By Daniel A. Scola, Jr. and Kellyanne Merkel
Reconciliation between design patent and trade dress protection for product packaging and design is coming to the forefront of intellectual property considerations for articles of manufacture. In the midst of criticism about the competing interests of the limited patent monopoly and the indefinite duration of trade dress protection, several courts have rendered opinions attesting to the ability, and the necessity, for both standards to exist.
These opinions have emphasized that patentability and trade dress protection of industrial product designs comprise nonintersecting subsets of the intellectual property realm and that, as federally mandated policies, neither can outweigh the other. When confronted with apparently conflicting statutes that are capable of co-existence, it becomes the courts’ duty, absent clearly expressed congressional intention to the contrary, to regard each as effective.1
Congressional mandates have arisen to protect ornamental features of an industrial design. Such mandates, however, have created a schism among courts and intellectual property advocates alike.
On the one hand, patent protection for nonfunctional features of an ornamental design is derived from the U.S. Constitution.2 The provisions of the Patent Act have evolved with such sophistication that rules to determine when infringement has occurred are almost mechanically applied. In return for a patent monopoly, the applicant must make an “adequate and full” disclosure of an invention so that, upon the expiration of the patent term, “the knowledge of the invention enures to the people, who are thus enabled without restriction to practice it and profit by its use.”3
On the other hand, the relatively recent expansion of federally mandated trademark protection under the Lanham Act to include product packaging and design appears to have been derived from state unfair-competition laws. Pursuant to the Lanham Act, a person has a cause of action against anyone who “on or in connection with any goods…uses in commerce any word, term, name, symbol, or device, or any combination thereof” in a manner which is likely to cause confusion as to the origin of the product.4 Unlike state law on unfair competition, however, federal trademark protection cannot be pre-empted by patent law.5
How do designers, manufacturers, attorneys and others involved in the intricate protection pattern deal with the seemingly apparent conflict? They should know the requirements for determining design patent and trade dress infringement, and then design the product and draft the accompanying design patent application accordingly. The requisite analysis that supports a finding of design patent infringement can be conducted succinctly and decisively in comportment with that for a finding of trade dress infringement, bridging the gap between the inherent functionality of patented designs and the source-identifying features of such designs.
Design patent infringement
Under U.S. patent law, a design patent is a grant by the federal government of exclusive rights in a novel, unobvious and ornamental design for an article of manufacture. A design patent confers the right to exclude others from making, using and selling designs covered under the patent so as to promote progress in the “decorative arts.”6 With few exceptions, the provisions of the patent statute for inventions apply to designs as well.7
Infringement of a design patent is defined by statute as the unauthorized manufacture or sale of the patented design.8 Patent infringement analysis always involves two steps.9
The first step requires proper construction of the asserted claims without regard for the accused methods or products. Design patents protect the nonfunctional aspects of an ornamental design, and the claim is limited to formal terms to the ornamental design for the article as shown and described.10 Thus, as applied to design patents, such claim interpretation must be adapted to the practice that a patented design is claimed as shown in its drawing.11
The second step requires a determination as to whether the accused methods or products infringe on the asserted claims as properly construed. The standard for infringement is determined by the potential for deception of an ordinary observer: “If in the eye of an ordinary observer giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”12
It is not enough that the allegedly infringing design have a substantially similar ornamental appearance to the patented design. The offending article also must appropriate the point of novelty of the patented device that distinguishes it from the prior art.13 Given that the overall resemblance is substantially the same, the basis for granting the design patent-i.e., the novel elements-must appear in the accused device. Therefore, for a claim of design patent infringement, the question is whether the design of the accused device infringes the design patent, not whether the design of the accused device infringes the patentee’s commercial embodiment of the claimed design.14
The test for infringement must also include consideration of the court-created doctrine of equivalents. The doctrine of equivalents is an equitable doctrine that permits the finding of infringement even when every last detail of the claim is not employed in the accused device.
The two-part test for design patent infringement subsumes the test under the doctrine of equivalents: “Is the adornment in the [allegedly infringing] design used instrumentally to produce an appearance, a distinct device, or does it work the same result in the same way, and is it, therefore, a colorable evasion of the prior patent, amounting at most to a mere equivalent?”15
A patentee cannot evoke the doctrine to evade the scrutiny of the point of novelty, because to do so would eviscerate the purpose of the point-of-novelty approach, which is to “focus on those aspects of a design which render the design different from prior art designs.”16
Trade dress infringement
Trade dress consists of the total image of a product or service, including, without limitation, such product features as design, size, shape, color, packaging, labels, color combination and graphics.17 It is not an individual element that determines a product’s trade dress, but the overall impression created by the product, package and advertising.18
Furthermore, as with a word asserted to be a trademark, the elements making up the alleged trade dress must be used in such a manner as to denote the source of the product.19 When the only impact of a product feature is decorative and aesthetic, and not source-identifying, the product feature cannot be given exclusive rights under trade dress law.20
The Lanham Act is a federally created consumer protection statute that seeks to preserve the identification of product source or origin for the benefit of consumers. Sec. 43(a) of the Lanham Act governs claims for trade dress infringement and provides:
“Any person who, on or in connection with any goods…or any container for goods, uses in commerce any word, term, name symbol, or device, or any combination thereof, of any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which…is likely to cause confusion…as to the origin, sponsorship, or approval of his or her goods…by another person…shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.”21
An identifying configuration is treated as protectable trade dress under the Lanham Act if it is nonfunctional and either possesses inherent distinctiveness or has acquired distinctiveness through secondary meaning.22 Secondary meaning is acquired when, in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself.
If a producer in a particular market manufactures the product and the product design has received the benefit of the patent monopoly, evidence showing that the association between the established trade dress and the manufacturer is caused by something other than the patent is required to signify secondary meaning in a trade dress infringement case.23 There is no per se prohibition against trade dress protection of a feature disclosed in a design patent since the expiration of the patent term does not depend on the trade dress protectability of the product in which the feature is embodied.24A feature of a product disclosed in an expired patent that serves a functional purpose, however, is never entitled to trade dress protection.25
Likelihood of confusion
In order to prevail on a claim of trade dress infringement, a plaintiff must not only show that its trade dress is either inherently distinctive or has acquired secondary meaning, but also that the similarity of the defendant’s trade dress to that of the plaintiff causes a likelihood of consumer confusion as to the source thereof. Courts use various factors to determine whether a likelihood of confusion exists between the trade dress of two products.
Typical factors include the similarity of trade dresses; the area and manner of concurrent use; the degree of care likely to be used by consumers; the strength of the plaintiff’s trade dress; actual confusion; and the intent of the defendant to pass off its product as that of plaintiff.26 No single factor is dispositive, and the weight given to each varies from case to case.27
Infringement disputes are anticipated when a product’s primary functional features are important visual features as well. In the field of industrial design, these disputes are endemic, and there is little consistency, court to court or decision to decision, regarding the appropriate scope of legal protection. Both patented utilitarian function and distinctive trade dress may be captured in the same features of a well-designed article.28
A proposed safeguard against the impermissible extension of a patent monopoly is the functionality doctrine, which provides that the configuration of an article cannot receive trade dress protection if its purpose is to contribute functional advantages to the article. Thus, the defendant can prevail in an action for trade dress infringement by demonstrating that the plaintiff is seeking to protect functional elements in its trade dress.
A feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. If a product configuration meets either part of this definition, it cannot be protected as trade dress.29 Factors that affect the functionality analysis include the existence of a utility patent disclosing the utilitarian advantages of the design; the existence of advertisements and promotions that tout the functional and utilitarian advantages of the products; the existence of other alternative designs; and the derivation of the design from a comparatively simple, inexpensive or superior method of manufacturing the article.30
Courts continue to find that a product’s various qualities “can be protected simultaneously, or successively, by more than one statutory means for protection of intellectual property.”31 For example, the U.S. District Court for the Eastern District of Virginia recently addressed a case in which the plaintiff sought damages for the infringement of a design patent for a miter saw and trade dress infringement of the same article.
The plaintiffs carefully crafted the appearance of their product in association with an elaborate marketing campaign to ensure that the targeted consumer would associate the look of the plaintiff’s product with the requisite level of quality. The miter saw design received the benefit of design patent protection and, according to plaintiffs, also constituted protectable trade dress. The court, in turn, addressed the issues of design patent infringement and trademark infringement separately, according appropriate deference to the congressionally created statutory schemes that have arisen to protect industrial design.32
Novel and ornamental
In determining whether infringement of the design patent had occurred, the court held that infringement is found if the plaintiff’s device has an overall visual impression that is novel and ornamental in a way that distinguishes it from the prior art, and the accused device imitates those ornamental features so as to create a substantially similar overall visual impression that would deceive an ordinary person giving such attention as an ordinary purchaser gives.
In a separate analysis, the court examined the distinctiveness of the plaintiff’s product and whether such distinctiveness was inherent or had been acquired through secondary meaning. In concluding that secondary meaning did indeed exist, the court cited several factors that contribute to secondary meaning. These factors include the length and exclusivity of the trade dress; the amount of advertising expenditures promoting the product; the degree of unsolicited media coverage for the product; sales volume and success; and the extent to which the product’s appearance has achieved identity in the minds of the purchasing public.
In this case, the fact that the accused intentionally and directly copied a color scheme created a presumption of secondary meaning that independently enabled the plaintiff to proceed with Lanham Act claims and a traditional likelihood-of-confusion evaluation.33
Thus, in order to preserve the protectable elements of an article, a manufacturer should take care in designing it to ensure that functional elements and ornamental features remain sufficiently distinct so as to retain the benefits of separate modes of intellectual property protection. The increasingly precise interpretation of design patent and trade dress infringement in cases involving industrial products suggests that the statutory schemes behind each complement one another, making it easier to anticipate which designs will fall within the respective infringement standards.
(1) Thomas & Betts Corp. v. Panduit Corp., 138 F. 3d 277, 285 (7th Cir. 1998).
(2) U.S. Const., art. 1, § 8, cl. 8. provides, “The Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive Right to their respective writings and discoveries.”
(3) Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974) (citing U.S. v. Dubilier Condenser Corp., 289 U.S. 178, 187 (1933)).
(4) 15 U.S.C. 1125(a) (1998).
(5) Thomas & Betts, 138 F. 3d at 285.
(6) Avia Group Int’l Inc. v. L.A. Gear Calif. Inc., 853 F. 2d 1557, 1563 (Fed. Cir. 1993).
(7) 35 U.S.C. 171 (1998).
(8) 35 U.S.C. 289 (1998).
(9) Markman v. Westview Instruments Inc., 517 U.S. 370 (1996).
(10) 37 C.F.R. 1.153(a) (1998).
(11) Goodyear Tire & Rubber Co. Inc. v. Hercules Tire & Rubber Co. Inc., 48 U.S.P.Q. 2d 1767 (1998).
(12) Gorham v. White, 81 U.S. (14 Wall) 511, 528 (1871).
(13) Litton Systems Inc. v. Whirlpool Corp., 728 F. 2d 1423 (Fed. Cir. 1984).
(14) DCNL Inc. V. Almar Sales Co., 47 U.S.P.Q. 2d 1406, 1410 (N.D.Ca. 1997).
(15) Gorham v. White, 81 U.S. at 530.
(16) Winner Int’l Corp. v. Wolo Mfg. Co., 905 F. 2d 375, 376 (Fed. Cir. 1990).
(17) Vaughn Mfg. Co. v. Brikam Int’l Inc., 814 F. 2d 346 (7th Cir 1987).
(18) Ye Olde Tavern Cheese Prods. Inc. v. Planters Peanuts Div., 261 F. Supp. 200 (N.D. Ill. 1966).
(19) Libman v. Vining Indus., 69 F. 3d 1360 (7th Cir. 1995).
(20) In re File, 48 U.S.P.Q. 2d 1363 (TTAB 1998); Knitwaves Inc. v. Lollytogs Inc., 71 F. 3d 996 (2d Cir. 1995).
(21) 15 U.S.C. 1125(a).
(22) 15 U.S.C. 1051 (1998); Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763 (1992).
(23) Thomas & Betts, 138 F. 3d at 294.
(24) 1 J. Thomas McCarthy, McCarthy on Trademarks §6.12 (4th ed. 1996).
(25) Thomas & Betts, 138 F. 3d at 284.
(26) Dorr-Oliver Inc. v. Fluid-Quipp Inc., 94 F. 3d 376, 382 (7th Cir. 1996).
(27) Meridian Mut. Ins. Co. v. Meridian Ins. Group Inc., 128 F. 3d 1111, 1115 (7th Cir. 1997).
(28) Michael E. Peters, “When Patent and Trademark Law Hit the Fan: Potential Effects of Vornado Air Circulation Systems Inc. v. Duracraft Corp. on Legal Protection for Industrial Design,” 15 Temp. Envtl. L. & Tech. J. 123, 123-125 (Spring 1996).
(29) Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
(30) In re Morton Norwich Prods. Inc., 671 F. 2d 1332, 1334 (CCPA 1982).
(31) Kohler Co. v. Moen Inc., 12 F. 3d 632, 638 (7th Cir. 1993).
(32) Black & Decker v. Pro-Tech Power Inc., Nos. 98-124-A, 97-1123-A, 1998 U.S. Dist Lexis 18252 (E.D. Va. Nov. 16, 1998).
(33) Id.
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