By Dennis Crouch

In a previous post, I examined the important issue of comparable prior art that arose from the dispute between Columbia Sportswear and Seirus. This post will focus on another key issue from the case – the importance of logos in analyzing design patent infringement.

The Federal Circuit’s two decisions provide guidance on how logos can impact design patent infringement investigations, and begin to eliminate the differences in policy concerns underlying design patent law versus trademark law. As the court explained, while logos are often key to avoiding consumer confusion about the source of a product in a trademarked sense, the absence of source confusion does not necessarily preclude a finding of design patent infringement. However, ornamental logos on the accused product are still relevant as visual distractions in the process of evaluating the similarities and differences between the alleged design and the accused design.

Design patent infringement versus trademark infringement

The standards for proving patent infringement and trademark infringement vary widely with respect to the significance of consumer confusion about the source of the product.

For trademark infringement under the Lanham Act, the potential for consumer confusion is a basic requirement. Mosley v. V. Secret Catalog, Inc., 537 U.S. 418 (2003). The test is whether ordinary consumers in the relevant market are likely to feel confused about the source of the goods. Logos and other source identifiers play an important role in this analysis. A logo prominently displayed on the accused goods that is clearly different from the plaintiff’s mark can significantly impact the likelihood of confusion. See, for example, Grünefeld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc.730 F.3d 494 (6th Cir. 2013) (“(The accused infringer) in fact narrowly avoided this confusion by choosing an entirely different logo to prominently display on (its products) and on all of its sales and marketing literature.”).

However, for design patent infringement, the potential for consumer confusion is not directly relevant. be seen Unette Corp. v. Unit Pack Co., Ltd., 785 F.2d 1026 (Fed. Cir. 1986) (“The possibility of confusion as to the source of the goods is not a necessary or relevant factor.”). The Federal Circuit explained that the only test is whether the alleged and charged designs would appear substantially similar to a casual observer, not whether consumers would be confused about the source. be seen Egyptian Gods Company v. Suissa Company., 543 F.3d 665(Fed. Cir. 2008) (enbanc) (“(I) According to Gorham and subsequent decisions, we hold that the ‘ordinary observer’ test should be the only test for determining whether a design” patent has been infringed Invention.”).

In essence, while both analyzes appeal to the “average consumer,” the design patent test focuses solely on visual similarity in the absence of any real-world market considerations and asks whether the design has been replicated. Brand testing deeply analyzes real-world conditions and actual consumer perspectives on source confusion. This leads to varying processing of logos and potentially varying results.

On the face of it, the design patent and trademark infringement tests raise principles of confusion. The lay observer’s test asks whether the similarity between the designs would “deceive” the observer, “inducing him to buy one thinking it is the other.” Gorham Co. v. White, 81 U.S. 511 (1871); See also 35 USC § 289 (“colored imitation”). The likelihood of confusion test directly asks whether consumers are likely to feel confused about the source of goods. Overt references to “deception,” “imitation,” and “confusion” create a danger that separate doctrines may be confused or misapplied. This underscores the need for precision in explaining that design patent infringement does not take into account the views of real-world consumers, while consumers’ views are of paramount importance in trademark analysis. Linguistic similarities make identifying these distinctions even more important.

While the Federal Circuit has described patents and trademarks as distinct principles, in practice they overlap significantly in protecting product designs that serve as source identifiers. Certain product design features may simultaneously serve as novelty decorative designs eligible for design patent protection and as trade dress identifying source. For example, the unique shape of a handbag or sneaker may be eligible for a design patent based on its ornamentation while also indicating the source as a trade dress.

What this means is that design patents are often used to protect brand identifiers as commercial source identifiers. However, they are able to do so without having to satisfy trade dress requirements or the more fundamental fair use and non-functional principles. In the case of the reflective and wavy inner lining – this clearly carries brand meaning in my mind (as a winter glove buyer). This market meaning will likely serve as the real basis for a long-term lawsuit. So design patents will sometimes grant protection similar to that afforded by trademarks, including aspects of the design that convey source identity and market meaning. Ultimately, while the principles have different requirements on paper, their protection overlaps significantly in practice with some product designs that serve as visual source identifiers.

Columbia Sportswear vs Cirrus

This distinction emerged as a major issue in the dispute between Columbia Sportswear and Seirus. Columbia accused Seirus of violating its design patent covering a wavy design for use on heat-reflective materials. Cirrus argued that the differences between its design and Columbia’s patented design—particularly the prominent and recurring Cirrus logo—should factor into failure to find infringement.

On summary judgment, the district court ignored the entire Cirrus logo based on LA Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), and found a violation. In the first Columbia case, the Federal Circuit held this to be an error:

Our precedent does not prevent the finder from considering the decorative logo, its placement and appearance as one of the other possible differences between the patented design and the accused design.

Columbia Sportswear N.Am., Inc. v. Seirus Innovative Accessories, Inc.942 F.3d 1119 (Fed. Cir. 2019).

The Court of Appeal explained that although copy marking does not avoid infringement of design patents, logos remain a factor in the overall comparison between the appearance of the claimed and accused design. Identification card. Thus, the court canceled the summary judgment and remanded him in custody.

On remand, the district court instructed the jury on the lay observer test for infringement of the design patent. But the district court denied Columbia’s motion to instruct that consumer confusion was irrelevant and that no finding of likelihood of confusion was necessary. The jury returned a verdict of no infringement.

In Columbia II, the Federal Circuit affirmed that the jury instructions were legally correct. Columbia Sportswear N.Am., Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299 (Fed. Cir. Sept. 15, 2023). The court was sympathetic to concerns that linguistic deception in lay observer testing might be confounded with notions of consumer confusion. But she found no reversible teaching error, asserting that logos remain relevant to comprehensive similarity analysis:

(j) Only because consumers may not be confused about the accused product sourceThis alone will not prevent the ordinary observer from considering the defendant and the accused Designs Similar enough to constitute infringement of the design patent.

Identification card. (Emphasis in the original; quoted from Brown Corporation v. Dynamics of Am.975 F.2d 815 (Fed. Cir. 1992).

These decisions provide important insight and guidance for lawyers in the trenches, and also highlight the need to harmonize doctrines to ensure they serve important societal goals.

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