News & Analysis as of

Functionality

Federal Circuit Denies SHzoom's Bid to Make Trading Technologies Decision Precedential, But the Case is Still Good Law

by Fenwick & West LLP on

On Wednesday, the Federal Circuit, in a per curiam order, denied SHzoom's motion to make the Trading Technologies opinion precedential. The order of course gave no reasons for the decision. Nonetheless, the underlying...more

Including Functional Claim Language Helped Save Pozen’s VIMOVO® Patents

by Jones Day on

On February 28, 2017, the PTAB held that the petitioner Lupin had not shown that the challenged claims in two of Pozen’s patents were invalid (IPR2015-01773 and IPR2015-01775).  These cases show the advantage of using...more

Hasbro thinks the Smell of Play-Doh Is a Trademark, will the USPTO Agree?

As we have discussed previously, trademark protection isn’t an exclusive club for words and pictures. Shapes, sounds, and even the tactile feel of a product can all qualify for trademark protection. And as a recent...more

Canadian Playground Fight Highlights the Importance of Industrial Design Protection

by Bennett Jones LLP on

A recent decision of the Federal Court of Canada has highlighted the difficulties in asserting trademark and copyright rights related to the appearance of functional products with unique design elements....more

Federal Circuit Judges Disagree Over Contours of Section 101

by Knobbe Martens on

The increased prominence of Section 101 in computer-related patent disputes stems from the Supreme Court case of Alice Corp. v. CLS Bank. Before Alice reached the Supreme Court, ten judges of the Federal Circuit considered...more

Rubik’s Cube Shape Mark Falls on Functionality in the EU

by Dorsey & Whitney LLP on

A trademark registration for the shape of a product (usually in the form of a drawing or 3D illustration) can be useful, particularly where the product is recognised predominantly by its distinctive visual appearance....more

Considerations When Using Descriptive or Generic Trademark Terms

by Snell & Wilmer on

I. Adding Distinctive Terms or Logos to a Descriptive or Generic Term Will Not Protect the Descriptive or Generic Term. A descriptive trademark1 is one that immediately brings to mind a use, purpose, function,...more

Gerundtology

§112(f) allows a patent applicant to claim an element by the function it performs. Functionally claimed elements using §112(f), however, are limited to what is disclosed in the specification and equivalents. The classic...more

CAFC Says Functional Claim Language Does Not Create Divided Infringement

by Foley & Lardner LLP on

In LifeNet Health v. LifeCell Corporation, one of the many issues the Federal Circuit decided was that functional claim language did not create a divided infringement situation, even though an independent actor could impact...more

Bakery's Apple Pie Design is Functional and Inelgible for Trademark Protection, Third Circuit Affirms

by Genova Burns LLC on

The Third Circuit Court of Appeals affirmed a district court’s determination that the key element of a gourmet bakery’s registered pastry design was functional, and therefore ineligible for trademark protection, in Sweet...more

Design Patents and Trade Dress

I often get asked by clients to discuss the differences between design patents and trade dress. Both are intellectual property protections that protect similar aspects of a product—the appearance and aesthetic features. Last...more

Federal Circuit Reverses Claim Construction of Design Patent That Ignored Functional Elements

by Morgan Lewis on

Applicants for design patents should consider claiming functional aspects of their designs in addition to the purely ornamental elements as part of their claiming strategy to achieve the broadest protection for their designs....more

Functional Features in Design Patents

by Winstead PC on

The treatment of functional features in design patents was discussed in the recent Federal Circuit case for Sport Dimension, Inc. v. The Coleman Company, Inc., Case No. 15-1553 (Fed. Cir. 2016). The Court rejected the...more

Ninth Circuit Decision Finds Side-By-Side Medical Results Charts Arguably Non-Functional and Protectable Trade Dress

The Ninth Circuit recently considered whether the layout of a medical report can be protected as trade dress under the Lanham Act, or whether the layout of a report is merely functional. The subject case, Millennium...more

It is Error to Ignore Functional Structures Entirely in a Design Patent Construction

In Sport Dimension, Inc. v. The Coleman Company, [2015-1553] (April 19. 2016) the Federal Circuit vacated the stipulated judgment of non-infringement of U.S. Patent No. D623,714 on a personal flotation device, and remanded...more

Are Registrations for Product Configuration Trademarks for Suckers?

As a kid, I loved candy. But as an adult, who happens to be an intellectual property attorney, I still love candy. So you can bet your sweet tooth that I was feeling a sugar rush when I came across a pending application to...more

Self-Inflicted Cuts That Can Kill a Trademark?

We have some razor sharp readers and guest bloggers. We’re deeply thankful and especially grateful when our readers and guest bloggers send us real life illustrations of marketing pitfalls we’ve identified, sliced and diced...more

Claim Drafting Strategies -- Functional Claiming and Reciting User-Action

On December 1, 2015, the International Trade Commission (ITC) rendered an opinion In the Matter of Certain Vision-Based Driver Assistance System Cameras, Components Thereof, and Products Containing the Same, investigation no....more

Tissue Tussles at the Trademark Office

by Winthrop & Weinstine, P.A. on

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

by BakerHostetler on

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

by Winthrop & Weinstine, P.A. on

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

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