World Trademark Review

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Successful companies rely on the power of their trademarks, design rights, and brands to communicate the quality and distinctiveness of their products and services. With Finnegan’s proven track record in high-profile litigation and managing worldwide portfolios, in-house counsel at leading global corporations consistently look to Finnegan to handle their most complex, high-stakes trademark matters. To learn more, visit www.finnegan.com. United States

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Authors such as product packaging and product Julia Anne Matheson and Elizabeth D Ferrill configuration. Title 35 of the USC covers design patents. The United States is a party to the Paris Convention and the Madrid Protocol. It signed In the United States, a product design may the Hague Agreement in 2012, but has not yet be eligible for protection under trade dress (a implemented it. type of trademark) and design patents. Unlike more traditional trademarks, trade dress (which Unregistered designs includes both product configurations and Trade dress protection is available for marks product packaging) is generally not protectable that are not the subject of a federal trademark or registrable immediately on adoption. Rather, registration. Ownership of a federal registration to qualify for protection in the United States, a affords certain important presumptions in product configuration must be shown not only an enforcement action that are not available to be capable of acting as a source identifier, absent ownership of a federal registration. but also to have actually acquired secondary Unregistered trade dress claimants bear the meaning in the marketplace (ie, to have become burden of proving both the non-functionality recognised by consumers as a source identifier). and acquired distinctiveness of the asserted Conversely, to be eligible for a design patent, trade dress. the design of an article of manufacture must be The United States does not recognise new, original and ornamental. unregistered design patent rights.

Legal framework Registered designs US trademark law – the Lanham Act – is codified Who can apply? at Title 15 of the United States Code (USC). Title Trade dress: An application for trade dress 15 covers the protection of both traditional protection must be filed by the rights holder or trademarks and non-traditional trademarks, its attorney representative (ie, not a licensee). www.WorldTrademarkReview.com Designs: A Global Guide 2014 141 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Design patents: Most design patent consumer survey evidence demonstrating applications are filed by a representative on acquired secondary meaning in the behalf of the inventor or assignee. Unlike for marketplace. Registrants must also pay trademark applications, representatives must renewal fees to maintain their registration. be specially admitted to practise before the US Patent and Trademark Office (USPTO). However, Design patent: Expenses related to filing a inventors are permitted to file an application design patent application include: for their own design patent application directly • preparation of drawings or photographs; without a representative. • representatives’ fees in preparing the application; and What may be registered? • USPTO filing and issue fees (as of 2013, a Trade dress: Anything that is capable of serving minimum of $1,740, with additional fees as a source identifier and is not ‘functional’ is for late filings, certain petitions and time registrable as a trademark. ‘Traditional trade dress’ extensions). is understood to mean packaging labels, wrapping and containers used in product packaging. There are no renewal fees after the patent ‘Product configuration’ refers to the elements that issues. comprise the design of the product itself. Trade dress may be a combination of discrete elements Procedures acting together, provided that these elements, in Trade dress combination, serve a source-identifying function. Application: Where product packaging trade dress is sufficiently unusual to qualify Design patent: The United States recognises 35 as ‘inherently distinctive’, it is capable of classes of protectable articles of manufacture, registration immediately on adoption. Product including configuration trade dress (eg, the shape and • furniture; design of a product or the design of a restaurant • apparel and shoes; or retail store) is registrable on the Principal • personal care items; Register only once it is in use in US commerce • toys; and has acquired consumer recognition as a • games and sporting equipment; source identifier. Where a product configuration • textiles; is in use in the marketplace, but has not • paper goods; yet acquired secondary meaning, it may be • transportation and construction equipment; registrable on the Supplemental Register. A • medical devices; and registration on the Supplemental Register is not • graphical user interfaces and icons, both static entitled to the same presumptions of validity and animated. and non-functionality as apply to marks on the Principal Register. What are the costs? Trademark applications are examined Trade dress: Trade dress applications are for registrability on both procedural and generally more expensive than traditional substantive grounds. Section 2 of the Lanham trademark applications, as in addition to Act prohibits the registration of marks that: USPTO application fees of $325 per covered • consist of immoral, deceptive or scandalous class, they require: matter; • detailed drawings setting forth the claimed • consist of the flag, coat of arms or other elements; insignia of a nation or state; • a detailed description of the mark that • consist of a name, portrait or signature of a identifies each of the claimed elements; and living individual without his or her consent • a more involved and lengthy examination or of a deceased president of the United process. States without the consent of his widow; • are confusingly similar to an existing Product configuration applications, in registered mark; particular, may require submission of • are primarily geographically deceptively

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misdescriptive; or Design patent • are functional. Application: Design patent applications are examined by the USPTO for: Issues of functionality are of particular • novelty (35 USC § 102); importance in trade dress applications. • non-obviousness (35 USC § 103); and As noted above, trade dress applications • compliance with certain disclosure and must include a detailed description of the clarity requirements (35 USC § 112). elements claimed to comprise the trade dress, as well as a drawing of the mark clearly US design patents have a term of 14 years identifying those elements. from the date of issue (35 USC § 173). The application consists of figures, a brief Examination: Trademark applications filed description of figures, one claim and the signed with the USPTO are assigned to a trademark declaration of the inventors. examining attorney to assess their registrability In 2013 the United States changed from a on substantive and procedural grounds. Trade first-to-invent to a first-inventor-to-file system. dress applications are rarely granted without A design may be barred if the design was the USPTO raising any objections. Following patented, described in a printed publication or initial examination, the USPTO will issue one or in public use, on sale or otherwise available to a series of office actions detailing the additional the public anywhere in the world before the information required and/or substantive effective filing date of the application. There is issues affecting registrability. The applicant a one-year grace period for disclosures made has six months to respond to the issues raised by the inventor or by another party which by the USPTO in each office action. This will obtained the design from the inventor. continue until the mark is finally refused or, alternatively, is found registrable and published Examination: Much like the trademark for opposition. examination system, the assigned patent The USPTO does not differentiate between examiner will consider the application on trade dress applications and trademark substantive and procedural grounds. On applications in tracking months to registration. average 10 months after filing, the USPTO will In 2010 it took 10.5 months, on average, issue an office action rejecting, objecting to or from filing to registration or abandonment. approving the application. Depending on the Experience shows that trade dress applications, type of action, the period for response may be and in particular product configuration trade between one and six months. If the examiner dress applications, take longer to work their way issues a final rejection, the applicant may through the USPTO, as compared to traditional appeal to the USPTO Patent and Trial Appeals trademark applications. Board and eventually the US Court of Appeals for the Federal Circuit. On average, applications Cancellation: The USPTO will not remove issue 14.4 months from filing. or cancel a registration of its own accord During examination, applicants are required unless the registrant has failed to satisfy the to disclose any relevant prior art references declaration of use or renewal requirements. known to the inventors or the representative, Trade dress registrations are vulnerable to but a prior art search is not required. cancellation within five years of registration Applications may not have multiple distinct on multiple grounds, including functionality designs. If the USPTO determines that an and prior rights. After five years, a registration application contains more than one design, it can be challenged only on certain restricted will require the applicant to elect one design. grounds. Additionally, the registration can Applicants may file divisional applications on be challenged on abandonment grounds. the unelected designs. There is a presumption that the mark has Applicants may file additional applications been abandoned if it has not been used for – called continuation applications – based on a three years. The rights holder may rebut this pending application, provided that the subject presumption by showing intent to resume use. matter in the continuation application is www.WorldTrademarkReview.com Designs: A Global Guide 2014 143 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

disclosed in the prior application. sponsorship with the plaintiff’s trade dress. Design patents are enforceable 14 years In order to assert a successful trade dress from the date of issue. infringement claim, the plaintiff bears the burden of proving three elements: Post-grant procedures: US law permits a • ownership of a distinctive trade dress; number of options, including: • where the mark is not registered, that the • certificate of correction (35 USC §§ 254, 255) trade dress is not functional; and (for clerical or minor mistakes); • likelihood of confusion. • reissue (35 USC § 251) (to correct a defective drawing or specification); If the trade dress is the subject of a federal • ex parte re-examination (35 USC §§ 302-307) registration, the defendant bears the burden (initiated by a third party which has no of proving that the asserted trade dress is further role in the proceeding); functional. • inter partes review (35 USC §§ 311-319) (an Because trade dress can comprise a adversarial proceeding, limited to patents combination of elements, it must be defined and printed publications); and with great specificity. If the trade dress is • post-grant review (35 USC §§ 321-329) (an defined vaguely, it is difficult for the defendant adversarial proceeding with less limitations to adhere to an injunction and impossible on invalidity grounds). for the court to analyse the trade dress for distinctiveness. A defendant need not The costs vary considerably, depending on incorporate every element of a plaintiff’s trade the procedure. dress to be found infringing where likelihood of confusion can be demonstrated. Enforcement Bringing a cause of action Design patent: Design patent infringement is Actions for trade dress infringement, dilution governed by statute (35 USC §§ 271, 289). and passing off, as well as design patent The test for design patent infringement infringement, are federal causes of action. is the ‘ordinary observer’ test. This test Depending on jurisdiction over the defendant, is conducted from the perspective of the these actions can be initiated in a federal US ordinary observer who pays such attention as district court or at the US International Trade a purchaser usually pays, usually depending Commission – a regulatory body that controls on the cost of the article, and is deemed to be imports into the United States. familiar with the similar prior art designs. The Trade dress decisions can be appealed to patented design is considered infringed by the the federal court of appeals for the relevant accused product when the ordinary observer geographic circuit. Appeals of design patent would find the two substantially the same, decisions can be taken only to the Court of such that the observer would be deceived into Appeals for the Federal Circuit. Both types of purchasing the accused product, supposing it to case may subsequently be appealed to the US be of the patented design. Supreme Court. The time to resolution varies greatly by Remedies geographic circuit – between 10 months and Remedies for trade dress infringement include: four years to trial, not including an additional • injunctive relief (including preliminary or 18 months for most appeals. permanent injunctions); • monetary damages (eg, defendant’s profits, Infringement plaintiff’s lost sales); and Trade dress: Infringement of trade dress is • in cases of wilful infringement, the regulated under Section 32(a) of the Lanham Act possibility of punitive damages. if the mark is registered and Section 43(a) if the mark is unregistered. The test for infringement Remedies for design patent infringement include: is whether the alleged infringing use is likely • injunctive relief (35 USC § 283) (including to cause confusion as to source, affiliation or preliminary and permanent injunctions); and

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• monetary damages, including reasonable Functionality is also a bar to copyright royalties and lost profits (35 USC § 282) or protection, and the law requires that the non- the infringer’s total profits (35 USC § 289). functional expression be either physically or conceptually separable from the design as a In exceptional cases, attorneys’ fees and costs whole. Section 102 of the Copyright Act sets may be awarded. forth the eight categories of copyrightable subject matter: Ownership changes and rights transfers • literary works; Trade dress • musical works; Trade dress rights may be assigned or licensed. • dramatic works; Assignments must be in writing and should • pantomimes and choreographic works; clarify the nature of the rights transferred. • pictorial, graphic and sculptural works; Trade dress licences must include quality • motion pictures and other audiovisual control provisions to insure against a possible works; claim of ‘naked licensing’. • sound recordings; and • architectural works. Design patent Design patent rights may be assigned or Thus, depending on the design, it might not licensed and one inventor may transfer only his be protectable under copyright law if it cannot or her interest in the design patent, without the be separated from the product as a whole or is consent of the other inventors. deemed to fall outside one of the eight Some employer-employee contracts will enumerated categories. However, if the design is require employees to transfer rights in any copyrightable subject matter and otherwise meets design to the employer when the design is the requirements of US law, copyright protection created as part of the employee’s employment. can overlap with other forms of design protection, such as trade dress or design patent. WTR Related rights Generally, US courts allow overlap between multiple IP regimes. For example, it is common for one design to be protected simultaneously by both a design patent and trade dress rights. The 14-year period of market exclusivity secured by a design patent may be a critical factor in helping the rights holder to acquire the secondary meaning that is necessary for trade dress protection. Trade dress protection can survive the expiration of the design patent. While design patent and trade dress protection commonly overlap, the same is not true where the feature has been, or is currently, protected by a utility patent. The Supreme Court has said that the existence of a utility patent is strong evidence of functionality. Because functionality is a bar to trade dress protection, the existence of a utility patent triggers a strong presumption that the trade dress is also functional. Copyright protection may be obtained for some design features in the United States. US copyright law provides protection for an original and creative expression of an idea that is capable of being perceived and reproduced. www.WorldTrademarkReview.com Designs: A Global Guide 2014 145 Contributor profiles Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington DC 20001, United States Tel +1 202 408 4000 Fax +1 202 408 4400 Web www.finnegan.com

Julia Anne Matheson Elizabeth D Ferrill Partner Associate [email protected] [email protected]

Julia Anne Matheson is Elizabeth Ferrill is an a partner at Finnegan, attorney at Finnegan, Henderson, Farabow, Garrett Henderson, Farabow, Garrett & Dunner, LLP. Ms Matheson & Dunner, LLP. Ms Ferrill focuses on trademark, unfair focuses her practice on all competition and internet- aspects of design patents, related issues, including including prosecution, post- strategic international grant review, counselling portfolio management, and litigation. She counsels counselling and clearance, clients which hold design opposition and cancellation patents, as well as those proceedings, licensing, due accused of infringement. diligence, domain name She has experience with disputes and litigation and consumer and industrial enforcement matters. She products, medical devices, has practised in this area for transportation and more than 20 years. construction vehicles and graphical user interfaces and icons. Ms Ferrill has also litigated design patent matters at the US district court level, including trade dress claims.

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