Registering Product Design and the Purposeful Limitation
2 min read
by Dennis Crouch
TBL Licensing v. Vidal (4th Cir. 2023)
The Timberland Boot commerce costume case is pending earlier than the Fourth Circuit, elevating some attention-grabbing questions concerning the position of product commerce costume vs design patents vs copyright vs utility patents.
Timberland boots have been first offered within the Nineteen Seventies with a novel design that shortly resonated with customers. The corporate has now offered greater than $1.3 billion of the boots within the US, with greater than $100 million in gross sales most years. The boot design is nicely acknowledged as an icon. The picture above isn’t an precise boot offered by the corporate, however one created by an AI with the immediate “timberland boot.”
In 2015 Timberland started the method of registering the boot design as a trademark. The proposed registration filings targeted on iconic components of the boot, together with the silhouette options proven above. However, the USPTO refused to register the mark. The examiner discovered that the design lacks secondary that means and can also be too purposeful. The TTAB affirmed, however solely targeted on the shortage of secondary that means. At that time Timberland filed a civil motion beneath 15 U.S.C. § 1071(b) in search of a courtroom order to register the design mark. The district courtroom sided with the USPTO, holding that Timberland had did not show (1) that the design was nonfunctional; and (2) that customers acknowledge the design as a novel supply identifier. The case is now pending enchantment earlier than the Fourth Circuit.
One of many USPTO’s key arguments within the case focuses on timing. Timberland boots have been available on the market for 50 years, and in accordance with the document the corporate has “by no means has demanded that rivals stop and desist from
promoting look-alike boots.” And, though numerous people acknowledge the look of Timberland boots, it seems that {the marketplace} is flooded with look-alike alternate options.
INTA has filed an amicus temporary in assist of Timberland arguing that the district courtroom erred in its performance evaluation. Somewhat than analyzing whether or not the boot design “as an entire” is purposeful, the District Courtroom incorrectly disectected the general look of the Icon Boot design into constituent components, with out addressing whether or not the mixture of components (even when individually purposeful) fashioned an entire that was extra than simply the sum of its components.
Learn the briefs right here:
