1. Trends in Product Configuration Trademark Case Law Lightning Round
Design Law 2018
By: Jennifer Fraser

2. Some Recent Cases and Considerations in Pursuing Protection
Issues Encountered in Registering Product Configuration Trademarks
Issues Encountered in Enforcing Product Configuration Trademarks
When and If a Trademark Registration is Appropriate

3. Relevant Statutes 15 U.S.C. §1052(e)(5) - functionality
15 U.S.C. §1052(f) – acquired distinctiveness
Other statutes involving presumptions afforded registration, incontestability, basis for challenging registrations such as fraud

4. Functionality
Trade dress or product configuration cannot be registered if it is functional, if it is “essential to the use or purpose of the article or it affects the cost or quality of the article.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995)

5. Wal-Mart Stores, Inc. v. Samara Bros., Inc.
A product configuration such as this one is not inherently distinctive and, if non­functional, may be registered on the Principal Register only upon a showing of acquired distinctiveness under Section 2(f). See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, (2000).
Wal-mart - applies to product packaging and product configuration

7. Examples – Which do you recognize?

8. ™™

9. ™™

11. ™™

13. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001)
No protectable trade dress for dual spring design because design is functional and covered by 2 expired utility patents

14. Precedential Ex Parte Case at TTAB
In re Change Wind Corp., 123 USPQ2d 1453 (TTAB 2017) ™™

15. Functionality Factors
(1) the existence of a utility patent disclosing the utilitarian advantages of the design;
(2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;
(3) the availability to competitors of functionally equivalent designs; and
(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.
In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (CCPA 1982) ™™

16. Trademark Application and Figures in Patent

17. Extensive Discussion of Utility Patent – pp. 1456-1461
PTO inquired about the utility patent and discussed claims
At least 8 Office Action Responses/Requests for Reconsideration
TTAB: As set forth in pertinent part, the features in the applied-for mark (helical wings and housing enclosing frame structure) are specified in the twenty-one claims of the invention:
A wind turbine, comprising: a frame structure; a housing enclosing said frame structure helical swept wings that rotate to capture wind throughout a circumference of the rotary wing assembly from both windward and leeward sides so that a torque input spreads evenly to mitigate damaging harmonic pulsations that would otherwise arise without the torque input spreading evenly . . . ™™

18. Acquired Distinctiveness
To support a claim of acquired distinctiveness, an Applicant may submit evidence of “copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Steelbuilding.com. 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)

19. Evidence of Acquired Distinctiveness in Change Wind
Nominal sales and advertising
Five years of substantially exclusive and continuous use insufficient
“Look for” ad with no details of distribution/exposure/effect (i.e., discussing the “unique configuration of wings over a conical tower”)
Limited media coverage without details

20. Change Wind Illustrates Increasing Difficulty at PTO
Extensive and complex prosecution on functionality issue
Insufficient evidence of acquired distinctiveness
Opened the door on many bases to challenge, including fraud for Declarations and representations to PTO
Illustrates the need to have significant evidence, anticipate before filing the patent application

21. Considerations
Assess pros/cons of registration, future enforcement efforts
Cost and Expense
Prosecution, surveys, experts, wide range of relevant information to be introduced/proved
Risk of Enforcement – PTO record, each Declaration
Maintaining Rights
Need for enforcement while acquiring distinctiveness and after registration

22. Allegations of Fraudulent Procurement?
Fraud is high burden but are product configuration registrations more vulnerable?
See Solo Cup Operating Corp. v. Lollicup USA, Inc., Case No. 16 C 8041, 2017 U.S. Dist. LEXIS (N.D. Ill. May 17, 2017) (dismissing fraudulent procurement claims)
Lollicup argued Solo Cup misrepresented or misled the Examiner about functionality based on oral and written statements
Court discussed advocating for a result by highlighting favorable facts, Examiner can review, dismissed claims
Look at Declaration - statements “characterize the configuration in broad terms that are not demonstrably false nor directly contrary to the patent disclosure.”
What if the PTO statements were more detailed?

23. Enforcement of Registered and Unregistered Trade Dress
Blumenthal Distributing Inc. d/b/a Office Star et al. v. Herman Miller, Inc., Case No. 14-CV-01926, 2017 U.S. Dist. LEXIS (C.D. Cal. Aug. 1, 2017)

24. Accused Chairs

25. AERON – Registered and Unregistered

26. Decision
Herman Miller prevailed on the registered and unregistered EAMES chair designs (including for dilution)
Registered and unregistered AERON chair design was found functional by jury
Jury trial – hard to know the effect of the presumption but still the same evidence is proffered
HM argued that PTO decision to register confirms lack of functionality,
Piggyback claims for unregistered design
Willful infringement

27. Functionality
EAMES –
2 utility patents but testimony do not relate to appearance
AERON –
Office Star –evidence of various discrete components functional including patents
HM claimed irrelevant because do not show overall shape is functional
Jury finding supported because individual components are relevant to functionality as a whole and evidence presented on nearly every trade dress element
Other testimony - features for comfort and elements adopted for structural reason

28. Other Options to Consider
Skip the registration?
No presumption but it is rebuttable anyway and will likely have similar proof at trial
Risks from Record from PTO – fraud claims, Declarations to be challenged
Do you need registration for Customs or another issue?
Still need to detail trade dress and lack of functionality in Complaint – see Bubble Genius LLC v. Smith, 239 F. Supp. 3d 586 (E.D.N.Y. 2017)
Plan early on – pre-patent filing, is it distinctive, not functional, corroborated by advertising
Design patent or copyright instead?
Other cases and recent trends

29. Questions Jennifer Fraser Member Dykema 1301 K Street NW
Suite 1100 West
Washington, D.C
T: (202)