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Trade Dress Trademarks - Secondary Meaning, Inherent Distinctiveness, Packaging v. Design

Posted Thursday, June 4, 2015 by Daniel Mills

The Supreme Court has found if trade dress or a feature of it “is essential to the use or purpose of the article or if it affects the cost or quality of the article,” then it is functional and not eligible for trademark protection. Functionality is merely the first hurdle to clear on the path to registering a trademark for trade dress.

The second hurdle depends on what category of trade dress is in question. In 2000, the Supreme Court divided trade dress in two categories:

  • “Product-Design” trade dress which covers a product’s shape, configuration, or other design features

  • “Product-Packaging” trade dress which looks at the layout, color, graphics, and combination or arrangement thereof on a product’s packaging

In order to protect a product’s design trade dress with a trademark, the design must have acquired secondary meaning even if it is found to be inherently distinctive. Obtaining secondary meaning requires a period of time that is sufficient to create an association in the consumer’s mind between the design and the producer of the goods. Not only does this require time, measured in years, but the party seeking the trademark must show secondary meaning through extensive use, marketing, and promotion. Enough marketing and promotion to demonstrate that a connection exists between the design trade dress and the producer in the mind of the average consumer. As a practical matter, this is the realm of big companies and big advertising budgets.

On the other hand, in order to trademark a product’s packaging, an applicant may show either that the packaging is inherently distinct or has acquired secondary meaning. The bar for inherent distinctiveness is markedly lower than secondary meaning. First, there is no time element required; meaning that packaging trade dress can be found inherently distinct at first use. In addition, the very concept of packaging a product to make it stand out from the competition is fundamental to marketing and packaging and does not require extra expense that is not already spent to create a unique packaging. In other words, any creative packaging may be developed to be inherently distinct for little or no additional cost.

Of course there are legal tests associated with both of these concepts, but I will cover in a subsequent post.

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Broadest Reasonable Interpretation Standard in Post Grant Review Proceedings

Posted Tuesday, May 26, 2015 by Jim Ruttler

When the Patent Office reviews issued patents in the new Post Grant Review Proceedings, they use the Broadest Reasonable Interpretation Standard. This means that they interpret the claim language in its broadest possible light consistent with the way that claims are interpreted during examination. This is a different standard than Courts use when reviewing issued patent claims. The Courts use the Phillips standard, which is essentially interpreting the claims in view of the specification and with a presumption of validity. The Phillips standard therefore is more narrow than the Broadest Reasonable Interpretation Standard. This matters because the broader the claims are interpreted to be, the easier it is to invalidate them with prior art.

The Broadest Reasonable Interpretation makes sense during examination because Applicants have the ability to amend the claims to clarify any potential ambiguity. The intent of examination is to produce clear and unambiguous claims and so examining them with a broad view assists in satisfying this goal.

The Phillips standard for issued patents also makes sense. Patents are presumed valid once issued and there is limited opportunity to amend the claims once a patent has issued. Furthermore, it is undesirable for a patent to cover more than what has been invented, so having claims interpreted narrowly in view of the specification furthers these goals.

Now, with respect to the Post Grant Review proceedings, it makes absolutely no sense to interpret the claims under the Broadest Reasonable Interpretation Standard. First, examination has been completed and patents are supposed to enjoy a presumption of validity. Second, there is no (very limited) opportunity for amendments to the claims. Third, the Courts are using a completely different standard when potentially simultaneously reviewing the same patent claims.

Using this broad standard, the Patent Office has been invalidating claims and an astonishingly high percentage. Yes, the same Patent Office that is granting patents is turning around and invalidating the same patents. All hope is not lost, however, as it appears that the chorus for change is growing louder and louder with more large patent owners realizing the significance of the problem.

Until such time that the standard changes, it is wise to employ a defensive strategy such as pursuing multiple patents, drafting narrow dependent claims, and maintaining pending applications.

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PTAB Denies Request to Stay Pending Applications

Posted Wednesday, May 13, 2015 by Jim Ruttler

The Patent Trial and Appeals Board issued an order in an Inter Partes Review proceeding this past week that provides a clue on how to defend against attacks on existing patents. The IPR system was set up in the America Invents Act and has been widely criticized by patent holders because it has made it easier for infringers to challenge issued patents. Once an IPR is initiated by the Patent Office it results in invalidation most of the time. So, much discussion has centered on how to appropriately defend against such patent challenges. As I said, the Board has now provided a good clue: make sure to keep an application pending at the Patent Office once your patent issues.

In IPR2014-01240, the Petitioner successfully initiated an IPR challenge against the patent owner. However, the patent owner also had another set of applications pending at the Patent Office. The Petitioner got the idea to petition the Board to stay examination of the pending patent applications to prevent them from issuing. To which the Board responded that those pending applications were outside the jurisdiction of the Board and untouchable until after they issued.

This order means that the patent owner can see how the IPR plays out before taking an allowance in the pending patent applications. Should the IPR invalidate the patent owner’s claims, amendments can be made to the pending patent applications to avoid the same outcome.

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Pending Patent Reform Bills

Posted Friday, May 8, 2015 by Jim Ruttler

A number of patent reform bills are pending in congress. Here is a brief summary of each. The INNOVATION ACT includes fee-shifting provisions where the loser of a patent infringement suit pays for the opposing side’s legal fees. Also included is a provision for courts to stay litigation against a customer if a lawsuit is better directed at a manufacturer. This Act is still in committee.

The TROL ACT requires that patent demand letters not be in bad faith and not include false or misleading statements. This act would also authorize states to bring actions and would preempt existing state laws relating to assertion of patent rights. This Act has been approved by committee and is now before the full House of Representatives.

The INNOVATION PROTECTION ACT would allow the Patent Office to keep its collected fees and end fee-diversion to other parts of the government.

The STRONG PATENTS ACT would make some changes to the new post-grant review proceedings at the Patent Office. It would require that issued patents be presumed valid. The Act would also end Patent Office fee diversion and curtail fraudulent/misleading demand letters.

The PATENT ACT would provide for higher pleading standards, allow for customers to stay litigation in favor of manufacturers, and direct the Patent Office to provide information on patent ownership about patents involved in disputes.

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Functionality and Trade Dress Trademarks

Posted Tuesday, April 28, 2015 by Daniel Mills

There are two essential elements when it comes to getting a trademark for a product’s design or in Trademark lingo “product configuration”. The first element, is that the shape or configuration must indicate the source of the goods or services. This is a requirement of every trademark whether it is a word or logo trademark. The other element is that the design must NOT be functional. There is another crucial element that the product’s design is distinctive, which will be the subject of another post, but one must overcome the functionality hurdle before answering the inherently distinctive question.

Whether the design is functional or not is more complicated than one might think. This post is to help sort out the basics of this distinction and provide a little bit of guidance to you if you are thinking about trademarking your product design.First, it is helpful to understand that there are three levels of functionality:

  • Nonfunctional
  • De Facto Functional
  • De Jure Functional

Nonfunctional is pretty simple, the design of the product or packaging cannot be utilitarian in any way. It must have no function. For example, if it is round, then it could have just as easily been square. The reason it is round is because of the look. The reason it is round can’t have anything to do with round making it better in any way.

De Facto functional is when the shape or configuration is involved with the function of the product. A bottle of Coke® does function to hold the beverage for consumption, not to mention, keeping your hands from getting sticky. The shape of the bottle could be square however and still achieve the same function. The distinct shape doesn’t add to or subtract from the true function of a bottle.

De Jure functional means that the design or configuration is functional as a matter of law. In other words, it meets a standard of functionality that has been determined by courts over the years. Functionality is now part of the Lanham Act Section 2(e)(5) in the list of reasons for refusal. If the product configuration or its packaging design is superior to other available designs for its intended purpose and, provides a competitive advantage, it is de jure functional. So if the bottle of Coke’s curvy design helped keep it carbonated longer, taste better, colder, etc., then it would be de jure functional.

When it comes to trademark registrability for product shape, noted trademark attorney and blogger John L Welch begins with these three questions:

  1. Does the configuration or feature have utility? If yes, proceed to the next question. If no, the feature is ornamental and may be registrable. If the answer is no, you still must show acquired distinctiveness, but again, more on that in my next post.

  2. If the configuration or feature has utility, is the shape the only one that will work? If no, you may be eligible for a design patent.

  3. Even if there are alternative designs that will work, a product configuration or feature may be unregistrable as a trademark – i.e., de jure functional – if the design is “essential to the use or purpose of the device or … affects the cost or quality of the device.”

As with anything in the law, the specific details of any case will be the most important factors in determining the outcome, but these questions are great place to start the analysis. To read John L. Welch’s post on this topic, click here.

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