by Dennis Crouch
In a earlier publish, I examined the essential difficulty of comparability prior artwork that emerged from the dispute between Columbia Sportswear and Seirus. This publish will concentrate on one other key difficulty from the case – the relevance of logos in design patent infringement evaluation.
The Federal Circuit’s pair of selections present steering on how logos issue into the design patent infringement inquiry, and start to tease-out variations in coverage issues underlying design patent regulation versus trademark regulation. Because the court docket made clear, whereas logos are sometimes key for avoiding client confusion about product supply within the trademark sense, the absence of supply confusion doesn’t essentially preclude a discovering of design patent infringement. Nonetheless, decorative logos discovered on the accused product can nonetheless be related as visible distractors within the means of evaluating similarities and variations between the claimed design and accused design.
Design Patent Infringement vs. Trademark Infringement
The requirements for proving design patent infringement and trademark infringement differ considerably relating to the relevance of client confusion about product supply.
For trademark infringement below the Lanham Act, probability of client confusion is a key requirement. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). The touchstone is whether or not odd customers within the related market are more likely to be confused in regards to the supply of the products. Logos and different supply identifiers play an essential position on this evaluation. A emblem prominently displayed on the accused items that’s clearly distinct from the plaintiff’s mark can weigh closely towards discovering a probability of confusion. See, e.g., Groeneveld Transp. Effectivity, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494 (sixth Cir. 2013) (“[The accused infringer] has in reality scrupulously prevented such confusion by selecting a starkly completely different emblem that it prominently shows on its [products] and on all its gross sales and advertising and marketing literature.”).
For design patent infringement, nonetheless, probability of client confusion is just not straight related. See Unette Corp. v. Unit Pack Co., 785 F.second 1026 (Fed. Cir. 1986) (“Chance of confusion as to the supply of the products is just not a needed or acceptable issue.”). The Federal Circuit has made clear that the only real take a look at is whether or not the claimed and accused designs seem considerably much like an odd observer, not whether or not customers will likely be confused about supply. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665(Fed. Cir. 2008) (en banc) (“[I]n accordance with Gorham and subsequent choices, we maintain that the ‘odd observer’ take a look at ought to be the only real take a look at for figuring out whether or not a design patent has been infringed.”).
In essence, whereas each analyses invoke an “odd client”, the design patent take a look at focuses solely on visible similarity absent any real-world market concerns and asks whether or not the design has been replicated. The trademark take a look at deeply analyzes real-world situations and precise client viewpoints on supply confusion. This results in divergent remedy of logos and probably divergent outcomes.
On their face, each the design patent and trademark infringement checks invoke rules of confusion. The odd observer take a look at asks whether or not the resemblance between designs would “deceive” an observer, “inducing him to buy one supposing it to be the opposite.” Gorham Co. v. White, 81 U.S. 511 (1871); see additionally 35 U.S.C. § 289 (“colorable imitation”). And the probability of confusion take a look at straight asks whether or not customers would possible be confused in regards to the supply of products. The overt references to “deception,” “imitation” and “confusion” create threat that the separate doctrines could possibly be conflated or misapplied. This underscores the necessity for precision in explaining that design patent infringement doesn’t contemplate real-world client views, whereas client viewpoints are paramount in trademark evaluation. The linguistic parallels make delineating these distinctions much more essential.
Whereas the Federal Circuit has characterised design patents and emblems as distinct doctrines, in observe they considerably overlap in defending product designs that function supply identifiers. Sure product design options could perform concurrently as decorative, novel designs eligible for design patent safety and as source-identifying commerce gown. For instance, a singular form for a purse or sneaker could qualify for a design patent primarily based on its ornamentality whereas additionally indicating supply as commerce gown.
What which means is that design patents are sometimes used to guard model identifiers as business supply signifiers. However, are in a position to take action while not having to fulfill the necessities of commerce gown or its extra substantial truthful use and non-functionality doctrines. Within the case of the wavy reflective inside lining — that clearly has trademark which means in my thoughts (as a purchaser of winter gloves). And, it’s that market which means that possible serves because the true foundation of the lengthy operating lawsuit. So design patents will typically grant backdoor trademark-like safety, encompassing design elements that convey supply identification and market which means. In the end, whereas the doctrines have distinct necessities on paper, in observe their protections considerably overlap for sure product designs functioning as visible supply identifiers.
Columbia Sportswear v. Seirus
This distinction emerged as a key difficulty within the dispute between Columbia Sportswear and Seirus. Columbia accused Seirus of infringing its design patent masking a wavy sample design to be used on warmth reflective materials. Seirus argued that variations between its design and Columbia’s patented design – particularly Seirus’s outstanding and repeated emblem – ought to weigh towards discovering infringement.
On abstract judgment, the district court docket disregarded Seirus’s emblem completely primarily based on L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.second 1117 (Fed. Cir. 1993), and located infringement. In Columbia I, the Federal Circuit held this was error:
Our precedent doesn’t prohibit the actual fact finder from contemplating a decorative emblem, its placement, and its look as one amongst different potential variations between a patented design and an accused one.
Columbia Sportswear N. Am., Inc. v. Seirus Modern Equipment, Inc., 942 F.3d 1119 (Fed. Cir. 2019).
The appellate court docket defined that, whereas labeling a replica doesn’t keep away from design patent infringement, logos nonetheless issue into the holistic comparability of the claimed and accused design appearances. Id. The court docket thus vacated abstract judgment and remanded.
On remand, the district court docket instructed the jury on the odd observer take a look at for design patent infringement. However, the district court docket declined Columbia’s request to instruct that client confusion was irrelevant and that probability of confusion needn’t be discovered. The jury returned a verdict of non-infringement.
In Columbia II, the Federal Circuit affirmed the jury directions given had been legally appropriate. Columbia Sportswear N. Am., Inc. v. Seirus Modern Equipment, Inc., No. 2021-2299 (Fed. Cir. Sept. 15, 2023). The court docket sympathized with issues that the odd observer take a look at’s language referencing deception risked conflation with ideas of client confusion. But it surely discovered no reversible educational error, reiterating that logos stay related to the general similarity evaluation:
[J]ust as a result of customers may not be confused about an accused product’s supply, that alone wouldn’t preclude an odd observer from deeming the claimed and accused designs comparable sufficient to represent design-patent infringement.
Id. (emphasis in unique; citing Braun Inc. v. Dynamics Corp. of Am., 975 F.second 815 (Fed. Cir. 1992)).
These choices provide essential perception and steering for attorneys within the trenches, and in addition spotlight a must reconcile the doctrines to make sure that they’re serving essential societal targets.