Product Design Protection

Federal Circuit Decision Highlights Power of Design Patents

Design patents protect new ornamental designs for “articles of manufacture.” 

A recent Federal Circuit decision Auto Body Parts v. Ford Global Techs. (Fed. Cir. 2019), rejected a limitation on design patents, and highlights how design patents can be a powerful tool to secure demand in the after-market for parts and components.

The case involved design patents owned by Ford for certain components of its cars – a vehicle hood and a head lamp.  Auto Body Parts wanted to manufacture replacement parts for Ford Cars with the same designs.

Auto Body Parts argued that the design patents were “functional” and hence invalid, because consumers want to buy replacement parts to match their cars.  While arguably that would be a valid argument under trade dress law, the Federal Circuit rejected it under design patent law.  So, Ford’s component design patents were valid.

This decision highlights what can be a powerful strategy for manufacturers of products that have components that may need replacements. 

A design patent on components of a whole product (e.g., the headlamp of a car) can be leveraged to cover sales of replacement components.

Forever 21 Amended Complaint Against Gucci Highlights the Need for Vigilant Enforcement to Maintain Trademark Rights

In a prior post, we discussed Forever 21’s lawsuit against Gucci, seeking to cancel Gucci’s registrations for its Blue-Red-Blue and Green-Red-Green striped marks, and for a declaration that its clothing and accessory products that incorporate similar striping are not infringing.

In response to a dismissal by the court, Forever 21 filed a massive, 145-page amended complaint. The complaint mostly repeats the same allegations, but now also includes over 100 pictured examples of products sold by other brands and retailers, including Nordstrom, Bloomingdale’s, Tory Burch, J.Crew, Louis Vuitton, and Balenciaga.

Forever 21’s argument is that Gucci’s striped designs are not perceived as trademarks, but are merely decorative elements used by numerous brands across a wide range of price points.

While it remains to be seen how strong Forever 21’s proofs are, this argument raises an important point for trademark owners. “Enforce it or lose it” is the takeaway here.

Trademark owners who wish to keep their rights in their marks need to vigilantly police the market and make sure that their marks do not lose their source-identifying power through widespread use.

Knockoffs: Creating an Effective Strategy on a Tight Budget

Part IV: Implementing an Effective and Cost-Efficient Enforcement Strategy

This is the fourth in our four-part series about developing an effective strategy to deal with knockoffs and counterfeits when faced with a limited budget.  We assume that each of the three steps outlined in our prior posts  have been implemented and are used to inform and support the company’s enforcement efforts.

Planning an appropriate company enforcement strategy is not a once-size-fits-all approach.  As the scope and prioritization of the knockoff problem vary, so too will the company’s enforcement plan. We outline the main issues to be considered and determined as steps in designing an enforcement strategy:

Recent Copyright Decisions Highlight Need to Rethink IP Protection Strategies for Product Designs

Many industries, from fashion and luxury, to consumer goods to industrial goods, use unique and innovative product designs to set themselves apart from the competition and provide an aesthetic attractive product for their customers.   Protection of innovative designs against competitors and knockoffs is an important part of their business strategy.  Such designs traditionally were protected by design patents. 

But the Supreme Court’s decision earlier this year in Star Athletica LLC v. Varsity Brands Inc., 137 S.Ct. 1002 (2017), seemingly expanded the scope of copyrightable designs that are incorporated into useful articles.  Subsequent district court cases further elucidate how that case is to be applied, and its effect on the scope of copyright protection.  These decisions point to a need to rethink protection strategies for product design, and consider increasing use of copyright protection.

Knockoffs: Creating an Effective Strategy on a Tight Budget

Part III: Securing the IP Foundation

This is the third in our four-part series about developing an effective strategy to deal with knockoffs and counterfeits when faced with a limited budget.  In this post, we discuss how to ensure the company has a proper IP foundation well before embarking on enforcement. 

For a number of reasons, having a proper IP foundation is crucial – but one reason which runs counter to most people’s thinking stands out above all.  In American law, in the absence of a positive right, copying is both permitted and encouraged.  

No less than the United States Supreme Court has opined: “in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.”

Luxury goods companies generally rely upon four types of IP.   We outline here the due diligence needed for each.

Knockoffs: Creating an Effective Strategy on a Tight Budget

Part II: Prioritizing Among the Problems

This is the second in our four-part series about developing an effective strategy to deal with knockoffs and counterfeits when faced with a limited budget.  

The first post detailed how to assess the scope of the problem in the marketplace, create a list of sources of knockoffs, and categorize them by type and by harms they cause your company.  In this second post, we consider how to use this categorized list to prioritize dealing with the different knockoffs your company faces.  

Missed Opportunities to Clarify Analyses for Design Patents

In a pair of recent decisions, issued two weeks apart, the Court of Appeals for the Federal Circuit (CAFC) delved further into the thicket of design patent issues in attempting to clarify how one is to determine whether a design patent has been infringed.  One might think that determining whether a design patent has been infringed should be a relatively easy endeavor.  Yet, the CAFC’s two most recent forays into design patent jurisprudence demonstrate, again, that litigants and the courts continue to struggle with this issue.