Pattishall IP Blog

July 31, 2017

It’s Really Hard to Trademark Product Designs. But, You Can Do It.

Filed under: Design Patent, Trademark (General) — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:43 am

By Janet A. Marvel

The Trademark Office just refused to register another product design.  They do this often.  This time, it was the shape of a wind turbine:

The Office found that the design was “functional” because it was “essential to the use or purpose of the article” or “affect[ed] the cost or quality of the article.”  You can’t register or protect a product design if it is functional, and many, many designs get shot down for just that reason.

So what?  Well, often the way trademark protection for designs comes up in business is this: Company A develops a new product that surpasses its competition.  The company patents the product.  When the patent expires, Company A personnel are very unhappy that anyone who wants to copy the product can do just that.  Companies want to continue to protect their market, so they look for long term intellectual property protection.  That comes in the form of a trademark.

But it’s too late.  Company A did not think early enough about how to protect its design after its patent expired.  Its design is almost assuredly functional, in large part because courts don’t want companies to do an end-run around patent expiration.  But, there are ways of retaining market goodwill, explained below, after a patent expires.

The way that courts evaluate functionality is to look at the following factors:

  1. Whether there is a utility patent for the product.
  2. Whether the company advertised the utilitarian benefits of the product.
  3. Whether there are alternative designs to use for competitive products.

If Company A develops a new product, it would be unreasonable not to get a utility patent.  So the functionality door is probably closed right there.  Moreover, the company will want to advertise the utilitarian benefits of its product, thereby closing the window.

The third factor, availability of alternative designs, can present a difficult analysis.  In an early case, the Trademark Office protected the following as a mark, because competitors could make their products another way (i.e. use an alternative design).

Apparently, that did not sit well with the courts, who concluded that the design was not very distinctive.  In Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), the Supreme Court dealt with the idea of alternative designs, finding that alternative designs need not be considered at all if the alleged trademarked feature can be established as essential to the use or purpose of the product.

Put another way, if there is a patent, courts often give only lip service to the other factors.  The courts have further made it difficult to evaluate functionality based on alternative designs by stating that the existence of many alternative designs evidences that all of them are functional.

Company A, with its patent and advertising, has probably doomed its trademark protection.  What could it have done differently?

There is probably no way to stop competitors from adopting patented product benefits in copycat products after a company’s patent has expired.  However, a company can maintain consumer recognition.  If it is not cost prohibitive, the company can build in a distinctive feature.  With respect to the wind turbine, it might also place a logo or design on the product’s blades.  Perhaps the company can evidence that a feature of its product is not functional by obtaining a design patent.  Design patents are evidence that a feature is NOT functional.  The company can, and should, create “look for” advertising, to establish that the feature is known by the public as a symbol of source.  The following is an example:

In any event, while it is probably not possible to protect all elements of a utility patented product, companies who think early and often can nevertheless make it easier to distinguish themselves as the first, or the market leader, with some careful thought with respect to the design of the product.  Ask your lawyer for help.


These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 31, 2010

Fed. Circuit Reverses ITC: Over-Reliance on Verbal Description of Design Patent Claim Unduly Emphasizes Particular Features Instead of Overall Design

Filed under: Design Patent — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:49 pm

by Teresa Tambolas, Patent and Trademark Attorney

In Crocs Inc. v. International Trade Commission, 93 U.S.P.Q.2d 1777 (Fed. Cir. 2010), the Court of Appeals for the Federal Circuit reversed an International Trade Commission (“ITC”) finding of non-infringement that relied on a detailed verbal construction of a design patent claim.  Due to the ITC’s reliance on the verbal construction, the Court found the ITC placed undue emphasis on particular features of the design rather than the design as a whole.

Crocs Inc. (“Crocs”) owns design and utility patents covering footwear (see, e.g., figure at left).  In 2006, Crocs filed an ITC complaint against eleven companies, alleging unfair competition under 19 U.S.C. § 337 for importing infringing foam shoes.  Section 337 empowers the ITC to bar importation of products that infringe intellectual property rights. (more…)

August 17, 2009

Is That Bag Prada or Prado?: Protecting Fashion Industry Intellectual Property

Filed under: Copyright, Design Patent, Trade Dress — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:00 pm

by Jasmine Davis, Summer Associate

In April 2009, Canadian journalist and blogger Nathalie Atkinson posted a side-by-side comparison of two seemingly identical jackets made by two different designers.  See National Post Online, Copycats: A Tale of Two Jackets (as of Aug. 12, 2009).

From the images alone, it looked like another classic case of copying within the fashion industry.  But this story had a twist: Diane von Furstenberg, iconic fashion designer, head of the Council of Fashion Designers of America and driving force behind legislation to protect fashion industry intellectual property, appeared to have copied the work of a more obscure designer.

Atkinson had been looking through the latest issue of Teen Vogue and noticed a Diane von Furstenberg jacket – a jacket that looked very much like a jacket Atkinson already owned.  However, the jacket she owned was from the lesser-known Mercy’s Spring 2008 collection, not Diane von Furstenberg’s Spring 2009 collection.  Atkinson found this particularly newsworthy because Diane von Furstenberg was so protective of her own designs, having sued both Forever 21 and Target for copying.  Diane von Furstenberg also is one of the main proponents of the Design Piracy Prohibition Act, recently introduced in Congress for the third time, which would provide increased copyright protection for the fashion industry.  Ultimately, after Atkinson exposed the similarity between the two jackets, Diane von Furstenberg called Mercy to privately settle the matter.  Of course, not every designer is so fortunate as to have Diane von Furstenberg’s resources or her sense of moral duty.  So, how should designers protect their intellectual property? (more…)

August 6, 2009

Chicago Design Patent Attorney Explains How An Obviousness Challenge Can Trump a Motion for Preliminary Injunction in a Design Patent Case

Filed under: Design Patent — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:40 pm

by Teresa Tambolas, Patent and Trademark Attorney

On June 3, 2009, the Federal Circuit affirmed the U.S. District Court for the Southern District of Iowa’s denial of a preliminary injunction in a design patent infringement case, Titan Tire Corp. v. Case New Holland Inc., 90 USPQ2d 1918 (Fed. Cir. 2009).

The patent at issue claims a tractor tire design (depicted below).  Titan Tire Corp. (“Titan”) sued Case New Holland Inc. (“CNH”) for design patent infringement, alleging that CNH sold backhoes equipped with infringing tires.  Three months later, Titan moved for a preliminary injunction.  In denying the motion, the trial court found that Titan was likely to succeed in showing infringement and in withstanding a challenge to the design patent based on functionality grounds, but that the design patent likely would not survive a challenge to its validity on obviousness grounds. (more…)

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