At the intersection of trademarks and design patents: making waves in Columbia v. Seirus – Intellectual property

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The jury’s verdict underlines the need to coordinate the portfolios of trademarks and designs.

For nearly 30 years, the inclusion of a trademark in a defendant’s product design meant little in the analysis of design patent infringement. This changed on August 6, 2021, to
Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., when a jury considered, among other things, whether the appearance and location of a trademark could “give an ordinary observer a different visual impression” than the patented design. 3: 17-cv-01781 (SD Cal Aug 6, 2021). The jury returned a verdict that the accused design that included a trademark did not infringe the design patent in question.

The verdict in Colombia departs from the long-standing precedent of the federal circuit. In LA Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993), the Federal Circuit held that the inclusion of a mark or labeling did not prevent design patent infringement, as the design shows. of the following shoe and the accused shoe:

Holding in THE Gear meant for many years that the presence of a mark was not an absolute defense against infringement of a design patent. A potential counterfeiter should not succeed in “avoiding counterfeiting by labeling”.
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Fast forward to the Columbia and Seirus dispute. Columbia sued rival Seirus for violating its patented surface pattern for a heat-reflective material used in glove and sleeping bag liners:

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Resting on THE Gear, the district court ignored the “labeling” here, the SEIRUS mark, and granted a summary judgment for infringement to Columbia. The federal circuit turned upside down, believing that an investigator cannot “entirely ignore the elements of the accused’s design, simply because those elements included the name of the defendant.” Identifier. at 1131. Instead, a jury should “to consider[] an ornamental logo, its location and appearance among other potential differences between a patented design and an accused design. ” Identifier. The Federal Circuit concluded that the district court had made impermissible factual conclusions as to “whether an element of Seirus’s design would give an ordinary observer a different visual impression than Columbia’s design”, and dismissed the case in district court for infringement lawsuit. Username.

On remand, the jury returned a verdict that Seirus’s design did not infringe Columbia’s design patent. The district court rendered its judgment on August 10, 2021. Post-judgment petitions will be due in early September, and an appeal to the federal circuit could follow thereafter.

The immediate takeaways from Columbia v. Seirus is as follows: a trademark in a design may limit liability for design patent infringement. It is important to think carefully about how trademarks and design patents relate to each other and can have a significant impact on certain types of designs, especially those where logo and brand name treatments may be. visually important. In any case, the coordination of the development of the brand and design patent portfolio and the potential application remains essential.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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