Many consumers today, plagued by embarrassing typographical errors when using their touch-screen smartphones, own a second smartphone with a keyboard, such as a BlackBerry phone, for their professional correspondence. To remedy the need for carrying two devices, Typo Products LLC, a start-up tech company co-founded by television personality Ryan Seacrest, debuted a product in early January 2014 at the International Consumer Electronics Show. Typo created a slide-on Bluetooth, “qwerty” keyboard accessory for the Apple iPhone 5 and 5S. Typo’s initial pre-order inventory has sold out and a total of 4,000 units have shipped as of February 5, 2014.
Hearing news of the release of Typo’s keyboard case, BlackBerry alleged that Typo adopted BlackBerry’s “iconic keyboard design” found in BlackBerry’s Q10 smartphone and its other phones.On January 3, 2014, BlackBerry Limited filed suit against Typo in the Northern District of California, alleging that the Typo iPhone keyboard case infringes BlackBerry’s utility patents, U.S. Pat. No. 7,629,964 (the “’964 patent”) and U.S. Pat. No. 8,162,552 (the “’552 patent”), and design patent, U.S. Pat. No. D685,775 (the “D’775 patent”), as well as itsrights in its trade dress, and that it dilutes BlackBerry’s allegedly famous trade dress. BlackBerry points to Typo’s keyboard layout and the shape of its keys as a basis for these claims, as illustrated below”:
This article will discuss the significance of these claims and offer recommendations regarding intellectual property protections available to those who wish to release a mobile phone accessory.
I. BlackBerry’s Patent Infringement Claims
A. Description of the Patents Alleged to be Infringed by Typo
The ‘964 patent, entitled “HAND-HELD ELECTRONIC DEVICE WITH A KEYBOARD OPTIMIZED FOR USE WITH THE THUMBS”, was granted on December 8, 2009, and among its multiple independent claims, of particular note is independent claim 19 which claims “[a] keyboard for use with a mobile communication device”. Claim 19 includes the limitations of “twenty-six letter keys and at least one other key” distributed in three rows, that are symmetrically distributed along the face of the electronic device. Furthermore, claim 19 includes the limitation of:
“five letter keys in the upper row being disposed on each side of the vertical reference, five letter keys in the middle row being disposed on one side of the vertical reference and four letter keys in the middle row being disposed on the other side of the vertical reference, and four letter keys in the lower row being disposed on the one side of the vertical reference line and three letter keys in the lower row being disposed on the other side of the vertical reference line…”
The ‘552 patent, entitled “RAMPED-KEY KEYBOARD FOR A HAND-HELD MOBILE COMMUNICATION DEVICE”, was granted on April 24, 2012, and claims “[a] keyboard for a wireless hand-held mobile communication device”. The limitations recited in independent claim 1 include “a keyfield comprising a plurality of depressible keys arranged in rows that are distributed about a vertical centerline of the keyboard” and “each of the depressible keys has a top engagement surface of which an upper inboard portion is raised relative to a lower outboard portion thereof, wherein the top engagement surface of at least some of the depressible keys has a generally inclined crest shape with a top of the crest diagonally orientated on the key.”
The D’775 patent, entitled “HAND-HELD ELECTRONIC DEVICE”, was granted on July 9, 2013, and claims “the ornamental design for a hand-held electronic device, as shown and described.” The D’775 patent has the entire profile of the phone shown in broken lines as well as the screen, speaker and other components of the phone. Only the keyboard of the phone is shown in solid lines. Thus, in accordance with design patent law, only the keyboard is claimed in the D’775 patent.
A figure of the D’775 patent is shown below.
In BlackBerry’s motion for preliminary injunction, BlackBerry described its claimed design as comprising:
“…four horizontal bars or ‘frets’ resting above four rows of rectangular keys. The uniform keys in the top three rows have sculpted curves that form a symmetrical pattern moving out from a vertical center line. In the row below the lower most horizontal fret, a larger rectangular key is vertically centered and has a u-shaped planar area, while the surrounding keys have sculpted curves similar to the keys above.”
B. The Typo Keyboard Device
The Typo keyboard device comprises a plastic casing compatible for use with the iPhone 5 and 5s. The plastic casing is configured to match the contours of an iPhone 5 or 5s device so that it can be wrapped around the iPhone device for easy attachment. A feature of the Typo device, and also the basis for BlackBerry’s lawsuit, is the inclusion of a keyboard at the bottom of the casing that closely resembles the keyboard embodied by the D’775 design patent and claimed by the ’964 and ’552 utility patents.
C. Infringement Claims Against the Typo Keyboard
The test for design patent infringement is whether “in the eye of the 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.” Case law has also indicated that when an ordinary observer makes his or her observations, he or she is expected to pay more attention to small differences in a field crowded by many designs than in a field where there are few designs. This test is remarkably similar to the test used for trademark infringement. However, a key difference between design patent law and trademark law is how functionality is treated. In design patent law, a design can be functional so long as it is primarily ornamental, and “[w]here there are several ways to achieve a function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.” The treatment of functionality in regards to trademarks and trade dress is more rigid, as discussed further below.
The D’775 Patent and the Typo keyboard are shown below, and a preliminary comparison of the two keyboard designs shows that the Typo design appears to be very similar to D’775. Both designs show three straight rows of ten keys each, and four straight bars separating each of the rows. The surfaces of the individual keys of both designs also have sculpted curves moving away from the centerline of the keyboard. Furthermore, both designs have a bottom row of keys where a large rectangular key is vertically centered with keys on both of its sides having sculpted curves like the keys in the above rows. A difference between the two designs, however, is that the D’775 patent has two keys on each side of the large rectangular key, whereas the Typo keyboard has three keys on each side of the large rectangular key.
It should be noted that although the D’775 patent shows an extra space below the keyboard, this difference between the two keyboard designs is inconsequential since the profile of the phone in the D’775 patent is shown in broken lines and therefore the space between the profile of the phone and the keyboard is not claimed in the D’775 patent.
Typo has argued in opposition to BlackBerry’s motion for preliminary injunction that it does not infringe the D’775 patent because the two products are not substantially the same, since one is a smart phone and the other is a phone case. A decision on this issue is likely to turn on whether the article accused of infringement matches the description of the articles into which the claimed design is to be embodied, as contained in the claim of a design patent. In this regard, Typo might further argue that the design patent is for a “handheld electronic device,” and that a keyboard case, although electronic, may not be considered an independently operable hand-held device.
Case law also holds that functional features that are common to an allegedly infringing design and the patented design are to be discounted when comparing the two designs. This may allow Typo to argue that the keyboard, as a functional feature common to both the D’775 patent and Typo device, should not be considered when comparing the Typo device to the D’775 patent.
In regard to the alleged infringement of the ‘964 patent, BlackBerry, in its motion for preliminary injunction, has laid out the case for literal infringement of the ‘964 patent by noting that all of the limitations of the ‘964 patent read onto the Typo keyboard. For example, BlackBerry has noted that:
“The Typo Keyboard comprises a keyboard having twenty-six letter keys and at least one other key (e.g., ALT or carriage return). The twenty six letter keys and the at least one other key of the Typo Keyboard are arranged in upper, middle, and lower rows, and are distributed across the top surface of the housing from the left edge to the right edge. The keys in each of the upper, middle, and lower rows of the Typo Keyboard are arranged so that half of the keys in each of the respective rows are positioned to the left of the vertical reference and half of the keys in each of the respective rows row [sic] are positioned to the right of the vertical reference. Out of 30 keys in the upper, middle, and lower rows, there are 15 keys on each side of the vertical reference.
Similarly, the claimed number of letter keys in the upper, middle, and lower rows of the Typo Keyboard located on each side of the vertical reference and the claimed ‘substantially vertically aligned’ letter keys in the lower row compared to the upper and middle rows are apparent from visual inspection of the Typo keyboard…”
II. BlackBerry’s Trade Dress Claims
In addition to BlackBerry’s patent-based causes of action, BlackBerry has also asserted claims that Typo’s keyboard both infringes and dilutes BlackBerry’s unregistered trade dress that comprises of the following elements:
(1) “a keyboard with an overall symmetrical design around the vertical center line, comprising several horizontal dividing bars above rows of sculpted keys, the last of which is rounded on the bottom edge;” (2) “several horizontal bars in contrasting color and finish set above horizontal rows of keys;” (3) “several top rows of roughly square shaped keys having little horizontal space between them;” (4) “a bottom row of roughly rectangular shaped keys having curved bottoms edges and little horizontal space between them;” (5) “keys with planar areas away from the vertical center line of the keyboard and sculpted curves closer to the center line;” (6) “one larger rectangular key in the center of the bottom row having a u-shaped planar area;” and (7) keys having distinct lettering or graphical icons printed on the surface.
Although most owners would define their trade dress as the totality of the elements incorporated in its product, BlackBerry limited its claims to the design of the keyboard alone. This tactical move makes sense in context, as the infringing device is not a smart-phone, but a case that lacks many of the design elements that would be found in a phone (e.g. screen, speakers, battery, etc.).
A. Trade Dress Infringement
No matter the scope of the trade dress design, a plaintiff claiming unregistered trade dress infringement must first establish that its trade dress is valid, meaning it is non-functional and has acquired secondary meaning. Unlike in its patent claims, the burden rests on BlackBerry to establish both of these elements. To succeed in its infringement claim, a plaintiff must then demonstrate that there is a likelihood of consumer confusion as to source of the goods.
Traditionally, a design is considered to have utilitarian functionality when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.” The Ninth Circuit applies this test by assessing factors that are referred to as “the Disc Golf factors”: “(1) whether advertising touts the utilitarian advantages of the design, (2) whether the particular design results from a comparatively simple or inexpensive method of manufacture, (3) whether the design yields a utilitarian advantage and (4) whether alternative designs are available.”
The functionality doctrine serves to prevent trademark law from inhibiting legitimate competition by allowing a producer to control a useful product feature, which is the province of patent law. “If a product’s functional features could be used as trademarks… a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).”
BlackBerry faces a “heavy burden” in rebutting the presumption of utilitarian functionality of its unregistered trade dress. Although the Supreme Court in TrafFix did not go as far as to say that the existence of a utility patent for an element of the claimed trade dress would preclude trade dress protection of the overall design, it provides “strong evidence” of functionality. However, if the features are not claimed, or if they are claimed as arbitrary or incidental, the probative value of the patent as evidence of functionality is substantially diminished or negated entirely. In the instant case, the majority of the elements constituting BlackBerry’s claimed trade dress also appear to be included in its utility patents. This strong evidence of functionality may impair the chances of Blackberry’s success on its trade dress claims, as the Ninth Circuit has held, “where the whole [of the trade dress] is nothing other than the assemblage of functional parts, … it is semantic trickery to say that there is some sort of separate ‘overall appearance’ which is non-functional.” It has further elaborated that, “for an overall product configuration to be recognized as a trademark, the entire design must be nonfunctional.”
If the ‘964 and ‘552 patents do not preclude BlackBerry’s trade dress claims, BlackBerry still faces an uphill battle. Typo has submitted evidence that BlackBerry’s advertising touts the functionality of its keyboard, quoting a campaign boasting, “Every one of these 35 keys was shaped angled and positioned to make your typing experience fast, accurate, and dare we say, heavenly?” While this argument was proffered against BlackBerry’s design patent claim, it speaks directly to the first and third of the DiscGolf factors.
ii. Secondary Meaning
If BlackBerry is able to overcome the presumption of trade dress functionality, it must also establish its distinctiveness by demonstrating that the design has secondary meaning, or the association of the trade dress with a particular source arising from that trade dress’ use in the relevant market. One type of evidence that would support such a finding is third-party write-ups, such as press reports and critic reviews discussing BlackBerry’s keyboard. BlackBerry has submitted evidence to the court that critics have referred to BlackBerry’s keyboard as “iconic”. Interestingly, others have even claimed that the Typo keyboard case allows you to “turn your iPhone into a BlackBerry.” The phrase “turn your iPhone into a BlackBerry” speaks to secondary meaning because it suggests that BlackBerry’s keyboard design is so associated with BlackBerry that, even when another producer (e.g., Typo) creates a similar keyboard case as an add-on accessory for a separate smartphone (the iPhone), consumers still identify the keyboard design with BlackBerry. Further, there is evidence that Ryan Seacrest of Typo has arguably acknowledged the secondary meaning possessed by the BlackBerry keyboard in the following CNN interview quote:
Interviewer: “So it’s the best thing about a BlackBerry, within the iPhone.”
Ryan Seacrest: “That’s kind of how this came to fruition.”
If BlackBerry proves the non-functionality of its trade dress, it will be up to the trier of fact to determine whether the evidence establishes that BlackBerry’s keyboard is distinctive by way of secondary meaning.
iii. Likelihood of Confusion
Once BlackBerry has established the validity of its trade dress, the Court must evaluate whether a likelihood of confusion exists as to the source of origin of Typo’s products or as to an association between Typo’s company, products, or commercial activities and those of BlackBerry. At issue is the general impression made upon the ordinary purchaser by Typo’s product. BlackBerry asserts in its complaint that Typo’s keyboard case “has caused and is likely to continue to cause confusion as to the source of origin of Typo’s products and is likely to falsely suggest a sponsorship, connection, or association between Typo, its products, and/or its commercial activities with BlackBerry.” As discussed regarding design patent infringement, in evaluating a trade dress infringement claim, the Court will compare the totality of the elements that BlackBerry defines as its trade dress with Typo’s product to determine if consumers would likely be confused. Specifically courts in the Ninth Circuit will evaluate, inter alia, the following eight factors: (1) the strength of the mark; (2) proximity or relatedness of the goods; (3) similarity of sight, sound and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) types of goods and purchaser care; (7) intent; (8) likelihood of expansion.
Like proof of secondary meaning, likelihood of confusion is elucidated by consumer surveys, press reports, and critic reviews relating to whether consumers might be confused and think that Typo’s iPhone keyboard case is actually produced by BlackBerry Limited. In support of its motion for preliminary injunction BlackBerry has submitted numerous quotes from critics, which may demonstrate consumer confusion, including the following:
• “It’s no secret which company Typo is trying to emulate with its product. … [E]ven objectively from the size of the buttons down to the sculpted slope on each key— [the Typo product is] almost an exact replica [of BlackBerry’s keyboard]”;
• “The keyboard has the look and feel of a classic BlackBerry, right down to the beveled keys”;
• “But the only thing that really matters is that the Typo isn’t a good keyboard. Its four rows of backlit, angled, slightly raised black keys with white letters and borders may look suspiciously (and perhaps illegally) like they were lifted from a BlackBerry, but there’s no confusing the two. … The Typo feels like a cheap knockoff of a BlackBerry keyboard, like someone thought all that mattered was the shape of the keys and the font styling”;
• “[The Typo keyboard] is essentially an overpriced, underdeveloped knockoff, a kitschy accessory that somehow found a mainstream audience because Ryan Seacrest got interested.”
If people generally believe that the purpose of Typo’s keyboard case is to help them turn, “an Apple handset into a makeshift BlackBerry Q10,” the Court may find that there is a strong likelihood that those consumers mistakenly believe that the Typo case is manufactured or licensed by BlackBerry.
Typo, however, may be able to use some of the reviews above to establish that there is actually no consumer confusion. While these reviews note the striking similarities between the two companies’ products, some could arguably be used to demonstrate that based on differences in quality and design, no one would ever suspect that the Typo keyboard case is anything other than an imitation from a competitor of BlackBerry.
BlackBerry has further asserted actual confusion, as it possesses video from the Consumer Electronics Show in Las Vegas held on January 7-10, 2014, numerous consumers were presented with the Typo keyboard and misidentified it as a BlackBerry device.
B. Trade Dress Dilution
Federal dilution law extends protection against dilution to unregistered trade dress. The plantiff bears the burden to demonstrate that the claimed trade dress is non-functional, famous , and that there exists a likelihood of blurring or tarnishment.
To be capable of protection against dilution, an alleged trade dress must as a whole be so “prominent and renowned” among the general public in the United States as to be famous. The federal dilution statute describes four factors to be considered in assessing fame: 1) the duration, extent and geographic reach of advertising and publicity for the mark; 2) the amount volume and geographic extent of sales of goods or services connected to the mark, 3) the extent of actual recognition of the mark, and 4) whether the mark is federally registered. Establishing secondary meaning does not simultaneously establish fame, as showing of fame requires a higher quantum of proof.
In the instant case BlackBerry has alleged dilution by blurring. Blurring is “an association arising from the similarity between a mark… and a famous mark that impairs the distinctiveness of the famous mark.” To establish dilution by blurring, BlackBerry must provide evidence that the presence of Typo’s iPhone case on the market is likely to lead consumers to believe that BlackBerry’s keyboard trade dress is available for other companies to use, and that it no longer exclusively signifies BlackBerry.
III. IP Lessons and Strategies
BlackBerry’s suit against Typo serves as an important lesson for those interested in bringing new, innovative mobile phone accessories to market. Care must be taken to investigate whether any new product could be found to infringe on the intellectual property rights of others. Further, one should fully understand the scope of its own intellectual property rights in relation to its products.
To protect against potential patent infringement liability, a Freedom-to-Operate Search should be conducted. This will involve a search of the patent rights of others in the United States and abroad that may cover the product being developed for manufacture, use or sale. It is important to note that in relation to design patents, the description of the products provided in the claim of the design patent will broaden or narrow the scope of protection. For there to be design patent infringement, there must be a match between the infringing article and the products claimed for the design. Too often this requirement for design patent infringement is ignored or forgotten by only focusing on the drawings contained in a design patent. With this in mind, the results of a Freedom-to-Operate Search will be affected by the type of product being searched.
If it is found that there is room for a new product that will not infringe patent rights belonging to others, the next step to consider is whether the new product incorporates any novel features that are themselves capable of and worthy of patenting. This can be done through a Patentability Search that involves a search of issued patents, published patent applications (although it should be noted that design patent applications are not published until grant) and other printed publications for determining whether the product being developed is novel and unobvious. A patent covering the novel features of the new product will not only act as a shield preventing others from patenting the same features, but will also act as a sword that can be used pursue imitators and copyists. It should, however, be noted that a patent will not be granted immediately, so in fast moving markets, it is unclear whether patent protection would be useful. On the other hand, the U.S. Patent and Trademark Office has special procedures for expediting design patent applications that can sometimes be useful in such situations; there are also procedures for expediting utility patent applications, but except where one is prepared to pay a significant extra fee or a patent has been allowed in another country with a good patent examination system, US procedures for expediting examination of utility patent applications are cumbersome and rarely used.
If a company wishes to protect the non-functional design or packaging of its product, there are many options available. Depending on the nature of the design, protection could include trade dress/trademark registration, a design patent, copyright registration, or a combination of these protections. Trade dress/trademark protection is available for non-functional designs that serve as source identifiers; design patents are available for novel, non-obvious and ornamental designs; and copyright protection is available for certain non-functional works enumerated in the Copyright Act. Availability and ownership searches can be performed through each of these respective administrative offices to deduce whether obtaining a registration is possible, or if use of the design would infringe on the rights of others. It is important to understand the scope of protection, duration, formalities, and requirements of each of these forms of intellectual property and the interplay between the laws governing them, as they do not exist in a vacuum.
John Richards is a partner and Tommas Balducci and Luciano Ricondo are associates in the New York Office of Ladas & Parry LLP. Any views expressed in this article are their own and do not represent those of the firm or of their or its clients. The authors wish to thank Samae Rohani for her contributions to the research and editing of this article.
See TYPO IPHONE KEYBOARD CASE, http://typokeyboards.com/about-us (last visited February 14, 2014); Nick Turner, Seacrest’sTypo Keyboard Accessory Sells Out After CES Debut, BLOOMBERG TECHNOLOGY, http://www.bloomberg.com/news/2014-01-14/seacrest-s-typo-keyboard-accessory-sells-out-after-debut-at-ces.html (last visited Feb. 18, 2014).
Memorandum of Points and Authorities in Support of Typo Products LLC’s Opposition to BlackBerry’s Motion for a Preliminary Injunction, at 1, BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal.) (filed Jan. 3, 2014) [hereinafter “Defendant’s Memo”].
BlackBerry Limited’s Complaint for Patent Infringement, Trade Dress Infringement, Dilution, Unfair Business Practices, and Unjust Enrichment, at 2, BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal.) (filed Jan. 3, 2014) [hereinafter “Complaint”].
Id. at 2
BlackBerry Limited’s Notice of Motion and Motion for a Preliminary Injunction; Memorandum of Points and Authorities in Support, at 10, BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal.) (filed January 3, 2014)[hereinafter “Plaintiff’s Memo”].
Gorham Co. v. White, 81 U.S. 511, 528 (1871).
Crocs Inc, v, International Trade Commission, 93 USPQ2d 1777 (Fed. Cir. 2010).
LA Gear, Inc. v. Thom McAnn Shoe Company, 25 USPQ2d 1913 (Fed. Cir. 1993).
Plaintiff’s Memo, supra note 6, at 12.
Defendant’s Memo, supra note 3, at 21.
Richardson v. Stanley Works Inc., 597 F.3d 1288 (Fed. Cir. 1993).
Plaintiff’s Memo, supra note 6, at 17.
Id. at 17-18.
Complaint, supra note 4, at 9.
1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 8:4 (4th ed.).
See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001).
15 U.S.C.A. § 1125 (“In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.”); Wal-mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000) (“Nothing in § 43(a) explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement, since without distinctiveness the trade dress would not ‘cause confusion … as to the origin, sponsorship, or approval of [the] goods,’ as the section requires.”); see id. at 216 (holding that distinctiveness must be acquired through secondary meaning for product design trade dress).
Courts also recognize the concept of aesthetic functionality, which is not at issue in this case and therefore will not be discussed.
TrafFix, 532 U.S. at 33.
Talking Rain Beverage Co. v. South Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (citing Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir.1998)).
Qualitex Co. v. Jacobson Prods Co., 514 U.S. 159, 164-165 (1995).
TrafFix, 532 US at 30.
1-2A Gilson on Trademarks §2A.04[a].
TrafFix, 532 U.S. at 34.
See infra I.A.. While these patents do not contain a claim for the frets, or raised bars, included in the trade dress definition, Typo has submitted to the Court that BlackBerry holds an assignment to U.S. Patent No. 8,400,400 for a “keyboard comprising at least two elongated rails.” Defendant’s Memo, supra note 3, at 21 n. 5 (citing Decl. of Olivier Taillieu in Support of Typo Products LLC’s Opposition to BlackBerry Limited Corp.’s Motion for Preliminary Injunction, Ex.7, BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal. filed Jan. 3, 2014))
Leatherman Tool Group Inc. v. Cooper Indus., 199 F.3d 1009, 1013 (9th Cir. 1999)
Secalt S.A. v. Wuxi. Shenxi. Constr. Mach. Co., 668 F.3d 683, 683 (9th Cir. 2012) (quoting Leatherman Tool Grp. v. Cooper Indus., 199 F.3d 1009, 1012 (9th Cir.1999) (further internal citations omitted).
Defendant’s Memo, supra note 3, at 20 (quoting Decl. of William Douglas in Support of Typo Products LLC’s Opposition to BlackBerry Limited Corp.’s Motion for Preliminary Injunction, Ex. 3, BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal. filed Jan. 3, 2014)).
TrafFix, 532 US at 29-33 (holding that a determination that a proposed mark is functional constitutes and absolute from trademark registration, regardless of evidence showing the proposed mark has acquired distinctiveness).
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 215-216 (2000).
Decl. of William Douglas in Support of BlackBerry Limited Corp.’s Motion for Preliminary Injunction, BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal. filed Jan. 3, 2014).
See Chuong Nguyen, Typo Keyboard for iPhone: Crack-Berry Cure or BlackBerry Death?, GottaBe Mobile, Dec. 6, 2013, http://www.gottabemobile.com/2013/12/06/typo-keyboard-for-iphone-crack-berry-cure-or-BlackBerry-death/ (comparing the Typo and BlackBerry keyboards); Adam Mills, Typo iPhone Case Turns Your iPhone Into a BlackBerry, GottaBe Mobile, Jan. 7, 2014, http://www.gottabemobile.com/2014/01/07/typo-iphone-keyboard-case-BlackBerry/ (noting that the Typo case “wants to turn the iPhone into a BlackBerry”).
Decl. of Brice C. Lynch in Support of BlackBerry Limited Corp.’s Motion for Preliminary Injunction, ¶ 48,BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal. filed Jan. 3, 2014).
Complaint, supra note 4, at 14.
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).
Decl. of Brice C. Lynch in Support of BlackBerry Limited Corp.’s Motion for Preliminary Injunction, Ex. 42, BlackBerry Limited v. Typo Products LLC, No. 14-cv-00023 (N.D. Cal. filed Jan. 3, 2014).
Id. Ex. 22.
Id. Ex. 36.
Id. Ex. 36.
Id. Ex. 42.
Id. ¶ 49.
If the trade dress contains a registered mark, the party asserting the trade dress claim must also demonstrate the trade dress is famous apart from the fame of the registered mark.
Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999).
See 2-5A Gilson on Trademarks §5A.01[c] (citing Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 879 (9th Cir. 1999); Grupo Gigante S.A. de C.V. v. Dallo & Co., 119 F. Supp 2d 1083, 1098 (C.D. Cal. 2000)).
15 U.S.C. §1125(c)(2)(B)
See 2-5A Gilson on Trademarks §5A.01[a].
Additionally, different forms of protection may be available in foreign jurisdictions.
The laws regarding intellectual property are constantly in flux. For example in Apple Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314, 1325 (Fed. Cir. 2012), without deciding the issue, the Federal Circuit noted that an additional theory of damage might be possible in design patent cases in the form of “design dilution,” apparently analogous to trademark dilution, which recognizes that use of a trademark even if non-infringing, may dilute the distinctive capacity of a well-known mark. Notwithstanding the trademark-like test of design patent infringement, it is hard to see when this principle might be relevant in patent law.