examining corps — most notably, design patent examiners appear to stay-put. The 49 primary examiners associated with patents issued on December 4, 2007, have, on average, examined 3200+ design patents as primary examiners over an average of 12.5 years. (Medians of 3047 and 11.5 years respectively). Approximately 2/3 of design patents are prosecuted by one of the primary examiners without any assistance from an assistant examiner. For the same patents, assistant examiners have an average history of 400 examined design patents over a period of two years. (Median of 200 and 18 months respectively).

 * The graph above is based on a recently compiled dataset of the entire set of 300,000+ design patents issued between December, 1976 and December, 2007.

Counting Design Patents


In 2007, Samsung Electronics received over 550 design patents — the most ever issued to a single company in one year.  Sony holds the most design patents, and is followed closely by Nike. The following table shows the company awarded the most design patents each year:

ScreenShot004Louis Zarfas is the primary examiner associated with the most issued design patents. Mr. Zarfas has allowed over 16,000 design patents since his first (as a primary) in 1978. Over 1,000 of those design patents relate to shoe designs claimed by companies such as Nike, Reebok, AVIA, Asics, LA Gear, Rockport, Sketchers, Wolverine, Keds, Louis Vuitton, Timberland, Berluti, and Kangaroos.

Recently issued design patents (issued 2000–2007) were, on average, pending for 16.2 months. Companies with at least 100 design patents during that period had about one month less pendency than those with fewer patents. Nike has prosecution down to a science — and averages less than 9 months pendency (filing to issuance). Toward the other end of the pendency chart, Apple averages over 21 months.

During the 2000–2007 period, approximately 75% of examinations were handled by primary examiners without any assistance from an assistant examiner. As with utility patents, the pendency for cases without an assistant is significantly less than for those with an assistant. Here, the difference is about two months.

 * These numbers are based on a recently compiled dataset of 300,000+ design patents issued since 1976 on file with DDC.

Why Design Patents Need Not Satisfy 35 U.S.C. § 101?

PatentLawPic11935 U.S.C. § 171 is a unifying provision – briefly stating that “except as otherwise provided,” the entire Patent Act applies equally to both utility patents and design patents.  Thus, design patents must fit within the requirements of §§120 and 112.[1] On the other hand, § 122 expressly exempts design patents from the publication requirements.

The enigma is § 101 and its definition of utility. Section 101 includes no explicit exception for designs. But, even a novice observer would question how a non-functional ornamental design can at the same time be “useful?”

The Supreme Court appears to have answered this query in Footnote 5 of its 2001 opinion in J.E.M. Ag Supply v. Pioneer Hi-Bred.[2] In that case, the Court held once again that the patentable subject matters scope of 35 U.S.C. § 101 is “extremely broad” and that the scope for utility patents certainly includes plants despite the existence of § 161 “plant patents.” 

In Footnote 5, the Court briefly compares § 101 utility patents with § 161 plant patents and § 171 design patents. “Patents issued under § 161 are referred to as ‘plant patents,’ which are distinguished from § 101 utility patents and § 171 design patents.”[3] 

The implication from the Court’s comparison is that design patents are not subject to the requirements of § 101 (despite the lack of any statutory exceptions). Thus, a patented design must be “new, original[, ] ornamental [and] an article of manufacture.” However, the design need not be useful.

[1] In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998).

[2] J.E.M. Ag Supply v. Pioneer Hi-Bred Int’l., 534 U.S. 124 (2001)

[3] Id. at fn. 5.


Sidenote: The Apple iPod design patent (US D549,237 filed Aug 24 2005) appears to be identical to the company’s trademark design application (Serial No. 78925932 filed July 2006). A continuation patent has also issued which also claims the screen shape. (US D542,808) Interestingly, in the trademark case (response to a rejection), Apple admitted that the “rectangular video screen design is functional.”

Ford Design Patents Block Import of Repair Parts – Infringers Call for Patent Reform

Patent.Law031In re Certain Automotive Parts, 2007 WL 2021234 (ITC 2007)

Ford Motor Company owns dozens of design patents covering various aspects of its vehicle designs. D496,890, for example, covers a vehicle grille; D493,552 covers a vehicle head lamp; D503,135 covers a bumper lower valance; and D496,615 covers a side view mirror. In 2005, Ford initiated a Section 337 action before the International Trade Commission (ITC) asking for an exclusion order against various auto parts importers whose imports violated the Ford design patents. For the most part, the accused parts are used to repair post-crash vehicles.

An administrative law judge (ALJ) found that the majority of the asserted patents were valid and infringed, although some patents were invalid.  The ITC then issued an order to exclude importation of the unlicensed repair parts.

Repair doctrine: Over the years, courts have created a non-statutory doctrine of permissible repair. Under the doctrine, post-sale repairs made to a patented object are not considered actionable. On the other hand, reconstruction of the patented object will be actionable as an unlicensed “making” of the invention.

Although interesting, the repair doctrine does not apply here. The accused infringers are not repairing anything — rather, they are importing replacement parts that on their own are infringing.

Calls for Patent Reform: After losing on the merits, the would-be importers have jumped on the patent reform bandwagon asking for a “repair parts” exception to the design patent laws. [Quality Parts Coalition]. Car manufacturers would like to go the other way — adding vehicle hull design protection to the Copyright Act. [See Boat Hull statute]

Appeal: The case, captioned as Ford v. ITC, 07–1357, is now on appeal at the CAFC — A decision is expected summer 2008.  The critical question for Ford — will the patents pass the CAFC’s dreaded points-of-novelty test?

Patently-O Tidbits

  • Lemley (Stanford) & Myhrvold (IntVen) have released a short article on “how to make a patent market.” They suggest that an information gap is one problem creating friction in licensing negations. The solution — require publication of patent assignments and license terms. [LINK]
  • Over the past few weeks, we have directed some focus on the protection of industrial designs. Why? (1) the law surrounding protection of industrial designs is in disarray; (2) I expect that protection of industrial designs will become more important as utility patent protection becomes more difficult and more costly; and (3) if well protected, industrial designs & fashion rights may well be worth more than the value of all non-pharmaceutical utility patents.
  • New Patent Law Job Postings:

Design Patents: Corporate Parts Buyer as Ordinary Observer

PatentLawPic036Arminak v. Saint-Gobain Calmer (Fed. Cir. 2007).

In yet another serious blow to design patent protection the Federal Circuit has affirmed a lower court ruling that Arminak’s spray nozzle design is not infringed by Calmer.

Design patent infringement is defined both in 35 U.S.C. 271 and 289.  According to Section 289, a design patent is infringed by unauthorized commercial manufacture, use, or sale of the design or a “colorable imitation.”

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties. 35 U.S.C. 289.

Infringement: Overshadowing the statutory guidelines is the CAFC’s judicially created infringement jurisprudence. According to the CAFC, infringement requires satisfaction of two distinct tests: First, in the eyes of an “ordinary observer,” the accused design as a whole must be deceivingly similar to the patented design. Second, the accused design must appropriate one or more points-of-novelty that distinguish the design from the prior art.

Ordinary Observer: Like the PHOSITA in utility patent cases, the ordinary observer is a mythical being. However, instead of being ‘skilled in the art,’ the ordinary observer is aware of the patented design, but is not an expert in the art.

Arminak manufactures and sells spray nozzles. However, Arminak does not sell on a retail level.  Rather, the nozzles are purchased by other manufacturers who join them with bottles full of product.

The corporate nozzle buyers can distinguish between Arminak & Calmer nozzles without much trouble. Once assembled, retail customers have difficulty in distinguishing between the nozzles once assembled.  The case then turns on whether the ordinary observer is defined as the corporate buyer of the nozzle or a retail customer of the fully assembled product.

Sitting by designation, Judge Holderman determined that the ordinary observer should be defined by the patentee’s corporate structure. Because Arminak’s products pass through a middle-man for further processing, it cannot count the downstream retail purchasers as ordinary observers who “buy and use” the sprayer. Rather, the ordinary observer is the corporate nozzle buyer.  (Thus, eventual customer confusion regarding the final product makes no difference).

It was undisputed that a corporate buyer would not be deceived by overall similarities between the accused and patented designs — thus no infringement.

Point of Novelty: The panel also found that the accused design did not appropriate any “points of novelty” of the patented invention. In doing so, the court found that a side-by-side detailed comparison between the accused product and the patent design drawings was appropriate.

To establish infringement in a design patent case, the district court is required to compare the patented design with the accused design. Without comparing the patented design with the accused design, there was no way for the district court to determine whether an ordinary observer would find the accused design deceptively similar and whether the accused design appropriated points of novelty.

For utility patent experts, this type of analysis is second nature. However, for over 100 years prior to founding the CAFC, the rule has been that design patent infringement jurisprudence does not allow for such “side by side” examination. See Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) (rejecting a side-by-side comparison as leading to an ‘expert’ result rather than that of an ‘ordinary observer’).

Design Patent Litigation

PatentLawPic029In the past twenty years, the US Patent & Trademark Office has issued just over 268,000 design patents. During that time, almost exactly one percent (1%) of those issued design patents have been litigated to some degree. (i.e., at least a complaint was filed asserting infringement of the patent). The most commonly litigated are design patents covering ornamental features of shoes (7% of litigated patents) and lamps (5% of litigated patents). Other commonly litigated products include furniture (chairs & tables), eyeglasses, and golf equipment.

35 USC 171 outlines the scope of design patents as “any new, original, and ornamental design for an article of manufacture.”  The MPEP narrows this definition to only include “visual characteristics” of a design – although a court could force the PTO to include other sensory characteristics.  I suspect a product with ornamental textures – even if not visually distinct — could be protected (especially if the product was designed for blind individuals).  A further (and improbable) stretch would be to define design to include associated music, scent, and taste.