For years, Samsung and Apple have battled over intellectual property rights associated with each party’s smart phones. Apple sued Samsung in 2011 and the jury found that Samsung had infringed Apple’s trade dress, design patents, and utility patents. On May 15, 2015, the Federal Circuit upheld the findings regarding infringement of design and utility patents, but found that Apple’s claimed trade dress was functional and vacated the damages award associated with the trade dress claims. Earlier this week, Samsung filed its request for Supreme Court review of the ruling. Although Samsung won an important battle for itself and all of Apple’s competitors, a recent filing by Samsung with the U.S. Patent and Trademark Office suggests that the smart phone trade dress battle may not be over.

On December 7, Samsung filed an application to register claimed trade dress for the product configuration of a smart phone. Samsung submitted the following drawing of the mark:

Samsung - Trade Dress DrawingThe drawing appears to show the Samsung Galaxy S6 Edge, shown below:

Samsung Phone

Samsung’s application contains a number of features that overlap with Apple’s claimed trade dress. So why file the application at all? Well, the latest rumors suggest that Apple may be introducing a curved display for its iPhone 7, similar to the Samsung Edge feature. Apple also recently received patent registration for technology that would enable its products to employ a curved screen. Assuming that the parties’ technology does not infringe the other’s patent rights, it could be possible for Samsung to prevent Apple from selling a curved display if Samsung can prove that it has protectible rights in a curved display trade dress.

Currently, Samsung’s application does not claim any rights in a curved display, but instead describes the mark as “a three-dimensional configuration of a smartphone.” However, an application for trade dress must specifically identify the aspects that are claimed as a feature of the mark and, just as importantly, the aspects that are not claimed as a feature of the mark. For example, when Apple sued Samsung for trade dress infringement, Apple claimed rights in the following configuration: (1) rectangular product with rounded corners; (2) flat clear surface display; (3) black borders around the surface display; and (4) when in use, an unchanging bottom dock of square icons, with a matrix of changing square icons above it. Likewise, Samsung will be required to specifically identify these features in its application.

However, this isn’t the only hurdle that Samsung will face. In order to be protectible, trade dress must be both distinctive and non-functional. Trademark rights can normally be established where the claimed mark is either inherently distinctive or has acquired distinctiveness. But the Supreme Court’s decision in Wal-Mart v. Samara Bros. Inc. clarified that product configuration marks can never be inherently distinctive. Instead, there must be proof that the claimed mark has acquired distinctiveness. Normally this is done through a claim of a period of use of five years or more. However, Samsung’s claimed first use date for this design is Feb. 3, 2015, about four and a half years short. Acquired distinctiveness can also be proven through significant sales, advertising, and publicity. However, with less than a year of use, Samsung may have difficulty proving that this particular design has acquired distinctiveness among consumers.

Samsung’s burden doesn’t get any easier with regard to proving that the claimed mark is non-functional, either. Samsung succeeded in proving that Apple’s trade dress (referenced above) was functional. Specifically, the Federal Circuit found that these features provide utilitarian advantages, making the product more usable, providing user friendly features, quick access to programs, greater pocketability, and better durability. Most of these features, if not all of them, appear to be present in Samsung’s current application.

Of course, the primary difference is the curved display. Although I don’t own a Galaxy S6 Edge, I presume the feature is popular because it increases the screen size, allows users to view notifications even if the phone is face down, and provides increased functionality for applications. Samsung also appears to be digging itself a pretty big hole with quotes like the following on its own website:

The device’s unique curved Edge screen provides quick access to frequently used apps, alerts and device functionality all with the swipe of a thumb, even when the cover is closed.

Right now, Samsung’s odds of obtaining a registration for the claimed trade dress seem low. Maybe Samsung plans to disclaim a number of these functional features, possibly increasing its odds; we’ll have a better idea once Samsung defines its claimed mark. However, in light of Samsung’s past statements (and success) in the Apple litigation and its promotion of the “edge” feature, this application may be dead on arrival, regardless of any future amendments.