News & Analysis as of

Functionality Intellectual Property Protection

Knobbe Martens

Traffix Jam – Technical Functionality Prevents Trademark Protection for the Color Pink

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CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC - Before Lourie, Taranto, and Stark.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. A utility patent may still be considered strong...more

Bond Schoeneck & King PLLC

Trade Dress Registration – Practical Considerations for Product Manufacturers

Summary Trade dress is a powerful intellectual property (IP) tool that can be used to protect the distinctive non-functional “look and feel" of a product’s design, shape and/or 3D configuration.[1] Product manufacturers and...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Clarifies Functionality Doctrine in CeramTec v. CoorsTek

In this edition of The Precedent, we outline the recent federal circuit decision in CeramTec v. CoorsTek. ...more

Sheppard Mullin Richter & Hampton LLP

Ceramtec GMBH v. Coorstek Biocermanics LLC

This case examines the application of trademark functionality doctrine in the medical device industry, specifically addressing whether the pink color of ceramic hip components can be protected as a trademark. The case...more

Miller Canfield

Tickled Pink No More: Federal Circuit Affirms Cancellation of CeramTec’s Trademarks for Pink Ceramic Hip Implants

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Color trademarks have traditionally been difficult to obtain. Of the over 4 million trademark registrations, there were less than 1000 color trademarks as of 2019. To be eligible for trademark registration, a color must have...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Trademark Trends: A Mid-Year Review - July 17th, 1:00 pm - 2:00 pm EDT

Join Sterne Kessler’s Global Trademark & Brand Protection team for our mid-year review webinar, when we will take a closer look at the latest developments in trademark law. From recent court decisions to industry-trends, our...more

McDermott Will & Emery

Sole Searching: Trade Dress Hopes Booted as Functional, Nondistinctive

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The US Court of Appeals for the Fourth Circuit affirmed a district court’s summary judgment grant in a trademark dispute, finding that the district court did not err in concluding that a subset of design elements lacked...more

J.S. Held

Software and Firmware Reverse Engineering & Testing

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Understanding how hardware and firmware/software work together to perform desired functions or tasks is an important enabler to unlocking the value of intellectual properties in the systems (including embedded systems) area....more

McDermott Will & Emery

Whisk-y Business: Notice Alone Is Sufficient for Preliminary Injunction

The US Court of Appeals for the Fifth Circuit concluded that only notice of a preliminary injunction (PI) motion, and not perfected formal service, is needed to assert jurisdiction to issue an injunction. Whirlpool Corp. v....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - May 2023

Thank you for reading the May 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss Taco Bell's attempt to cancel two TACO TUESDAY trademark registrations, and a precedential TTAB decision...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - May 2023: TACO TUESDAY – Generic Term, Failure to Function, or BOTH

Taco Bell’s recent efforts to liberate the phrase “Taco Tuesday” presents an opportunity to review the distinctions between marks that are generic and those that fail to function as a trademark....more

Stark & Stark

The Fight for Red: Fashion Statement or Protected Trademark?

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Louboutin v. YSL - Christian Louboutin (“Louboutin”), the designer of the famous red bottom shoes, filed a trademark infringement lawsuit against fashion house Yves Saint Laurent (YSL) claiming YSL infringed on its red...more

Smart & Biggar

Fact or fiction? Debunking patent myths for business and technology leaders.

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There are many misconceptions or ‘myths’ about patents that have found their way into popular discourse, ranging from what type of innovations are patentable, to how important it is to own and protect your intellectual...more

Hogan Lovells

9th Circuit swivels on trade dress functionality doctrine in favor of iconic Herman Miller office chairs

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The Ninth Circuit rules in favor of furniture designer Herman Miller in its trade dress infringement suit against a copycat manufacturer of knockoff Eames and Aeron office chairs. The court affirms a jury finding that the...more

McDermott Will & Emery

There’s No Sugarcoating It: Pocky’s Cookie Design Trade Dress Is Functional

Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was...more

Knobbe Martens

Federal Circuit Review - December 2020

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Non-Disclosure Agreement Controls Ownership of Patents Arising From Confidential Information Received Thereunder - In Sionyx LLC v. Hamamatsu Photonics K.K., Appeal No. 19-2359, the Federal Circuit held that a party who...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Tips for Reviewing (or Drafting) Patent Claims

For emerging companies, a patent application should combine legal skill with technical and business knowledge to produce a document that will serve as a foundation to the company’s valuation and future profitability....more

Haug Partners LLP

“That’s the way the cookie crumbles!” Third Circuit Court of Appeals Considers Differences Between Trade Dress and Patent...

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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

McDermott Will & Emery

Cookie Trade Dress Infringement Case Crumbles in Face of Functionality Challenge

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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

Jones Day

Balance is Key in Design Patent Claim Drafting

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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

McDermott Will & Emery

Cream and Sugar with That? French Press Trade Dress Is Nonfunctional, Protectable

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

Vedder Price

The Seventh Circuit Addresses the Use of Utility Patents as Evidence of Functionality of Trade Dress

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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

Knobbe Martens

The Crown Jewels: How to Protect Your Jewelry Designs

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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

Hogan Lovells

CJEU on designs which are solely dictated by technical functions

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On 8 March 2018, the CJEU issued a preliminary ruling in a case that had been referred by the Higher Regional Court of Düsseldorf, Germany....more

Fenwick & West LLP

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

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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

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