US Supreme Court Notice: If I Copy an Unpatented Furniture Design, Does That Help Prove That the Design Was Creative and Protected as a Trademark? – trade mark

US Supreme Court Notice: If I Copy an Unpatented Furniture Design, Does That Help Prove That the Design Was Creative and Protected as a Trademark?  – trade mark

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Furniture manufacturer admits to intentionally copying designs, Supreme Court asks, what does copying really say about the status of a design as a trademark?

While offering a new design for sale without obtaining a patent often means that the design is now in the public domain, copyright and trademark laws may mean otherwise. For example, trademark laws can protect a design that has become “iconic” if buyers recognize that the design is coming from a single source. So designs like the Eames chair and the shape of the Coca-Cola bottle are protected under trademark and trade dress law long after any patent protection has expired. Proving trade dress is difficult and often involves proof of sales, advertising, and survey evidence. But courts are divided on whether intentional copying can help prove that a design has acquired trade dress status.

Now, the US Supreme Court is considering a dispute involving hand-carved furniture and differences in standards for determining whether trade dress has achieved “secondary meaning” such as identifying the source of the goods. Establishing a secondary meaning allows a plaintiff (for example, a designer or manufacturer) to bring trademark infringement claims against a competitor who copies the design. in Trendily Furniture, LLC, et al. v. Jason Scott Collection, Inc. The court is asked the following question: What probative value, if any, is attached to evidence that a competitor intentionally copied the design of the plaintiff’s product, in determining whether the design achieved secondary meaning? In practical terms, does intentional copying in itself indicate that the trade dress has achieved a secondary meaning or is something more required to prove that the product design servers are the source identifier?

Does intentional copying in itself indicate that the trade dress has achieved a secondary meaning or is something more required to prove that the product design servers are the source identifier?

According to the Supreme Court review petition, courts in eleven circuits apply five different standards regarding the appropriate inference from intentional copying of a competitor. For example, the case was originally heard in the Ninth Circuit where intentional copying itself supports a strong inference of secondary meaning. Under the Ninth Circuit’s standard—which has been adopted by at least three other circuits—the district court held (and the appellate court affirmed) that plaintiff’s (Jason Scott) products acquired secondary meaning. The defendant (fashionably) sought Supreme Court review, arguing, among other things, that had the case been heard in the Tenth Circuit a different outcome would have followed from that Circuit’s precedent recognizing numerous reasons besides deception to copy a product design. The Tenth Circuit (and the First and Seventh Circuits) does not view intentional copying alone as evidence of secondary meaning absent evidence of an intent to confuse consumers and pass off the copy as plaintiff’s product.

Trendily admitted that it intentionally copied Jason Scott’s pieces, which were originally created from hand-carved furniture from reclaimed teak in a small village in Indonesia, and feature large, heavy pieces decorated with detailed wood carvings and metal designs. But Trendelli argued that the district court erred in making a strong inference of secondary meaning based on intentional copying, because no evidence showed that Trendelli intended to confuse customers. The US Court of Appeals for the Ninth Circuit acknowledged that some circuits imposed an “intent to confuse” requirement but said its precedent had refused to apply such a requirement to the “intentional copying” factor in secondary meaning analysis. Modernist argued in the petition that courts and experts have rejected the Ninth Circuit’s “flawed” reasoning for providing undue protection to designs that are properly in the public domain.

The petition also contrasts with other circuits’ approach of weighing intentional copying in determining secondary meaning. In the Third, Eighth, and Eleventh Circuits, it is permissible to infer secondary meaning from intentional copying, but the inference is not permissible when there is a neutral explanation for the copying. The Fifth Circuit gives intentional copying the same weight as other factors and evidence when determining whether a product has acquired secondary meaning. But in the fourth circle, intentional copying does not merely lead to the inference of a secondary meaning;
At first glance Evidence of secondary meaning. It modernly highlights that precedent in some other circles recognizes that copying may be for reasons – such as exploiting particularly desirable or intrinsically valuable features – relating to effective competition and not confusing consumers.

Interestingly, the petition cites a Tenth Circuit decision that states in part that “the fact (is) that trade dress protections are inappropriate for product design.” However, in
Apparatus LLC v. Wayfair LLC, which we reported on separately, a New York-based design studio has succeeded in obtaining a trademark for one of its “most prominent and sought-after products”; It is a frosted glass chandelier. The design studio showed the US Patent and Trademark Office the design of the chandelier
king It acquired a secondary meaning as evidenced by its “huge sales success and unsolicited critical acclaim”. In another article we discussed Hudson Furniture, Inc. V. December Mumesan lighting. singing. tic. Ltd. Dirty place. (now terminated) where the plaintiff alleged that the defendant infringed its patented designs and trade dress for lighting products with “dramatic and dynamic” designs “recognized and appreciated as Hudson pieces.”

Supreme Court decision in In a modern way This will likely impact not only the legal standards surrounding intentional copying in determining secondary meaning, but will also impact the competitive landscape, and what competitors may risk, to copy unpatented designs. The court has not yet agreed to hear the case but on October 17, 2023, asked Jason Scott to respond to the petition even though he originally waived the right to respond. Jason Scott’s response is scheduled for November 16, 2023.

The content of this article is intended to provide a general guide to the topic. It is recommended to seek advice from specialists in your circumstances.

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