INDUSTRIAL DESIGN PROTECTION UPDATE
Prepared by William T. Fryer, III
Introduction. This newsletter reports on several major events
that have occurred recently on protection of industrial designs. In addition,
there is a report on significant developments likely to happen soon in
this field. In the next month an attempt will be made to provide detailed
reports on topics covered in sufficient detail in this newsletter..
Table of Contents
I. The U. S. PTO Conference on Design Patents, October 18, 2000 (Part
of Technology Center 1600 all day conference) -- Report will follow meeting.
II. New Act of the Hague Agreement Ratification by the U. S. - Update
and announcing Power Point Presentation on this Web site - Need for Ratification
III. Major Developments on U. S. Trade Dress Protection
A. Wal-Mart case (United States Supreme Court) -- Changed
U. S. law on product configuration trade dress protection, may be.
B. Midwest Case (Federal Circuit) - Held that all interface
appeals will be decided by this Court.
C. Lanham Act Change - Trade Dress infringement - Shifted burden
of proof on unregistered trade dress owner in infringement action.
D. Marketing Display Case (U. S. Supreme Court) - Oral argument
scheduled for November 29, 2000 - Trade dress and patent interface.
E. AIPPI Survey on trade dress and design patent (registrations)
F. ABA, Section of IP Law Conference, Summer 1999 - Program on trade
dress - helpful papers.
IV. Vessel Hull Design Protection Act Amended and Status Report -
It is used.
V. European Union Community Design System is on its way to operation
VI. Coming - Major Design Patent Cases 1999 and 2000 - A review.
I. The U. S. PTO Conference on Design Patents, October 18, 2000 (Part
of Technology Center 1600 all day conference).
The annual U. S. Patent and Trademark Office Conference by Technology
Center 1600 (Biotechnology and Design Patents) will be held on October
18, 2000. A part of this event will be devoted to design patents, with
presentations by attorneys and PTO staff, and informal discussions with
Design Group 2900 Supervisory Primary Examiners on design patent practice.
There will be a summary of the design patent portion of this conference
in the next update of this web site. For conference registration information,
see the PTO web site http://www.uspto.gov
II. New Act of the Hague Agreement Ratification by U. S. - Update
and Announcing Power Point Presentation on this Web site - Need for Ratification
The New Act of the Hague Agreement Concerning the International Registration
of Industrial Designs was completed in July 1999, and the U. S. signed
the treaty. This step by the U. S. showed a strong interest in utilizing
The good work of the experts who developed the New Act and many PTO
staff must be followed by a strong and prompt effort for U. S. ratification.
Many other countries are waiting until the U. S. ratifies, before giving
serious consideration to adhering to the treaty. The U. S. can be a leader
in international design protection by its prompt ratification.
The next step is for the PTO to prepare implementing legislation, to
interface with current patent laws and procedure. Only relatively minor
changes are needed, as the U. S. government negotiating team saw to it
that all major interfaces with U. S. law and practice were manageable.
Firms and companies should contact the U. S. Commissioner of Patents
and Trademarks to show support for the ratification process and offer help.
III. Major Developments on U. S. Trade Dress Protection
Introduction. There have been several major events on trade dress
protection and more can be expected. In summary, the U. S. Supreme Court
has changed the law on product configuration trademark protection in the
Wal-Mart case. This court may make another major change when it decides
the pending Marketing Display case. The Federal Circuit, Court of Appeals,
has become more involved in deciding the relation of patents to other forms
on intellectual property (IP). An international organization has studied
the relation of trade dress protection and design patents (registrations).
The American Bar Association, Section of IP Law, held a program on trade
dress protection at its summer Boston meeting. All these events are ingredients
for a very exciting year for trade dress protection. A brief review of
these events will be given below.
A. Wal-Mart case (United States Supreme Court) - May Change
U. S. Law on Product Configuration Trade Dress Protection, Wal-mart
Stores, Inc. v. Samara Bros. Inc., 529 U. S. 205, 54 U.S.P.Q. 2d (BNA)
1065 U.S.S.C. 2000).
This decision changed U. S. trademark law for product configuration
protection in a major way, if give full impact. It is so extensive that
the type of change is usually made by legislative reform. How this case
will be interpreted and the public reaction may start legislative reform
to reverse its effect.
Wal-Mart copied Samara's dress design
(see picture) and appliques (see picture).
The appliques were registered by the Copyright Office and stood up to the
test of originality in the litigation. The trade dress protection of the
dress design, the arrangement of the appliques on the collars and pockets,
under the Lanham Act, 15 U. S. C. sec. 1125(a), was based on inherent distinctiveness.
There was insufficient secondary meaning proof. The Circuit Court held
there was trade dress protection and infringement. The U. S. Supreme Court
reversed, holding there was no trade dress protection for this design.
It established new law, that product configuration must have secondary
meaning for protection as trade dress. The Two Pesos case, [include cite],
where trade dress protection was upheld by this Court with inherent distinctiveness,
was distinguished. The Wal-mart decision put the restaurant design type
found in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23
U.S.P.Q. 2d (BNA) 1081 (U.S.S.C. 1992), in a different group that had more
than product configuration. It affirmed in dicta that product packaging
can be protected with only inherent distinctiveness. Product configuration
must meet the higher standard of having secondary meaning.
The Court recognized it might take the wisdom of Solomon in some cases
to decide what trade dress designs fall in the group protected with inherent
distinctiveness. The effort to have a company's products in this group
will be formidable. The key new principle seems to be that product configuration
is essentially the shape of functional parts of a product. These features
in all products require secondary meaning for distinctiveness to be protected
by trademark law.
As a comment, if one looks at the dress design in the Wal-Mart case,
the court did not need to go so far in redeveloping trade dress law to
come up with the same result. The design had a strong aesthetic image.
It should have require secondary meaning for trade dress protection. The
Court did not choose to use the existing case law that set a high level
for distinctiveness on product configuration related to functionality.
The existing law had a high standard to achieve trademark distinctiveness,
since it considered both utilitarian functionality and aesthetic functionality.
The Court opinion did not reflect a thorough consideration of these existing
The Court did not accept as adequate Congress' tightening of the statutory
law on trade dress protection in two areas. In 1999 Congress shifted the
burden for unregistered trade dress owners to prove distinctiveness in
litigation (see section II(C) below). Earlier, Congress clarified that
an incontestable registration was subject to the defense of being primarily
functional, 15 U. S.C. §1064(3). Congress had extensive hearings recently
on trade dress protection with several proposals rejected for now in the
process of making these changes. The Supreme Court decided to adopt a new
solution to a perceived abuse of trade dress protection for product configuration.
The new U. S. law under Wal-Mart on trade dress protection makes
the U. S. in conflict with the laws, in principle, in most other countries,
creating a difficult situation for trademark harmonization. A recent survey
of trade dress laws conducted by the AIPPI (see section II(E)), suggests
that most countries follow a high standard of distinctiveness to sort out
what is protected by trade dress. In these systems there is the possibility
on a product configuration having inherent distinctiveness.
Where the Wal-Mart decision leaves U. S. industrial design protection
is an important question. The need for market entry protection is significant
for many products. A large number of companies rely heavily on trade dress
protection and prefer it over design patents, since there is a longer protection
term and other factors. The Wal-Mart decision recognized that its
new approach may leave some products unprotected by trademark law, and
the Court suggests that design patent and copyright protection could be
used instead, without going into the many issues involved in these choices.
For example, can trade dress protection on a design that was protected
by a design patent or copyright continue after the patent or copyright
protection ends. Another question is what can be protected by both patent
and trade dress or copyright and trade dress? A case pending in the U.
S. Supreme Court, Marketing Displays, will likely address the relation
of trade dress to patents, as discussed below in section II(B).
In perspective, the Wal-Mart case may be no more than the U.
S. Supreme Court overreaction to courts finding trade dress without secondary
meaning, in some situations.. The realistic view of this case is to treat
the limits imposed by the Court to cases where there are merely functional
design features, the law now. The burden to show distinctiveness then shifts
to the product owner in these cases, to show that trademark status has
been obtained. In this context, the Wal-Mart case is not a great change.
One can only hope that lower courts see this perspective and do not remove
from consideration products entitled to have the inherent distinctive status
for product configurations and the attendant market entry protection.
An in-depth review of these issues will be written and may be published on this web site. They deserve a full debate. Perhaps Congress will take another look at trade dress protection in light of the Wal-Mart decision., along with the new law of the Wal-Mart case.
B. Midwest Case (Federal Circuit) - Holds that All
Interface Appeals will be decided by this Court, Midwest Industries, Inc.
v. Karavan Trailers, Inc., 175 F.3d 1356, 50 U.S.P.Q. 2d (BNA) 1672 (Fed.
Cir. 1999), cert. Denied, 145 L. Ed. 2d 409 (U.S.S.C. 1999).
Midwest, an en banc decision of the Federal Circuit, Court of
Appeals, involved a boat trailer that was protected by a utility patent.
The trailer owner argued that there was trade dress protection for the
appearance of a functional trailer feature. The utility patent described
this feature and in a dependent claim the trade dress feature was claimed.
The patentability of that claim, apparently, was not dependent on the trade
dress feature. There was no charge of patent infringement.
The Federal Circuit in this opinion stated, in general terms, that trade
dress protection could exist under certain circumstances, even though there
was a utility patent on the product. The summary judgment for the defendant
was reversed. The Court also held that the Federal Circuit would decide
all cases involving questions of patent law and the relation to other intellectual
property. Up to that time, these interface questions on trade dress were
decided by the Circuit Court where the action was brought. There were some
differences in the approaches applied in these courts to determine if there
could be trade dress and patent protection on the same product. Since the
Federal Circuit had stated its view that patent protection did not preclude
trade dress protection in some situations, the stage was set for review
of specific issues on this topic by the Federal Circuit.
The U. S. Supreme Court may have revised the trade dress law in the
case. It is up to the Circuit courts to decide how to apply the new law.
The Federal Circuit will be one of these courts on general trademark law.
On the patent interface issues the Federal Circuit will have exclusive
jurisdiction. The Marketing Display case now pending before U. S.
Supreme Court will likely provide important instruction on how the Federal
Circuit should apply this newly acquired exclusive jurisdiction (see section
C. Lanham Act Change - Trade Dress infringement - Burden of Proof
on Trademark owner.
Recently Congress debated the trade dress protection for products with
considerable intensity. The end result was addition to the Lanham Act,
15 U. S. C. section 1125(a). The addition stated:
"(3) In a civil action for trade dress infringement under this Act for
trade dress not registered on the principle register, the person who asserts
trade dress protection has the burden of proving that the matter sought
to be protected is not functional."
Earlier Congress enacted a change to 15 U.S. C. §1064 (3) that
clarified functionality of trade dress remains a defense even though the
registration is incontestable. These legislative changes were in response
to a concern by some that trade dress protection for product configuration
was too extensive and could be used to provoke litigation that favored
The U. S. Supreme Court, in the Wal-Mart case, by it own statement,
responded to the same concerns as Congress did, and the Court did not consider
the Congressional actions sufficient to meet the problem. The Court took
a step that Congress chose not to take. One can ask if the Court was overreaching
its role in making such a change.
D. Marketing Displays Case (U. S. Supreme Court) - Oral Argument
Scheduled for November 29, 2000 - Trade Dress and Patent Interface, Marketing
Displays, Inc. v. Traffix Devices, Inc., 200 F.3d 929, 53 U.S.P.Q.
2d (BNA) 1335 (6th Cir. 1999), cert. granted, 147 L. Ed. 2d
981 (U.S.S.C. 2000).
The Marketing Displays is a major design protection case recently
taken for decision by the U. S. Supreme Court. The oral argument for this
case will be on November 29, 2000. The outcome of this case will be to
clarify the effect of having a utility patent describe and/or claim a product
that also has trade dress protection. The product was an outdoor sign support.
A report on the hearing will be published on this web site.
E. AIPPI Survey on Trade Dress and Design Patent (Registrations)
A very useful Internet resource on trade dress protection was found
on the AIPPI web site: http://www.aippi.org
, go to the Meetings page, and then go to the Executive Committee Meeting
page, April 8-15, 2000, Sorrento, Italy, Question 148 and its Summary Reports).
This survey of [insert number of countries] included reports on national
design protection by trade dress and design patent (often called registration
in some countries).
In summary, this report showed that most countries permit dual trade
dress and design patent protection. These majority countries rely on the
basic test of distinctiveness to determine whether a product needs secondary
meeting for protection. A review of European Union Community Trademark
registration denial appeals suggests that the standard for distinctiveness
is pretty high for product configuration. This approach, using the basic
distinctiveness test and setting a high level, offers some flexibility
and does not discard arbitrarily the inherent distinctiveness for all product
configurations, as the U. S. Supreme Court did.
The U. S. Supreme Court reaction to product design protection may be
in the same direction as the majority of other countries, to achieve the
same end result. The approach is different on a critical aspect. International
harmonization will be difficult under these circumstances, unless the U.
S. approach is clarified. If the U. S. approach is tied into the functionality
aspect, limited to products with merely functional features, then the prospects
for international harmonization would be brighter. This topic could be
an appropriate one for discussion at the World Trade Organization. Most
foreign countries have a reasonably balanced approach by taking a tough
approach to distinctiveness and leaving the possibility of inherent distinctiveness.
F. ABA, Section of IP Law Conference, Summer 1999 - Program on Trade
Dress - Helpful Papers.
The American Bar Association, Section of IP Law (IP Section) program
at the Boston Summer Business and CLE meeting had a program on trade dress
and reviewed current developments. The major cases in the Circuit Courts
were reviewed by Ted Davis. The Wal-Mart case was discussed by Neil Smith.
Bill Fryer presented two papers, one suggesting that design owners should
consider boosting their possibility of trade dress protection by obtaining
design patent protection on their trade dress design. The other paper related
to international protection of trade dress and design patents, including
a review of the AIPPI Survey discussed in section II(E). [insert links
to papers if time permits] The program papers are available from the IP
Section Office, by contacting the Staff Director, Betsi Roach (E-mail:
IV. Vessel Hull Design Protection Act Amended and Status Report -
It Is Used.
The research material found on this web site for the Vessel Hull Design
Protection Act (VHDP Act) needs to be updated, to include the 1999 amendment.
Two major changes were made by Public Law 106-113, §5005, S.1948,
incorporated in H.R. 3194 (106th Cong, 2d Sess.), enacted November
29, 1999 amending 17 U.S.C. §§1301-1322.
The first change was to remove the two year sunset provision. The VHDP
Act is now part of the U. S. design protection law without a fear of immediate
removal. The second major change clarified what type of boats can be protected.
The amendment to 17 U. S. C. §1301(b)(1) was amended to read as follows:
"(3) A 'vessel' is a craft -
(A) that is designed and capable of independently steering a course
on or through water through its own means of propulsion; and
(B) that is designed and capable of carrying and transporting one or
This change narrowed the type of water floating devices covered. A towed
target barge used in gunnery practice would fall outside this statement,
unless there were other facts to support coverage. An oil well rig floated
to a site is another example of a device that would fall outside the Act,
unless there were other facts to support coverage. The creative mind will
see ways to qualify a device under this revised law.
A status report on the use of the VHDP Act is easy to present. A visit
to the Copyright Office web site http://lcweb.loc.gov/copyright
go to Vessel Hull for Interim regulations and forms and registration documents
(At the bottom of the document located the file with the list of registrations
and click on the registration number to bring up the filed documents).
One can examine the documents filed, including the drawings and pictures,
a tribute to the Copyright Office in administering this new law. It is
a strong evidence that this approach to market entry design protection
works and administration, with computer technology can make process the
registration applications effectively. As of October 15, 2000, there are
V. European Union Community Design System Is on Its Way to Operation
The BNA World Intellectual Property Report, 14 WIPR 262 (2000)
announced that the European Union Community Design System was close
to starting up. The EU Design Directive was published to help harmonize
the design patent (registration) systems in member countries (see review
of EU Directive on this web site). The next step, that will occur soon,
as evidenced by action by the EU Parliament, will be approval of the Community
Design System Regulation. The Regulation is ready for publication, with
a compromise in place for the controversial spare parts issue, as stated
in the Directive. The Community Design System will be administrated by
the EU Trademark and Design Office. Information on these developments will
be available on its web site (http://oami.eu.int).
VI. Coming - Other Design Patent Cases 1999 and 2000 - A review.
A review of selected design patent cases for 1999 - 2000 will be published
on this web site, if time permits, in the next major site update.
Comments on topics mentioned in this Newsletter are welcomed. All comments
should be sent to the editor at the following E-mail address: email@example.com
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This page was last updated on November 10, 2000.
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