SoCal IP Law Group

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Category Archives: Trade Dress

SoCal IP Institute :: October 13, 2014 :: Trade Dress Includes “Look and Feel” of Website; Delaware judge unseals $1.4 million Judgment

Our weekly SoCal IP Institute meeting on Monday, October 13, 2014 will be a discussion of a recent N.D. Cal case discussing trade dress and a decision by a federal judge to unseal an Order to expose an extortionist company:

Ingrid & Isabel, LLC v. Baby Be Mine, LLC et al., No. 13-cv-01806 (N.D. Cal Oct. 1 2014) (available here).  Both parties sell belly bands for pregnant women.  The crux of  the suit was that defendants copied plaintiff’s trade dress — namely, the “look and feel” of its website.   The court concluded that the look and feel of a website could constitute a trade dress protected by federal trademark law.

In Summit Data Systems, LLC v. EMC Corp. et al, No. 10-749-GMS (Sept. 2, 2014) (available here), a federal judge has unsealed his $1.4 million Judgment as means of deterring “reckless and wasteful litigation” whereby Acacia Research subsidiary Summit Data Systems was suing companies for patent infringement primarily to extort nuisance settlements.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 13, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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SoCal IP Institute :: October 6, 2014 :: Inequitable Conduct and Acquired Distinctiveness in the TTAB

Our weekly SoCal IP Institute meeting on Monday, October 6, 2014 will be a discussion of a recent inequitable conduct case and a TTAB decision on acquired distinctiveness of trade dress. Brief synopses of the cases appear below.

American CalCar, Inc. v. Honda, No. 2013-1061 (Fed. Cir. Sept. 26, 2014) (available here).  Calcar appealed from a decision of the Southern District of California that the asserted three patents, related to in-car navigation systems, were unenforceable for inequitable conduct before the U.S. Patent and Trademark Office.  In short, the inventor, who also prepared the patent applications, failed to disclose that he had seen and photographed a Honda-created navigation system before filing.  Honda alleged that the details that he had seen in the Honda system were exactly those details that he eventually claimed in the asserted patents.  The case proceeded to trial.  After trial, the court found the two otherwise-valid patents unenforceable for inequitable conduct.

During the appeal process, the Therasense case was decided, altering the standard for finding equitable conduct.  The case was remanded for additional briefing on “materiality” and the district court still found that “but for” the withholding of the information, the patent would not have issued and that the inventor had specific intent to deceive the Patent Office.  This case is somewhat strange because the district court found that a particular limitation related to the interface was not disclosed in the Honda prior-art system, but still found the “but for” causation.  That is, the prior art did not expressly disclose one of the limitations, but was still sufficient for a finding of materiality because what it did disclose would “perform the same function” as the claim limitation that was not otherwise shown. As to intent, the inventor disclosed the existence of the earlier system, but did not disclose his photographs and other notes regarding the system.  Thus, he acted with the specific intent required and the district court’s decision finding all three of the asserted patents unenforceable for his inequitable conduct was affirmed.

In re Koninklijke Philips Electronics N.V., Ser. No. 85092079 (Sept. 26, 2014) (available here). Philips sought to register the “base assembly” of its electric toothbrushes on the Principal Register as trade dress.  It has a series of indentations around the base of the head of the toothbrush.  After a refusal to register, the TTAB affirmed finding that 10 years of continuous use, without “look-for” advertising, and in spite of voluminous sales was insufficient to demonstrate that the product had obtained “acquired distinctiveness” such that the consuming public associated the base assembly with the Philips brand.  The examining attorney’s refusal to register was affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 6, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: September 30, 2013 :: Recent Trade Dress Case Law

Our weekly SoCal IP Institute meeting on Monday, September 30, 2013 will be a discussion of two recent Trade Dress cases.  The first case is from the Sixth Circuit:

Groeneveld Transport Efficiency, Inc. v. Lubecore International, Case Nos. 12-3545/3576 (6th Cir. Sept. 12, 2013) (available here).   The key issue in this case is whether a company can use trade-dress law to protect its functional product design from competition with a “copycat” design made by another company where there is no reasonable likelihood that consumers would confuse the two companies’ products as emanating from a single source.  The Sixth Circuit held it cannot, stating that trademark law is designed to promote brand recognition, not to insulate product manufacturers from lawful competition.

The second case is is Urban Group Exercise Consultants, Ltd. v. Dick’s Sporting Goods, Inc. (U.S.D.C. March 8, 2013) (available here), is a recent opinion where plaintiff Urban, a manufacturer of trampolines,  failed to survive a 12(b)(6) motion to dismiss motion brought by Dick’s, regarding its trade dress cause of actions.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 30, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: September 16, 2013 :: Design patents and Trademark Infringement

Our weekly SoCal IP Institute meeting on Monday, September 16, 2013 will be a discussion of a recent Federal Circuit decision regarding design patents and a First Circuit decision regarding trademark infringement. Brief synopses of the cases appear below.

Dorpan, S.L. V. Hotel Melia, Inc., Case No. 12-1679 (1st Cir. August 28, 2013) (available here).  This is a trademark infringement case between two hotels using the mark “Melia” in Puerto Rico. Plaintiff Dorpan has several registered marks using the name “Melia” since at least the late 1990s. Defendant Hotel Melia has operated a hotel named Hotel Melia in Ponce, Puerto Rico for more than a century. Defendant has never registered its mark with the USPTO. In 2007, Dorpan opened a hotel called “Gran Melia” about eighty miles from Ponce. The district court ruled on summary judgment that the marks could co-exist. On appeal, the First Circuit vacated the district court’s decision and held that the marks cannot co-exist in Puerto Rico without creating a likelihood of confusion among consumers.

High Point Design LLC v. Buyer’s Direct, Inc., Case No. 12-1455 (Fed. Cir. September 11, 2013) (available here). On a summary judgment motion, the district court held that BDI’s design patent was invalid based on the fact that it was obvious in light of the prior art and because it was primarily functional rather than ornamental. The district court also dismissed BDI’s trade dress claims. On appeal, the Federal Circuit reversed the district court’s decision as to the grant of summary judgment of invalidity finding that the district court made errors in its obviousness and functionality analysis. The Federal Circuit also vacated the district court’s dismissal of BDI’s trade dress claims and remanded to the district court to reconsider its decision denying BDI’s request to amend the pleadings.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 16, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: February 13, 2012 :: Functionality in Trade Dress and Certification Marks

We will be discussing two recent cases during our weekly SoCal IP Institute meeting on Monday, February 13, 2012. The first is a 9th Circuit case involving trade dress and the second is a Trademark Trial and Appeal Board (TTAB) case seeking cancellation of a certification mark.  Brief synopses are presented below.

Secalt S.A. v. Wuxi Shenxi Constr. et al., Case No. 20-17007, 11-15066 (9th. Cir. Feb. 7, 2012) (attached). Tractel manufactures and sells a traction hoist, typically used for construction and external maintenance of buildings.  Jiangsu, a Chinese competitor, manufactures a very similar hoist.  Tractel brought suit claiming that Jiangsu’s hoists infringed their trade dress.  The complaint was based upon trade dress infringement under the Lanham Act, federal unfair competition and related stat law trade dress and unfair competition claims.  The district court granted a summary motion by Jiangsu finding that Tractel failed to demonstrate that the alleged trade dress was nonfunctional.  The district court also awarded fees and costs to Jiangsu as an “exceptional” case under the Lanham Act.

In order to support a claim for trade dress infringement of an overall product configuration, “the entire design must be nonfunctional.”  Leatherman Tool Grp. v. Cooper Indus., 199 F.3d 1009, 1012 (9th Cir. 1999).  Tractel claimed that the configuration of parts met at right angles to give a “cubist” appearance and that the fins added to the exterior of the motor were intended to be “modern.”  The 9th Circuit found, citing Leatherman, that these elements that may or may not be purely for appearance do not save the otherwise functional nature of the arrangement of parts.  Instead, the entire configuration of parts must be nonfunctional.  Clearly, this was not the case.

Tractel also argued that the district court should have considered the Disc Golf factors:

(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.

Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998).

The 9th Circuit considered each factor and found that Tractel had not overcome its burden to show that the design was nonfunctional.

The 9th Circuit then considered the district court’s grant of attorney’s fees and costs as an exceptional case.  Because Tractel did not provide any reasonable ground to support its trade dress claim, even after two years of discovery.  At the point the summary judgement motion was filed, the 9th Circuit reasoned, it should have been well aware that it would be unable to prevail on the claim.  The failure of proof, coupled with Tractel’s insistence on asserting its claim moved this case, the 9th Circuit reasoned, from a mere failure to prevail to an exceptional case.  However, the attorney’s fees were remanded for confirmation that they were “reasonable” because the district court failed to make a finding on that issue.  A portion of the costs were also remanded as unreasonable or unsubstantiated.

Swiss Watch Int’;. v. Swiss Watch Indus., Cancellation No. 92046786 (TTAB Jan. 30, 2012 (attached).  Swiss Watch Int’l. (Int’l.) sought cancellation of the “SWISS MADE” and “SWISS” certification marks owned by the Federation of Swiss Watch Industry (Federation). These marks were to be used on goods certified by Int’l. as having a geographic origin in Switzerland.  Int’l. sought cancellation based upon a likelihood of confusion with their own marks (applications pending for “SWISS WATCH INTERNATIONAL” and “SWISS LEGEND”), alleged misrepresentations that led to registration, fraud on the U.S. Patent and Trademark Office, a lack of legitimate control over the marks, because Federation failed to police the use of the mark, because Federation discriminates in granting use of its mark and because the marks SWISS and SWISS MADE have become generic.

The TTAB dealt with some evidentiary issues and then moved on to the substance of the dispute.  Federation was tasked by the Swiss government with ensuring that manufacturers of watches and clocks claiming to be “Swiss,” actually satisfy a number of requirements, including that their products are actually made in Switzerland.  The first claim was that Federation allows the mark to be used in ways other than as certifications.  Examples included use by “Wenger Swiss Military” and “Swiss Army” among others.  The TTAB pointed out that this is not using the mark, but using each of those parties individual marks.  The TTAB addressed the allegedly large-scale failure of Federation to police the mark by stating that it was clear from the evidence that Federation has undertaking large-scale efforts to confirm that entities adhere to its standards.  While not complete or perfect, Federation’s control was adequate.

Int’l.’s next argument is, essentially, that it disagrees with Federation’s requirement that the watch movement be cased and inspected in Switzerland.  The TTAB pointed out that disagreement with the certification standards has nothing to do with the Board.  It is not the Board’s purpose to cast judgment upon the requirements for certification, but merely to confirm that the third party has standards and adheres to them.  The TTAB also dismissed the argument that the marks had become generic.  To the contrary, the “Swiss” watch carried significant positive public perception and, though used by some non-Swiss companies, that was not diminished in its meaning for quality and geographic origin.  The argument that Federation committed fraud in procuring the registration was based upon the failure of the standards document submitted in the application to use the phrase “Swiss Made.”  Instead it used the word “Swiss.”  The TTAB found this argument unpersuasive.  Accordingly, the petition to cancel the two Federation registrations was denied on all grounds.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 13, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.