News & Analysis as of

Tissue Tussles at the Trademark Office

Each of the seasons has its own soundtrack to signal its transition. Spring is symbolized by the chirping of robins and sparrows. The sound of the grill and the splashing in the pool announces the arrival of Summer....more

Drawing a Line in the Floor—Courts Are Struggling With the Overlap Between Design Patent and Copyright

In 2003 the U.S. Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp. emphasized that “[t]he rights of a patentee or copyright holder are part of a ‘carefully crafted bargain,’… under which, once the patent or...more

Ads Touting Function Shoot Down Trademark

This isn’t the first time we’ve written about brand owners who shoot themselves in the foot with their advertising. And, I’m sure it won’t be the last. As we’ve discussed before, touting the function of a product design...more

Comparison of Design Patent and Trade Dress Protection in Light of the Federal Circuit’s Decision in Apple v. Samsung

In a decision authored by Chief Judge Sharon Prost, the Federal Circuit held that while design patents covering product configurations – that is, “a product feature or a combination or arrangement of features” – can protect...more

Business Litigation Report - August 2015

Extradition for U.S. Antitrust Crimes: An Anomaly or the New Normal? - In April 2014, Germany extradited Romano Pisciotti, an Italian national, to the United States to face criminal charges related to his alleged...more

August 2015: Trademark/Copyright Litigation Update

Federal Circuit Invalidates Apple’s iPhone Trade Dresses as Functional. On May 18, 2015, the Court of Appeals for the Federal Circuit reversed a judgment of the Northern District of California that Samsung had diluted Apple’s...more

Sony’s “Lens-Style Camera” Trademark: Shuttered by the PTO?

Here’s another fascinating pending application for the file of non-traditional product configuration marks — this time, an application from Sony for the configuration of an all-in-one lens/camera...more

Two Prong Protection is the Best Approach for Product Configuration

It has long been possible to use both trade dress and design patent rights to protect three-dimensional designs that function as trademarks. One strategy has been to rely on design patent protection while a three-dimensional...more

Williamson Decision Will Encourage Patent Defendants to Challenge Software Claims

In Williamson v. Citrix Online, announced on June 16, the Court of Appeals for the Federal Circuit ruled in a partially en banc opinion that claims expressed in terms of functionality can be subject to statutory requirements...more

Food Packaging Trademarks: It’s in the Bag?

Welcome to another edition of non-traditional trademarks in connection with package designs: The Billy Goat Chip Company contends it owns exclusive rights in a protectable and distinctive trademark for the appearance...more

Apple v. Samsung: Trade Dress Functionality and Total Profits without Apportionment

The highly publicized Apple v. Samsung litigation saga began in April 2011 when Samsung alleged various infringements of patents and trade dress related to Apple’s iPhone. A jury awarded more than $1 billion in damages. In a...more

Intellectual Property Alert: Apple v. Samsung: The Federal Circuit Clarifies Design Patent Principles Law

In a much anticipated opinion issued by the U.S. Court of Appeals for the Federal Circuit in Apple v. Samsung on May 18, the design patent law with respect to remedies and the infringement test remains robust. Notably, and...more

Single Color Mark — Functionality Does Not Necessarily Preclude Protectability

The Ninth Circuit’s recent decision in Moldex-Metric, Inc. v. McKeon Products, Inc. clarifies that even when a single color trade dress has a function, and even when the color is marketed as such, this fact alone does not...more

Bringing Down the Bauhaus for Trademarks?

We’ve been spilling a lot of digital ink lately on the topic of non-traditional trademark protection and how the functionality doctrine serves as an absolute bar for such protection. As you know, for some time, we’ve...more

Design Patent Case Digest: High Point Design LLC and Meijer, Inc., Sears Holding Corp. and Wal-Mart Stores, Inc. v. Buyers Direct,...

Decision Dates: September 11, 2013 and March 26, 2014 - Courts: Federal Circuit and the Southern District of New York Patent: D598,183 - Holding: Grant of summary judgment of invalidity REVERSED and REMANDED; on...more

When is a Flavor/Taste Trademark Possible?

Are your intellectual taste buds craving more discussion of non-traditional trademarks? It’s not every day we have the opportunity to write about a restaurant’s claimed trademark protection for the flavor or taste of certain...more

Pattern of Functional Dots in Absorbent Pad Functional? It’s a Fact Issue

McAirlaids, Inc. v. Kimberly-Clark Corp. - Addressing whether a pattern of dots embossed on an absorbent pad was functional, the U.S. Court of Appeals for the Fourth Circuit reversed a lower court’s summary judgment in...more

Federal Circuit Holds That Even Functional Claims Require Structural Fence Posts

In AbbVie Deutschland Gmbh v. Janssen Biotech, Inc., the Federal Circuit affirmed the district court decision that found AbbVie’s patents directed to anti-IL-12 antibodies invalid for lack of adequate written description. As...more

Functional Claim Language – “Adapted To” and “Configured To” – Having Narrow Interpretations

Patent claim drafting is a challenging exercise that requires balancing potential infringement of the claim against the prior art. A patent practitioner may easily draft a claim of very narrow scope, but if such claim has a...more

Trademark Functionality and Fashion – Tips for Clients

Trademark protection is very important in the fashion industry. The ability to protect certain logos and design features may determine the success of a fashion designer’s business. Thus, it is crucial to understand how to...more

Functional Language in Claiming: Configured to, and Operable to

Functional language is often employed in claims in order to obtain a broader claim than one that recites purely structural limitations. The premise for this is that there is more than one way to perform a function. So, an...more

Aesthetic Functionality in the TTAB since Louboutin

The doctrine of aesthetic functionality was revived in the recent Louboutin case to protect the competitive need to use color to communicate a particular message. In that case, Christian Louboutin S.A. tried to enforce its...more

Means Plus Function Treatment Does not Apply Where Claim Element Conveys Known Structure to the Skilled Person

The Federal Circuit in Enocean GmbH v. Face International Corporation No. 2012-1645 (Fed. Cir. Jan. 31, 2014) reviewed claims which were found by the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences...more

Sixth Circuit Rules that Trade Dress Law Does Not Prevent Copying of Functional Design

In Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 2013 U.S. App. LEXIS 18897 (6th Cir. Sept. 12, 2013), an industry veteran and a relative newcomer battled over the appearance of a rather specialized...more

Software Development and the Use of Abstractions

The process of developing software typically involves the use of abstractions of concrete concepts to describe the operations performed by a computer and objects of such operations. Some software abstractions are so familiar...more

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