Keeping in Shape – Trademark Protection of Product Configurations
The development of unique and distinctive product configurations allows the producer of the product to achieve more bang for its marketing dollar. The consumer not only cognitively associates the manufacturer’s word mark with the product, but also its configuration. In this context, the oft cited example is the Coca-Cola bottle shape.
In selecting a product configuration, what factors are relevant to securing both registry of the configuration in the United States Patent and Trademark Office and facilitating judicial protection for the configuration?
Recent Supreme Court cases, most specifically Wal-Mart Stores, Inc. v. Samara Brothers, Inc, 529 U.S. 205, 120 S.Ct. 1339 (2000), have tightened the criteria of “distinctiveness” and “non-functionality” that are essential for securing protection for product configurations.
Allowing a manufacturer to secure perpetual trademark protection for a functional configuration of a product would grant a perpetual monopoly over a functional feature to the competitive disadvantage of other manufacturers. Functional features may be the subject of legitimate patent protection for a limited period.
Therefore, the first criterion in selecting a product configuration is to select a configuration which is not functional. Is the configuration essential to the use or purpose of the product? Does the configuration affect the cost or quality of the product? If so, the configuration
would generally be construed as functional. While the Coke bottle shape does have a function, i.e., as a container for the product, it is not essential to the use or purpose of the product and does not affect its cost or quality. If the configuration does not result in a
comparatively simple or inexpensive method of manufacture; has no utilitarian advantage over competitor’s configurations; and alternative product configurations are available to competitors, the configuration would appear to be non-functional. Prior to finalizing the selection of the configuration as nonfunctional, confirm with the relevant in-house personnel
that the configuration is not the subject of a current or expired utility patent and that marketing is not planning to tout any utilitarian advantages of the proposed configuration. Having made these primary “nonfunctional” inquiries, the second criterion is the
distinctiveness of the proposed configuration.
In Wal-Mart, Justice Scalia observed that product configurations can never be inherently distinctive no matter how unique. Therefore the burden is placed upon the trademark applicant to demonstrate that the configuration, when viewed by the consuming public, is
cognitively associated with the applicant, i.e., has “secondary meaning”. This generally requires a showing of advertising and sales volume and a period of use sufficient to allow the formulation of a cognitive association of the product configuration and the producer
by the consuming public (five years is presumptively sufficient). Additionally, declarations by distributors, consumers and dealers support the assertion that the consuming public associates the configuration with the manufacturer of the product. This level of “secondary
meaning” or distinctiveness cannot be achieved in the short term, absent a level of advertising and sales that catapults the configuration into the public consciousness.
Therefore, the solicitation of registry or the institution of legal proceedings must await the reasonable assurance that distinctiveness has been achieved. The advantages of a product configuration which is identified by the consuming public and associated with the manufacturer are self-evident and well worth the effort entailed in securing such protection.
Your trademark attorney can assist in the selection of a configuration which is capable of meeting the criteria required to overcome the recent judicial constrictions of product configuration protection and achieve an extra measure of consumer recognition of your product.
Design Patent Infringement
In a nonprecedential case decided on May 2, 2006, the Federal Circuit Court of Appeals (CAFC) has reaffirmed the two tests for infringement of a design patent (both of which
must be satisfied): the “ordinary observer” test and the “point of novelty” test (Kyocera Wireless Company v. President Electronics, Ltd. and Tony Colida, 2006 WL 1143583 (Fed. Cir. 2006) ). Under the “ordinary observer” test, the question is whether, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same so as to deceive such an observer and induce him to purchase one supposing it to be the other. Under the “point of novelty” test, the question is whether the accused device appropriates the novelty which distinguishes the patented design from the prior art.
Tony Colida, president of President Electronics, owns U.S. Design Patent D321,347 for a portable cellular handset telephone. The telephone is seen to have an upper part connected to a lower part by a hinge (flip phone), the upper and lower parts having undulating sides so that when closed together, they join along a S-shaped curve. When closed, the
telephone resembles a clam shell.
Mr. Colida sent a letter to Kyocera threatening suit due to Kyocera’s marketing of their KX9c telephone. Kyocera sought a declaratory judgment of noninfringement in the
Southern District of California. Kyocera filed a motion for summary judgment on the declaratory judgment claim and on Mr. Colida’s filed infringement counterclaim. The district
court granted both motions, and Mr. Colida appealed. The CAFC affirmed on appeal. The CAFC held that the district court carefully applied the proper two tests of infringement in design cases (as set forth above), and rejected Mr. Colida’s assertion that expert testimony was necessary to resolve the question of infringement. The court stated that Mr. Colida did not point out any particular error in the district court’s analysis, and that although expert
testimony may be necessary in cases involving complex technology, this case was not such a case.
Supreme Court Reverses Rule Presuming That Patents Provide Market Power in Tying Cases
The United States Supreme Court unanimously ruled on March 1, 2006 that a court should no longer presume that a patent provides market power in an antitrust tying claim. Illinois Tool Works, Inc. v. Independent Ink, Inc.1 The decision reverses the Supreme Court’s 1947 decision in International Salt Co. v. United States2, and its 1962 decision in United
States v. Loew’s Inc.3 holding otherwise.
In the case, Illinois Tool Works, Inc.’s subsidiary, Trident, Inc., manufactured and marketed printing systems that included (1) a patented ink jet printhead, (2) a patented ink
container, and (3) specially designed, but unpatented, ink.
Trident sold these systems to original equipment manufacturers who agreed that they would purchase the unpatented ink exclusively from Trident, and that neither they nor their customers would refill the patented containers with ink of any kind. In anti-trust parlance,
Trident was tying the sale of patented containers on the purchase of the unpatented, or tied, ink.
Independent Ink, Inc. developed an ink with the same chemical composition as Trident’s Ink. Independent Ink filed an action against Trident, alleging, among other claims, that
it was engaged in illegal tying and monopolization in violation of the Sherman Act, 15 U.S.C. §§ 1, 2. The trial court granted summary judgment to Trident on these claims, finding that Independent Ink submitted no affirmative evidence defining the relevant market or establishing Trident’s market power within it. Accordingly, the trial court ruled that Independent Ink could not prevail on its antitrust claim. The Court of Appeals for the Federal Circuit reversed this decision. The Federal Circuit cited several Supreme Court opinions (though heavily criticized) contrary to the trial court’s decision, and noted that it was bound to follow these cases until the Supreme Court expressly overrules them. The Supreme Court did so in Illinois Tool Works.
The Court noted that it often “repeated the well-settled proposition that ‘if the Government has granted the seller a patent or similar monopoly over a product, it is fair to presume that the inability to buy the product elsewhere gives the seller market power.”4 However, the Court also recognized that in 1988, Congress amended the Patent Act to eliminate this presumption in patent misuse cases.
Accordingly, the Court sought to determine whether the presumption of market power in a patented product nevertheless exists in antitrust law, notwithstanding the change to patent law. The Court engaged in a lengthy and scholarly review of the legal history of tying arrangements, noting that they originated in patent misuse cases. The Court also noted the “vast majority of academic literature” which, along with Congress, rejected the notion
that there should be a presumption of market power with a patented product.5 Accordingly, the Court concluded that tying arrangements involving patented products should not
be evaluated under a presumption of market power, but instead, any assertion that a tying arrangement is unlawful must be supported by proof of power in the relevant market.
In the wake of Illinois Tool Works, sellers of patented products may have more flexibility in bundling patented products with unpatented products. Nevertheless, tying arrangements can still violate antitrust laws. Accordingly, it is recommended that such arrangements be discussed with antitrust and patent counsel.
Legislation and Rules Update
• The USPTO amended rules relating to reexamination proceedings to clarify that a request for ex parte or inter partes reexamination will not be granted a filing date until the request
meets all statutory requirements under 35 U.S.C. § 302 or § 311. (See http://www.uspto.gov/web/offices/com/sol/notices/71fr9260.pdf).
• The USPTO finalized rules to implement the provision for refunding the search fee to
applicants who expressly abandon a patent application before examination. (See http://
www.uspto.gov/web/offices/com/sol/notices/71fr12281.pdf).
• The USPTO proposed rules
(1) to allow a patent owner to reply to a request for reexamination before the examiner’s decision on the request,
(2) to require a patent owner to show sufficient cause in order to file supplemental responses to an office action in an inter partes reexamination,
(3) to designate the correspondence address as the correct address for all communications for patent owners in reexamination proceedings, instead of the attorney or agent of record, (4) to provide a single “mail stop” address for all ex parte reexamination proceeding papers, instead of only the original request paper,
(5) to clarify that a patent owner’s failure to file a response in a reexamination terminates only prosecution of the reexamination proceeding, not the proceeding itself,
6) to clarify that a reexamination proceeding is concluded only when the reexamination certificate has been issued and published,
(7) to clarify rules relating to limited termination as to non-patentable claims in an inter parte reexamination proceeding in some instances when a patent owner fails to respond, and
(8) to provide a remedy for having correspondence documents in an inter partes reexamination proceeding be considered timely filed when mailed in accordance with § 1.8(b), but not timely received. (See http://www.uspto.gov/web/offices/com/sol/notices/71fr16072.pdf).
• The USPTO proposed rules to eliminate the Disclosure Document Program that was
implemented in 1996 to provide inventors with an alternative means to establish a date of
conception, since provisional applications are increasing in popularity and may be considered advantageous to a Disclosure Document since they establish a constructive reduction to practice, rather than serve as mere evidence of conception. (See http://www.uspto.gov/web/offices/com/sol/notices/71fr17399.pdf).
• No action has been taken in Congress on The Patent Reform Act of 2005 (H.R. 2795)
introduced on June 8, 2005. H.R. 2795 proposes a “first to file” instead of “first to invent” system (that is in conformity with the European and Japanese patent systems) and proposes limiting injunctive relief standards.
However, on April 5, 2006, the Patents Depend On Quality Act of 2006 (H.R. 5096) was
introduced. H.R. 5096 covers several areas including post-grant oppositions and third party
submissions of prior art. (For the text of these bills, see http://frwebgate.access.gpo.gov/cgibin/getdoc.cgi?dbname=109_cong_bills&docid=f: h2795ih.txt.pdf and http://www.house.gov/berman/pdf/pkb_009_xml.pdf).
• On March 30, 2006, H.R. 5055 was introduced to amend Title 17 of the U.S. Code relating to copyrights to provide intellectual property protection for fashion designs. (For the text of
this bill, see http://frwebgate.access.gpo.gov/cgibin/getdoc.cgi?cbname=109_cong_bills&docid=f:h5055ih.txt.pdf).
Copyright Office News
• The U.S. Copyright Office plans to increase fees for
registration of a basic claim in an original work of
authorship from $30 to $45, effective July 1, 2006
(See http://www.copyright.gov/reports/fees2006.html).
USPTO News
• The USPTO issued U.S. Patent No. 7,000,000 on February 14, 2006. (See http://www.uspto.gov/web/offices/com/speeches/06-09.htm).
• The USPTO’s web-based system for electronically submitting patent applications and related documents as PDF attachments was launched on March 16, 2006.
• The USPTO implemented a new First Action System for Trademarks (FAST) in April in which co-pending applications filed by the same applicant will be identified and assigned to examiners electronically, so that the same examining attorney will most likely handle all
related applications in an effort to ensure consistency.(See http://www.uspto.gov/web/trademarks/notices/companionapplications10.htm).
• The USPTO released the list of Top 10 Universities receiving patents in 2005 with the University of California topping the list for the twelfth consecutive year. (See http://www.uspto.gov/web/offices/com/speeches/06-24.htm).
• The USPTO and Japan Patent Office (JPO) will launch a trial program on July 3, 2006 where a ruling from the USPTO or JPO that at least one claim in an application is
patentable will enable an applicant to request “fast track” examination of corresponding claims in corresponding applications. (See http://www.uspto.gov/ web/offices/com/speeches/06-35.htm).
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