Brand Protection: Looking Beyond Trademarks to A Broader Arsenal of Intellectual Property Tools

Foley & Lardner LLP
Contact

Manufacturers may assume that protection of their brands can only be achieved through trademark protection of names, logos, and slogans. In fact, a broad arsenal of intellectual property tools is available to ensure that third parties do not infringe a manufacturer’s rights in its brand and products. This article discusses some of the tools under U.S. law, other than trademark law, that manufacturers should consider as part of their arsenal of brand protection.

Trade Dress

Whereas trademark law protects brand names, product names, slogans, and logos which function as an indicator of the source of goods or services, federal law also provides for the protection of other brand-identifying features through trade dress protection. Like a trademark, trade dress identifies a single source for a product or line of products, and trade dress owners are entitled to enforce their trade dress against infringing uses which create a likelihood of confusion among consumers. The most traditional forms of trade dress are labels and package designs, but other source-identifying elements, including product designs, can also be protectable.

To receive protection, trade dress must consist of a specific, consistent design element; the overall “style” or “look and feel” of a product is not eligible for protection. In addition, trade dress cannot be functional: a design feature is functional if is essential to the use or purpose of the product, if it impacts the cost or quality of the product, or if it is necessary for competitors to also use the feature at issue.

In the case of product design, the trade dress owner must prove “secondary meaning”: that the public has come to recognize a particular product design as coming only from a single source. Generally, this means that, in order to receive trade dress protection, a product design must have been in use for sufficient time to have become well-established in the public perception.

A recent example of product design protection, and an attempt to enforce such protection, is Converse Inc. v. ITC, No. 2016-2497, 2018 WL 6164571 (Fed. Cir. Oct. 30, 2018). Converse held a trade dress registration in the midsole design of its Chuck Taylor shoes, consisting of elements including the design of two stripes on the midsole, the design of the toe cap, and the design of and geometric patterns on the toe bumper. It alleged that various other shoe manufacturers were making shoes with confusingly similar midsoles and infringing its trade dress. The International Trade Commission (“ITC”) found that the Converse design registration was not eligible for protection because secondary meaning was not established. However, recently, on October 30, 2018, the Federal Circuit issued an opinion reversing the ITC’s finding that the design was not eligible for protection, and established a new test for secondary meaning. This six factor test includes the following: (i) association of the trade dress with a particular source by actual purchasers (typically measured by consumer surveys); (ii) length, degree and exclusivity of use; (iii) amount and manner of advertising; (iv) amount of sales and number of customers; (v) intentional copying; and (vi) unsolicited media coverage of the product embodying the mark. The Court also held that designs must be “substantially similar” in the eyes of an ordinary observer in order to infringe protected trade dress.

Like trademark protection, trade dress protection does not have a set term of years, and protection can last for as long as the trade dress is in use, provided that the trade dress owner makes periodic maintenance filings. If a manufacturer can establish secondary meaning in its product design, therefore, trade dress registration can be an incredibly valuable tool to prevent copying by other parties.

Design Patent

Patent protection is not only available for the functional or “useful” parts of an invention, referred to as a “utility patent”; manufacturers can also receive “design patent” protection for ornamental non-functional aspects of a new product.

Design patent protection requires that the design be new and not an obvious modification of an existing design. Design patents typically cover elements such as the shape or configuration of a product, or an ornamental design applied to a product. If the element is functional or dictated by functional concerns, it is not eligible for design patent protection.

The Eastern District of Michigan recently addressed design patent protection in deciding whether Ford’s patents covered designs that were “ornamental” or “dictated by function.” The court contrasted design patent and trade dress law and refused to apply the theory of aesthetic functionality used in the latter to design patents. Auto. Body Parts Ass’n v. Ford Global Techs., LLC, 293 F. Supp. 3d 690 (E. D. Mi. 2018). As a result, the court declined to invalidate or render unenforceable two of Ford’s design patents covering auto-body parts for the F-150 truck. For a more robust discussion of this case, see Jeanne M. Gills & Richard J. McKenna, District Court Rejects Efforts To Invalidate Design Patents on Automobile Parts, Foley & Lardner LLP (Feb. 23, 2018)

Design patent owners have the right to exclude others from making, using, selling or offering for sale a product with an overall design which is substantially the same. Design patents played a key role in the Apple v. Samsung case, in which Apple successfully claimed that Samsung infringed three of its design patents, covering the rectangle shape and rounded corners of its phones, the outer bezel around the front face of its phones, and the arrangement of icons in its graphic user interface. Apple Inc. v. Samsung Electronics Co. Ltd. et al., No. 11-CV-01846 (N.D. Cal. 2012), aff’d as to design patent infringements 786 F.3d 983 (Fed. Cir. 2015), rev’d as to determination of damages 137 S. Ct. 429 (2016).

Notably, design patents only have a term of protection of 15 years, whereas utility patents have a term of 20 years, while trade dress protection can last as long as the design is in use. However, the 15-year design patent term is measured from the grant date of the patent, whereas the 20-year utility patent term is measured from the filing date.

Design patent and trade dress protection can coexist, and manufacturers should consider filing for both design patent and trade dress registrations if a product design qualifies under both standards. Because design patent protection does not require proof of secondary meaning, a well-timed design patent application can offer protection around the time a new product launches. In turn, the exclusivity granted by a design patent can be helpful in proving acquired distinctiveness in a trade dress application at a later date, giving the product design the potentially unlimited term of protection of trade dress.

Copyright

Manufacturers should also consider copyright as a tool in the brand protection arsenal. Copyright protection is available for original works of authorship, such as visual art, music, and literary works. Works such as graphic logos, advertisements, labels, and product manuals can be protected by copyright if they show a minimum amount of creativity.

Useful articles themselves cannot be copyrighted, but some of these articles can have protectable elements. In 2017, the Supreme Court addressed this question in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). This case concerned whether the graphic elements of cheerleading uniforms were eligible for copyright protection. The Supreme Court held that an artistic feature of the design of a useful article such as clothing is eligible for copyright protection if the feature: (i) can be perceived as a work of art separate from the useful article and (ii) would qualify as a pictorial, graphic, or sculptural work eligible for protection if imagined separately from the useful article.

Copyright owners have the ability to prevent others from reproducing, copying, displaying, performing, or creating derivative works from their copyrighted work. Use by another can be found infringing if it is substantially similar to the original work.

Copyright protection lasts for the life of an individual author plus 70 years or, in the case of corporate authorship, for the shorter of 95 years from publication or 120 years from creation.

As with trademark, trade dress, and patent, copyright-eligible works may be federally registered. These works also receive some degree of copyright protection regardless of registration. However, registration (or at least a pending copyright application in certain jurisdictions) is required to file an infringement lawsuit. In addition, a timely registration within three months of publication confers benefits including the ability to recover statutory damages and attorneys’ fees in litigation.

Trade Secret

In some ways, trade secret protection is the antithesis of the other intellectual property protections discussed in this article. While other types of protection require disclosure of the property, trade secret protection requires that the owner have taken reasonable measures to keep the information secret. Nevertheless, trade secret can be a useful tool with respect to some product or business information.

Trade secret protection is available for a wide range of information, including financial, business, technical, and engineering information, so long as that information derives independent economic value from not being known by or available to other people. For example, lists of business contacts or methods of creating products can be protectable trade secrets. Trade secret protection continues for as long as the information is kept secret, but it does not protect from “reverse engineering” by competitors.

Trade secret protection was previously only available at the state level, but the Defend Trade Secrets Act of 2016 established federal protection for trade secrets. As such, manufacturers may have a cause of action at the state or federal level for the misappropriation of trade secrets by others.

Information protected by trade secret law most often intersects with utility patent-eligible material. However, registration of a patent makes the information public and negates any trade secret protection. Therefore, manufacturers should choose between one or another because the subject of publically disclosed patent cannot also be a confidential trade secret.

Conclusion

As noted above, there are many weapons at a manufacturer’s disposal in order to protect its brand. There are even some that are not mutually exclusive so a brand owner can arm its war chest with more than one. In each instance, however, a manufacturer should carefully consider which tool is best suited to the information or product at issue in order to take advantage of as many protections as possible.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley & Lardner LLP | Attorney Advertising

Written by:

Foley & Lardner LLP
Contact
more
less

Foley & Lardner LLP on:

Readers' Choice 2017
Reporters on Deadline

Related Case Law

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at www.jdsupra.com) (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at privacy@jdsupra.com.

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to privacy@jdsupra.com. We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to privacy@jdsupra.com.

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at: privacy@jdsupra.com.

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at www.jdsupra.com) (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit legal.hubspot.com/privacy-policy.
  • New Relic - For more information on New Relic cookies, please visit www.newrelic.com/privacy.
  • Google Analytics - For more information on Google Analytics cookies, visit www.google.com/policies. To opt-out of being tracked by Google Analytics across all websites visit http://tools.google.com/dlpage/gaoptout. This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit http://www.aboutcookies.org which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at: privacy@jdsupra.com.

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.