On May 20, 2021, the TTAB issued a lengthy and comprehensive precedential opinion canceling Proof Research, Inc.’s registration for the trade dress of a gun barrel (as shown below) on grounds of de jure functionality under...more
The Squatty Potty is a special stool that a user places in front of the toilet when it's 'time for business'. The user places her feet on the stool to elevate her knees, thereby helping the user assume a squat position when...more
In Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., the U.S. Court of Appeals for the Third Circuit considered a trade dress infringement dispute between two confectioners. Ezaki Glico (“Ezaki”), a Japanese...more
The US Court of Appeals for the Third Circuit found that trade dress protection did not extend to the design of a chocolate-dipped, stick-shaped cookie, because the product configuration was useful. Ezaki Glico Kabushiki...more
The Patent Trial and Appeal Board recently designated as informative its decision instituting post-grant review and addressing the issues of design patent functionality in Sattler Tech Corp. v. Humancentric Ventures, LLC. ...more
In CTB Inc. v. Hog Slat, Inc., the U.S. Court of Appeals, Fourth Circuit, found that a chicken feeder design was not eligible for trade dress protection because it improved the way the feeders worked. It was therefore...more
On June 11, 2020, the Patent Trial and Appeal Board (“PTAB”) designated as informative a July 26, 2019 institution decision granting post-grant review of a design patent for lacking ornamentality. In this ruling, the PTAB...more
Addressing the issue of the functional requirements of design patents, the US Court of Appeals for the Federal Circuit refused to invalidate design patents on truck parts on the basis of aesthetic functionality. Automotive...more
In confirming that the unregistered trade dress of the Chambord French press coffeemaker was nonfunctional, the US Court of Appeals for the Seventh Circuit affirmed the district court’s determination that plaintiff’s...more
• In a relatively rare opinion regarding design patents, the U.S. Court of Appeals for the Federal Circuit weighed in recently on the requirements for design patents in its Automotive Body Parts Association v. Ford Global...more
PATENT CASE OF THE WEEK - Automotive Body Parts Ass’n. v. Ford Global Techs., LLC, Appeal No. 2018-1613 (Fed. Cir. July 23, 2019) - Our case of the week is a design patent case. It concerns two primary issues—what...more
On July 23, 2019, the U.S. Court of Appeals for the Federal Circuit released its decision affirming summary judgment that the asserted design patents were not invalid for non-ornamentality under 35 U.S.C. § 171, and rejecting...more
On June 12, 2019, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 U.S. App. LEXIS 17555 (7th Cir. June 12, 2019). The case, led by Vedder Price...more
Eliya Inc., known for its BERNIE MEV® shoes, filed a declaratory judgment action against Skechers on January 29, 2019 in the U.S. District Court for the Southern District of New York. Skechers had sent a cease and desist...more
Knock-offs and ‘copycat’ designs are nothing new to the fashion world. The rising demand for “fast fashion” and bargain hunting alike make knock-offs particularly attractive to the consumer’s insatiable appetite. This trend...more
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
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
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
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
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
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
Telebrands Corp v. Del Laboratories, Inc. - Decision Date: September 8, 2011 - Court: S.D. New York - Patents: D596,802 - Holding: Coty’s motion for summary judgment of invalidity denied - Opinion:...more