DESIGN PATENT INFRINGEMENT OVERVIEW
On September 22, 2008, the intermediate appellate court for patent appeals, the Court of Appeals for the Federal Circuit (just below the US Supreme Court), held in the case of Egyptian Goddess v. Swisa, that the two-test approach that the court had been using to determine design patent infringement had been one test too many. The first test was and remains what is called the “ordinary observer” test of the 1871 US Supreme Court case of Gorham v. White. The second test was a relatively recent test the Federal Circuit was using once the alleged infringing item was found to be substantially identical, by a hypothetical ordinary observer, to the patented design. This second test was called the “point of novelty” test. The Federal Circuit held in Egyptian Goddess that the point of novelty test should no longer be used and that under the “ordinary observer” test: in order for the accused design to infringe the patented design, the accused design must reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, inducing him to purchase one supposing it to be the other.
TRADE DRESS & TRADE DRESS INFRINGEMENT OVERVIEW
Trade dress may be described as the total image and overall appearance of a product as reflected in features such as size, shape, color, color combinations, design of a label, texture, graphics or sales techniques.
When characterizing a particular trade dress of a product and assessing whether infringement of that trade dress has occurred, consideration is given solely to the aggregate of all the features that comprise the trade dress and not a subset of the features. Accordingly, a business or manufacturer may use particular elements or features of the trade dress of a competitor (senior user) so long as a distinctive combination of trade dress features of the senior user is not copied (to the point of confusing customers as to the source of the product having the copied features).
Is the Senior Trade Dress Protected?
As may be compared with the ornamental aspects of design patent law, the degree of non-functionality and distinctiveness present in the trade dress is what determines the scope of the trade dress protection. This allows the owner of a particular trade dress to protect those distinctive product features that are not necessary to the use or purpose of the product, but rather serve to identify the manufacturer of the product AND (similar to the theory behind design patents) this limitation in scope prevents the owner from monopolizing a product via trade dress by claiming features that are necessary for the use or purpose of the product.
Is the Senior Trade Dress Infringed?
Infringement of the protected trade dress of a senior user requires a finding of likelihood of confusion. Under the Trademark Law Revision Act of 1988 and controlling cases: A likelihood of confusion exists if the owner of trade dress is entitled to trade dress protection AND the allegedly infringing trade dress is likely to cause confusion, or to cause a mistake, or to deceive as to the affiliation, connection, or association of such entity with another entity, or as to the origin, sponsorship, or approval of the entity’s goods, services, or commercial activities by another entity. (See the Egyptian Goddess case for the parallels in this analysis present in design patent infringement.)
Several factors are assessed by a federal trial court in determining whether the junior product is indeed infringing the trade dress of a senior product. While design patent law precedent flows through only one intermediate appellate court (i.e, the Federal Circuit), federal trademark law develops on a circuit-by-circuit basis. It may not be surprising to the reader that not all federal appellate circuits follow the same list for finding likelihood of confusion, but below are some common factors that are weighed:
1. Strength of the Trade Dress
The higher the level of distinctiveness of the trade dress and the higher its tendency to identify the goods sold as emanating from a particular source (even if the source is unknown to the consumer), then the stronger the trade dress may be found by a court..
2. Degree of Similarity – The Subjective Eyeball Test
Using the overall appearance akin to design patent analysis, one may ask: Does the combination of all the features which comprise the trade dress of the junior product create the same general overall impression of the trade dress of the senior product package – and, in doing so is the junior product likely to cause confusion as to the source of the product?
3. Proximity of Products & Channels of Distribution and Marketing
Consider whether the junior product and senior product differ in content, geographic distribution, market position, and audience appeal and ask: is it likely that consumers will assume either that the junior goods are associated in some way with the senior user or are made by the senior user?
If the senior user and the junior user distribute their products via the same retail outlets and market their products through the same channels or through similar advertising, a greater likelihood of confusion exits. Particularly, if the senior user and the junior user sell their products from the same retail outlets to the same purchasers, then there is a greater likelihood of confusion.
4. Likelihood that the Senior User Will Bridge the Gap
The trial court may assess whether the senior user is likely to move into the market already occupied by the junior user. Of course, if the products are already competitive, then there is no gap to be bridged.
5. Evidence of Actual Confusion
Through gathering individual instances of consumer confusion and/or survey evidence of consumer confusion, actual confusion can be measured. For evidentiary purposes, actual confusion for inexpensive or impulse purchases may be established through a showing of relatively low numbers of instances of actual confusion.
6. Intent of the Junior User’s Use of the Trade Dress
If the junior user (i.e., later-in-time user) intentionally chose product features which closely resemble the features of an established manufacturer or business, that act alone may be sufficient to establish bad faith intent on the part of the junior user (to cash in on the senior user’s goodwill or reputation).
7. Sophistication of the Relevant Consumer Market
The less involved the purchase, the more likely the consumers will be confused by the similarities in the trade dress. So, impulse items tend toward a likelihood of confusion when compared with purchases requiring a prudent review of performance specifications or trade journals.
