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3-D Trademarks and Design Patent Law Anthony Venturino Steven Lustig. Building a Brand on the Internet. Two kinds of Patents : Utility: Protects functional matter. Design: Protects ornamental matter. Two kinds of 3-D Trademarks : Product Packaging Trade Dress.

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3-D Trademarks and Design Patent Law Anthony Venturino Steven Lustig

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3 d trademarks and design patent law anthony venturino steven lustig

3-D Trademarks and Design Patent Law

Anthony Venturino

Steven Lustig

Building a Brand on the Internet

Basic concepts

Two kinds of Patents:

Utility: Protects functional matter.

Design: Protects ornamental matter.

Two kinds of 3-D Trademarks:

Product Packaging Trade Dress.

May be inherently distinctive and protectable without proof of secondary meaning.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)

Product Design Trade Dress.

Only protectable upon proof of secondary meaning.

Cannot be inherently distinctive.

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000)

Functional matter cannot be protected under trademark law.

TrafFix Devices, Inc. c. Marketing Display, Inc., 532 U.S. 23 (2001)


Different purposes

Patent Protection:

Gives an inventor the exclusive right to make, use, sell, offer for sale, or import the patented invention or ornamental design.

Provides an incentive for innovation.

Lasts for a limited time.

35 USC §101; §154; §171and §173.

Trademark Protection:

Protects consumers from confusion or deception in the marketplace as to the source of goods.

Protects the goodwill of a business from unfair competition.

Protection lasts for as long as a mark is used.

15 USC §1114; §1115 and §1125.


Different tests for infringement

Design Patents:

Patented matter need not be commercialized.

Payless Shoesource, Inc. v. Reebok Int’l, Ltd., 27 USPQ 2d 1516 (Fed. Cir. 1993).

Test for design patent infringement is similarity of infringing ornamentation to the design features shown in the design patent drawings.

35 USC §154 , Sun Hill Indus. v. Easter Unlimited, 33 USPQ 2d 1925 (Fed. Cir. 1995).

3-D Trademarks:

Trademarks must be used in commerce.

15 USC §1051 and §1127.

Test for trademark infringement is whether or not use of a design by a junior user is likely to cause consumer confusion or deceit in the marketplace as to the source of goods.

15 USC §1114 and §1125; Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961).


Where the laws intersect

Patent law and trademark law may protect the same design if:

the subject design is a new and non-obvious ornamental design; and

the subject design also serves to identify and distinguish the source of the goods.

In re Mogen David Wine Corp., 152 USPQ 593 (CCPA 1967).

Dilution may also protect a design if that design is famous.

15 USC §1125(c).


Where the laws intersect1

Trademark protection is not precluded just because a design patent protects a design.

Question is whether or not design indicates source of goods to consumers.

If design indicates source, then it may be registered on the Principal Register. In re Mogen David Wine Corp., Supra.

Trademark protection for a design does not create an impermissible perpetual design patent.

Courts have stated that the nature and scope of the types of protection are sufficiently different, so the two forms of protection may coexist.

Patent protection excludes others from making, using or selling the design.

Trademark protection excludes others from using a design which may confuse or deceive consumers.

Kohler Co. v. Moen Inc., 29 USPQ 2d 1241 (7th Cir. 1993).


Where the laws intersect2

Trademark Law exists independently of design patent law.

Although the two laws can cover the same design, they protect different rights for different reasons.

Kohler Co. v. Moen Inc., Supra; Hubbell Inc. v. Pass & Seymour, 35 USPQ 2d 1760 (S.D.N.Y. 1995); Krueger Int’l v. Nightingale Inc., 915 F. Supp. 595 (S.D.N.Y. 1996).

If a design is protectable under both patent and trademark law, expiration of the patent does not cause the trademarked design to fall into the public domain.

In re Mogen David Wine Corp., 140 USPQ 575 (C.C.P.A. 1964); Hubbell Inc. v. Pass & Seymour, Supra.




The owner of a famous design may exclude others from using similar designs. -15 USC §1125(c).

Protection may last as long as the design is in use.

Potential conflict between dilution law and design patent law because likelihood of consumer confusion or deception is not an issue.

This question has not yet been fully tested by the courts.

I.P. Lund Trading ApS v. Kohler Co., 49 USPQ 2d 1225 (1st Cir. 1998); Nabisco, Inc. v. PF Brands, Inc., 51 USPQ 2d 1882 (2d. Cir. 1999).


Comparison of protection


Protection strategy

Obtain design patents for product and packaging design configurations.

Design patent will protect design even before it is used.

File intent-to-use trademark applications for inherently distinctive packaging designs.

15 USC §1051(b).

File trademark applications for product designs after five years of exclusive use.

Five years of exclusive use gives rise to a claim that the product design has “secondary meaning” and may be protectable and registerable as a trademark.

15 USC §1052(f).

Design patent is good indication that design is not functional and thereby registerable.

In re Morton-Norwich Products, Inc., 213 USPQ 9 (C.C.P.A. 1982).


Drawing of the mark

In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition. 37 C.F.R. §2.52(a)(2)(iii).

If the mark comprises the design of only a portion of a product or container, broken (dotted) lines should be used in the drawing to indicate that portion of the product or container that is not claimed as part of the mark. 37 C.F.R. §2.52(a)(2)(ii).

If an acceptable statement describing the mark is not in the record, the examining attorney must require the applicant to submit a description to clarify what the applicant seeks to register. The description should indicate the matter shown in broken lines is not part of the mark.

37 C.F.R. § 2.37; §2.52(a)(2)(iii) and §2.52(a)(2)(iv).

The matter shown in broken (dotted) lines does not have to be disclaimed, because it does not form part of the mark.

TMEP §1202(d)


Likelihood of confusion

Most courts determine “likelihood of confusion” by analyzing the 8 "Polaroid factors." These include:

(1) the strength of the plaintiff's trade dress;

(2) the similarity between the two trade dresses;

(3) the proximity of the products in the marketplace;

(4) the likelihood that the prior owner will "bridge the gap" between the products;

(5) evidence of actual confusion;

(6) the defendant's bad faith;

(7) the quality of defendant's product; and

(8) the sophistication of the relevant consumer group.

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).


Potential pitfalls

Use of a patented design may infringe an existing trademark if the use of the patented design is likely to confuse or deceive consumers.

A patent is only a right to exclude.

The senior owner of 3-D trademark rights may stop a design patent owner from confusing or deceptive use of its patented design.

Lon Tai Shing Co. v. Koch + Lowy, 19 USPQ 2d 1081 (S.D.N.Y. 1990).

Use of a 3-D trademark may infringe a patented design, assuming the patent is valid.


Thank you

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