IPSC Breakout Session 4, Design, Trademark & IP Boundaries

Backdoor Trade Dress, Rachael Dickson

Strange things are afoot at the PTO. Applications for line drawings of specific products. They are not configuration marks for the product design. They’re just design marks. In addition to the usual TM registration requirements, configuration marks raise two concerns—functionality and what level of distinctiveness is required. Product design requires acquired distinctiveness, and PTO usually requires significant evidence to allow a registration for product design, not relying on 5 years of exclusive use.

Some have received failure to function refusals: a drawing of ear loops: mark drawing is filed in form & style customary for configuration marks; consumers not used to it; also refused on 2(d) grounds b/c Loop has a registration for the configuration (as well as a design patent).

Backdoor trade dress risks skating past PTO w/o showing acquired distinctiveness or nonfunctionality; description doesn’t include limitations.

RA easily found 100 examples; estimate of 100s more. Common issues: descriptiveness, failure to function, 2(d) if the maker has a configuration mark. But also: regularly approved for publication/registration; found 39 already registered.

Overall, PTO doesn’t have a clear reason to refuse these types of applications. There’s no “we suspect you’re going to do sketchy things w/this” refusal.

Backdoor trade dress application types: (1) designs identical to at least 1 goods listed, (2) related to goods listed, (3) designs unrelated to goods listed. (1) should get a descriptiveness refusal. Lots of marks clearly taken from images online: app for projection screens taken from an Amazon product listing. Another with a toy caterpillar for children’s toys.

(2), e.g, a drawing of a nonstick pan for oven mitts. Lavalier mike for guitars.

(3) Water fountain for toys.

Why? Possibly takedowns. Reg (now cancelled) used to file infringement notice on Amazon against magnetic hooks sold by another party, Smukmagnet. Smukmagnet has a design patent though and so it filed a cancellation.

Manufacturers do think this is what’s happening: TTAB opposition on a soccer ball shaped light; another example of a design for a child’s tablet. Almost all the applications are from China. Amazon doesn’t do any scrutiny.

Can design marks be legitimate? Maybe, for identical/related designs. But is this a TM function instead of ornamentation or indicating what the product is?

Of course there are product design marks that sort of resemble other objects, the Taco Bell bell etc but those aren’t line drawings.

Problems: obtain trade dress style protections on online platforms w/o having to meet trade dress requirements; allows monopolization over functional elements or nonfunctional elements owned by others.

What next?

Mark McKenna: Is this an actual competitive problem? This depends on whether they’re being used to assert rights. What we know so far suggests this might be the tip of an iceberg. Also the gameability of the PTO process. Configuration mark-based 2(d) refusals is implicitly suggesting that design marks are enforceable against configuration marks and vice versa, which might be the wrong message: the drawing of the product shouldn’t cover the configuration of the product—but also vice versa! [Though the necessity of secondary meaning for the product configuration might provide an important constraint there.]

Sarah Burstein: can we make them disclose that they’re not configuration marks?

A: already a lot of boxes to check; some of the apps already say this is not a configuration mark. PTO doesn’t do much unless there’s 1000s of applications.

Jennifer Rothman: Is this a trade dress problem or a PTO registration problem? PTO registers many things that shouldn’t be registered. Why? B/c they have time constraints and an orientation to help applicants succeed (except for 2(d)). If there’s no opposition, it’s probably going to get registered even if it shouldn’t. That’s the bigger problem. AI may make it worse.

What do we mean by design marks? It’s always challenging b/c logos are design marks and trade dress is also design marks. So we need clearer definitions. [Design of versus design on?]

A: they’re trying but there are new schemes every couple of years or so. [This is what I plan to write about—the general implications of that cycling/whack-a-mole.]

Ramsey: this could be an opportunity to develop failure to function doctrine—there are expressive uses, decorative uses, and possibly puzzling uses like this!

Backdoor Copyright, Sarah Fackrell

SCt has worried about backdoor patents through © or TM. We should also be concerned about design patents used to get backdoor ©. The conventional wisdom is that copyright is stronger than design patent. © is instantaneous (design patent not); cheap (free/low v. five figures); term; broader. But the creativity threshold for design patent is lower, and there’s no separability doctrine. We’re seeing this especially in the area of graphical user interface designs. Many of these would be below-Feist designs.

USPTO has also engaged in expansion of subject matter. In 1996s PTO started accepting GUIs; 2006 started accepting animated GUIs; 2026 disembodied designs including projections, holograms, and virtual/augmented reality. Statutory text, what text?

Statutory text: “new, original, and ornamental design for an article of manufacture.” Not just a design: a design for an article of manufacture. The PTO doesn’t care. A projected keyboard, the PTO says, is a design for a computer b/c it is produced by a computer. Does not compute! Side note: it’s not clear that machines are articles of manufacture.

What’s going on? (1) avoiding limits on © and TM. Lawyers are very clear about this. Avoid fair use (though Egyptian Goddess constrains scope). (2) structural story: a small group of attorneys with interests. (3) harmonization claims—e.g., Singapore protecting designs for non-physical products. Those lawyers are lobbying lots of offices—once they got Singapore to act, they used it as a beachhead. (4) financial incentives—design patents make money for PTO/lawyers and securing © does not.

Who cares? Institutional issues! Hard to challenge this. First PI decision was 2024 even though 1996 introduced GUIs; competitors like Samsung won’t challenge b/c they want their own GUI design patents.

Constitutional issues: First Amendment; progress clause. Why isn’t a movie design patentable subject matter?

Doctrinal: simultaneous move to destroy Egyptian Goddess test which has kept the scope of design patents narrow. Patent owners arguing for substantial similarity instead.

There’s a history here—projected designs have existed for a long time.

RT: (1) You weren’t worried about avoiding fair use. But: Why isn’t your presentation infringing since it comes from a computer? (2) literature on this international phenomenon—arbitrage—w/© e.g. term extension. (3) Larger literature on tech bro fantasies of dematerialization of value?

A: there was an assertion of rights by the KKK in a design patent that shows the potential risks.

McKenna: claims of people being “left out” by the system—what’s the story they’re telling about the gap?

A: mostly they leave that out. She’s a thorn in their side b/c she keeps saying “why not assert ©?” The stories have changed b/c the early claims were “this is new and unprotected.” But it’s more now: these are designs, we should get design patents.

Ramsey: textualist moment bolsters your statutory argument.

A: in Samsung, the Court says “article of manufacture is anything made by hand or machine,” and that might be read to encompass projections.

Q: if designs are sub-Feist, how are they novel?

A: a whole paper on that!

Quantum Trademarking, Sayoko Blodgett-Ford

Uncertainty principle: it’s impossible to simultaneously know precisely both the legal boundaries of a TM and how such boundaries are changing. Entanglement: TMs that share at least one boundary area are connected/entangled. Doesn’t mean that they infringe. Axes include mark, goods, fonts, logo design, etc.

Superposition: TM boundaries occupy all and no available locations simultaneously and probabilistically. Collapse: TM boundaries are forced into a location in a specific legal context, at a particular time, by a particular observer. E.g., which designs were actually used in commerce by Apple computers? Apple Corps (Beatles music label) share boundaries, not just word mark but multicolor apple logo, and video laser discs featuring music share boundaries w/computers.

Fred Yen: is this an insight from quantum physics or a more general insight that measurement involves displacing an object in general? If we don’t carefully define the metaphor it may not be helpful. Related: when we use the word “measure”—the position of the TM does not exist prior to a declaration from a court—this measure can’t be taken w/o litigation. Entanglement—the problem of what happens as marks move towards each other “geographically.”

Jennifer Rothman: Do decisions actually fix position? Not sure there’s any location in most cases. There’s a dispute and there may be decisions that make it more likely the mark is “in” a particular location, but they don’t pinpoint the boundaries of the mark.

A: due to the uncertainty principle.

RT: consider the effects of registration v. litigation. Registration has different features that try to avoid some of these uncertainties, e.g. the word mark in standard character form that doesn’t care about font etc., the list of goods & services that don’t care about channels of trade, nationwide scope that doesn’t care about actual business.

Cumulative Marks, Jim Gibson (with Chris Cotropia)

Problematic marks often are not the first mark on the product/service; authorities aren’t often careful about the secondary meaning evidence. Timberland case is an example of doing it right in the US: these claimed features are not shown to have secondary meaning b/c they always travel with a better-known mark even if the evidence would otherwise suggest secondary meaning.

“Limping” marks in the US. But wants a doctrinal hook for looking at “cumulative” marks differently. Example: Hershey’s—able to enjoin Art Van, where the cumulative marks do all the work in stopping the use b/c there’s no use of Hershey’s. Many examples are product packaging/product design.

David Barnes in 2009 advocated 1 trademark per source. That’s pretty radical, but Dannon at one point had registered marks for Dannon, “live & active cultures,” “light & fit,” and “7 benefits” all on the same yogurt container, which is probably a bad idea. If there are already existing well-known marks for these brands, then the benefits to consumers are less weighty; just as we think you need evidence to show secondary meaning for descriptiveness but we presume it for arbitrary marks you might consider requiring more for secondary marks.

Most problematic: low marginal benefit, high cost to competitors: the configuration of the Hershey bar. Least problematic: high marginal benefit, low cost to competitors: Tapestry Collection by Hilton (helps you place the instance on the spectrum of Hilton quality). Tertium quid: some marginal benefit, some cost—the Nike swoosh versus the word mark Nike.

Could ratchet up renewal fees for overlapping claims. We could also adjust protection & enforcement side.

Ramsey: recent JDI decision in 9th Circuit shows potential: careful attention to what about the JDI trade dress was famous and only allowing dilution protection for that, not for “old No. 7” on its own.