Exceptional service Dykema delivers Trends in Product Configuration

Exceptional service. Dykema delivers. Trends in Product Configuration Trademark Case Law Lightning Round Design Law 2018 By: Jennifer Fraser California | Illinois | Michigan | Minnesota | Texas | Washington, D. C. www. dykema. com

Some Recent Cases and Considerations in Pursuing Protection • Issues Encountered in Registering Product Configuration Trademarks • Issues Encountered in Enforcing Product Configuration Trademarks • When and If a Trademark Registration is Appropriate 2 Exceptional service. Dykema delivers.

Relevant Statutes • 15 U. S. C. § 1052(e)(5) functionality • 15 U. S. C. § 1052(f) – acquired distinctiveness • Other statutes involving presumptions afforded registration, incontestability, basis for challenging registrations such as fraud 3 Exceptional service. Dykema delivers.

Functionality Trade dress or product configuration cannot be registered if it is functional, if it is “essential to the use or purpose of the article or it affects the cost or quality of the article. ” Qualitex Co. v. Jacobson Prods. Co. , 514 U. S. 159, 165 (1995) 4 Exceptional service. Dykema delivers.

Wal-Mart Stores, Inc. v. Samara Bros. , Inc. A product configuration such as this one is not inherently distinctive and, if non functional, may be registered on the Principal Register only upon a showing of acquired distinctiveness under Section 2(f). See Wal-Mart Stores, Inc. v. Samara Bros. , Inc. , 529 U. S. 205, 54 USPQ 2 d 1065, 1068 69 (2000). Wal-mart applies to product packaging and product configuration 5 Exceptional service. Dykema delivers.

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Examples – Which do you recognize? 7 Exceptional service. Dykema delivers.

™™ 8 Exceptional service. Dykema delivers.

™™ 9 Exceptional service. Dykema delivers.

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™™ 11 Exceptional service. Dykema delivers.

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Traf. Fix Devices, Inc. v. Marketing Displays, Inc. , 532 U. S. 23 (2001) • No protectable trade dress for dual spring design because design is functional and covered by 2 expired utility patents 13 Exceptional service. Dykema delivers.

Precedential Ex Parte Case at TTAB In re Change Wind Corp. , 123 USPQ 2 d 1453 (TTAB 2017) ™™ 14 Exceptional service. Dykema delivers.

Functionality Factors • (1) the existence of a utility patent disclosing the utilitarian advantages of the design; • (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; ™™ • (3) the availability to competitors of functionally equivalent designs; and • (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. In re Morton-Norwich Prods. , Inc. , 671 F. 2 d 1332 (CCPA 1982) 15 Exceptional service. Dykema delivers.

Trademark Application and Figures in Patent 16 Exceptional service. Dykema delivers.

Extensive Discussion of Utility Patent – pp. 1456 -1461 PTO inquired about the utility patent and discussed claims At least 8 Office Action Responses/Requests for Reconsideration TTAB: As set forth in pertinent part, the features in the applied for mark (helical wings and housing enclosing frame structure) are specified in the twenty one claims of the invention: ™™ A wind turbine, comprising: a frame structure; a housing enclosing said frame structure. . . helical swept wings that rotate to capture wind throughout a circumference of the rotary wing assembly from both windward and leeward sides so that a torque input spreads evenly to mitigate damaging harmonic pulsations that would otherwise arise without the torque input spreading evenly. . . 17 Exceptional service. Dykema delivers.

Acquired Distinctiveness • To support a claim of acquired distinctiveness, an Applicant may submit evidence of “copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source). ” In re Steelbuilding. com. 415 F. 3 d 1293, 75 USPQ 2 d 1420, 1424 (Fed. Cir. 2005) 18 Exceptional service. Dykema delivers.

Evidence of Acquired Distinctiveness in Change Wind • Nominal sales and advertising • Five years of substantially exclusive and continuous use insufficient • “Look for” ad with no details of distribution/exposure/effect (i. e. , discussing the “unique configuration of wings over a conical tower”) • Limited media coverage without details 19 Exceptional service. Dykema delivers.

Change Wind Illustrates Increasing Difficulty at PTO • Extensive and complex prosecution on functionality issue • Insufficient evidence of acquired distinctiveness • Opened the door on many bases to challenge, including fraud for Declarations and representations to PTO • Illustrates the need to have significant evidence, anticipate before filing the patent application 20 Exceptional service. Dykema delivers.

Considerations • Assess pros/cons of registration, future enforcement efforts • Cost and Expense – Prosecution, surveys, experts, wide range of relevant information to be introduced/proved • Risk of Enforcement – PTO record, each Declaration • Maintaining Rights – Need for enforcement while acquiring distinctiveness and after registration 21 Exceptional service. Dykema delivers.

Allegations of Fraudulent Procurement? • Fraud is high burden but are product configuration registrations more vulnerable? • See Solo Cup Operating Corp. v. Lollicup USA, Inc. , Case No. 16 C 8041, 2017 U. S. Dist. LEXIS 74922 (N. D. Ill. May 17, 2017) (dismissing fraudulent procurement claims) • Lollicup argued Solo Cup misrepresented or misled the Examiner about functionality based on oral and written statements • Court discussed advocating for a result by highlighting favorable facts, Examiner can review, dismissed claims • Look at Declaration statements “characterize the configuration in broad terms that are not demonstrably false nor directly contrary to the patent disclosure. ” • What if the PTO statements were more detailed? 22 Exceptional service. Dykema delivers.

Enforcement of Registered and Unregistered Trade Dress • Blumenthal Distributing Inc. d/b/a Office Star et al. v. Herman Miller, Inc. , Case No. 14 CV 01926, 2017 U. S. Dist. LEXIS 121041 (C. D. Cal. Aug. 1, 2017) 23 Exceptional service. Dykema delivers.

Accused Chairs 24 Exceptional service. Dykema delivers.

AERON – Registered and Unregistered 25 Exceptional service. Dykema delivers.

Decision • Herman Miller prevailed on the registered and unregistered EAMES chair designs (including for dilution) • Registered and unregistered AERON chair design was found functional by jury • Jury trial – hard to know the effect of the presumption but still the same evidence is proffered • HM argued that PTO decision to register confirms lack of functionality, • Piggyback claims for unregistered design • Willful infringement 26 Exceptional service. Dykema delivers.

Functionality • EAMES – – 2 utility patents but testimony do not relate to appearance • AERON – – Office Star –evidence of various discrete components functional including patents – HM claimed irrelevant because do not show overall shape is functional – Jury finding supported because individual components are relevant to functionality as a whole and evidence presented on nearly every trade dress element – Other testimony features for comfort and elements adopted for structural reason 27 Exceptional service. Dykema delivers.

Other Options to Consider • Skip the registration? – No presumption but it is rebuttable anyway and will likely have similar proof at trial – Risks from Record from PTO – fraud claims, Declarations to be challenged – Do you need registration for Customs or another issue? • Still need to detail trade dress and lack of functionality in Complaint – see Bubble Genius LLC v. Smith, 239 F. Supp. 3 d 586 (E. D. N. Y. 2017) • Plan early on – pre patent filing, is it distinctive, not functional, corroborated by advertising • Design patent or copyright instead? • Other cases and recent trends 28 Exceptional service. Dykema delivers.

Questions Jennifer Fraser Member Dykema 1301 K Street NW Suite 1100 West Washington, D. C. 20005 T: (202) 906 8712 JFraser@dykema. com www. dykema. com 29 Exceptional service. Dykema delivers.