-Martha Engel, Attorney

If you are a member of the Cult of Apple, like tech, or even just watch the news, you’re probably aware that yesterday was Apple’s big fall event where they announce new product launches and updates.  The event showcased a new iPhone with enhanced photo features (as this Wired article aptly puts

A sense of humor and a little lack of respect:  that’s what you need to make a legend survive.

Karl Lagerfeld on his “winning formula”

Sometimes there is a news story that neatly weaves a bunch of DuetsBlog posts together like a Bottega Veneta shoe fabric design.  Sometimes that story comes from hard-hitting

While filling up my gas tank at our local Costco last week I coudn’t resist capturing this photo of pump signage to ask our dear readers a few pointed questions:

Is there any doubt that the automobile depicted in the Costco advertisement is a Corvette Stingray? If so, HiConsumption should resolve any lingering questions.

How

Here is to sharing a photo I took using my iPad on a recent Canadian fishing trip, and yes, there is a trademark story here to share as well, not just a beautiful sunset positioned behind this ATV tire.

In my purchase of automobile tires over the years, one of the key selling points has

Jeffrey Stone, Patent Attorney, Winthrop & Weinstine, P.A.

IP protection for product designs is typically found in a combination of one or more of the following protective mechanisms:

1. Contracts which are typically used with employees and 3rd parties to prevent loss of novelty as well as provide notice of ownership. Contractual protections such as Non-Disclosure Agreements are well-known and heavily used.

2. Utility patents cover the novel and non-obvious functional elements of a conception. This is likely the patent you are most familiar with, including an exhaustive written narrative accompanied by drawings and a series of written claims defining the scope of protection.

3. Design patents cover novel and non-obvious non-functional or ornamental features of a conception. Design patents are receiving much publicity at present as a result of the recent, and ongoing, Apple v. Samsung case.

4. Copyright protection for original works of authorship. In general, copyright law does not grant protection to utilitarian objects. Section 101 of the Copyright Act provides that the design of a useful article will be protected “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article”. . . including “two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.”

5. Trade Secret protection for those conceptions, or parts of the conception, that cannot be ascertained or reverse engineered by the general public. Typically, trade secret protections are most appropriate for method of manufacture or software where the operational details are hidden.

6. Trade Dress protections for non-functional features that have acquired distinctiveness through extensive marketing and commercial use and acceptance.

We strongly advocate leveraging two of these protective mechanisms to achieve IP protection of novel, non-obvious and non-functional features of designs: Design Patent protection followed by Trade Dress protection. (Of course, contracts will also be employed, functional features will be covered by utility patents and, where appropriate copyright protection utilized to provide the fullest and broadest IP coverage possible.) The resulting coverage scheme allows non-functional feature IP protection to begin virtually immediately after conception, with continued and unbroken protection theoretically forever, to the point the underlying product is no longer “in commerce.” In short, a beautifully elegant result when properly executed.

Design Patents Coverage and Purpose

Design patents are provided to promote progress in the decorative arts and to reward inventors. Thus, design patents protect features that are primarily non-functional, ornamental elements of an article of manufacture such as a specific product shape or a particular surface ornamentation. Note that color cannot be protected with a design patent.

For example, an oval-shaped element on the handle of a surgical instrument may be protected under a design patent if the oval shaping is primarily non-functional and is also both novel and non-obvious in view of the prior art. User interfaces on electronic devices are also heavily protected by design patents, e.g., Google’s home page or the tiling arrangement on Apple’s iPhone.

Design patents require no use of the underlying product in commerce in order to meet the protection threshold, just novelty and non-obviousness, both of which are determined according to the now well-known “Ordinary Observer” test.

Speaking generally, design patents are relatively inexpensive to prepare, file and bring to issuance, as compared with utility patents. In our practice, design patents regularly issue within 6 to 8 months of filing, usually without any pushback from the USPTO. With a little advanced planning and placement, a design patent application may be accelerated on the so-called “Rocket Docket” within the USPTO, resulting in likely issuance of the design patent application within 3 to 6 months of filing, barring any significant issues during prosecution.

Design patents are granted for a period of 14 years. During this 14-year term, the owner of the design patent enjoys a full monopoly of the patented elements, including the exclusive right to make, use, sell and/or offer for sale the patented device, and may stop infringers on any of those rights.
Continue Reading Protecting Non-Functional Product Design Features Through The Entire Life Cycle: From Conception to Grave

If the "Soup Nazi" were employed as a Trademark Examining Attorney at the USPTO, he might be heard crabbing at the makers of Samuel Adams Boston Lager, were they to attempt to register or claim as a trademark the shape of their "new" beer glass from 2007, now almost four years old: "No trademark

Schering-Plough Healthcare, owner of the MiraLAX brand — the top-selling OTC oral laxative ($360 Million in OTC sales since launching in February 2007) — has pulled out all of the available stops and then some, in a pre-Thanksgiving Day federal district court action brought in the District of Delaware, asserting a variety of intellectual property and unfair competition claims under both federal and state law. Bloomberg.com’s report on the case from yesterday is here. In addition, here is a link to the Complaint, with Exhibits A, B, and C.

As is typical when the manufacturer of a national brand wants to stop what it perceives as unfair retail store brand competition, Schering-Plough brought suit not against either of its retail customers Kroger or CVS — despite both being mentioned in the complaint — instead, it sued Perrigo the private label manufacturer who provided the competitive products bearing those retailers’ well-known, if not famous store brand names.

Perrigo says it is "the world’s largest manufacturer of OTC pharmaceutical products for the store brand market." Here is how Perrigo describes its business model:

The Perrigo Company manufactures products that compare to national brand products such as Tylenol®, Advil® or ONE-A-DAY®. For example, Tylenol® has acetaminophen as an active ingredient and is available in a store’s analgesic (pain relief) section. Store brand acetaminophen is located right next to the national brand acetaminophen, offering the same active ingredient (acetaminophen) and the same relief.

Store brands and national brand products are both manufactured to meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand products are sold by retail stores under their own labels and compete with nationally advertised brands. All Perrigo products meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand OTC and nutritional products have saved consumers many millions of dollars in health-care costs over the past six years.

Although the national brand owner’s strategy of not suing its retail customer directly may be attractive from a business relations perspective, unless the case is promptly resolved on an amicable basis, it will be hard to avoid having representatives of Kroger, CVS, and other retail customers of Schering-Plough, put on the "hot seat" in discovery depositions to determine who created, controlled, and/or approved the "look and feel" of the store brand packaging. It remains to be seen how this strategy will play out here for Schering-Plough.


Continue Reading MiraLAX Won’t “Loosen Up” Against OTC Store Brand Competition

Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen.

But what about when a branded prop dominates the ad or the identifiable trademark is another’s product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another’s commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz’ ads, continue reading after the jump.


Continue Reading Using Another’s Body to Sell Your Products? The Problem of Airbrushing Non-Traditional Trademarks