Posts Tagged: "functionality"

Federal Circuit Affirms Preliminary Injunction for CPAP Company

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

CAFC Says District Court Correctly Invalidated Design Patent

On June 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Southern District of California granting summary judgment in favor of Golden Eye Media USA Inc (GEM) over Evo Lifestyle Products Limited, formerly known as Trolley Bags UK Ltd (TB UK) after holding TB UK’s U.S. Design Patent No. D779,828 (‘828 patent) invalid. The district court held the ‘828 patent to be invalid for reasons of functionality and obviousness.

Trade Dress Considerations for Food and Beverage Products

Companies trying to compete for supermarket shelf space and consumer attention frequently turn to packaging and product designs that will stand out. If the product succeeds, one unfortunate side effect for the brand owner is the market can become flooded with “me too” products that attempt to ride on the coattails of that success. How do owners of unique products protect themselves? Trade dress protection is one legal tool that companies should consider.

Third Circuit Finds Stick-Shaped Cookie Trade Dress Invalid

Last week, the United States Court of Appeals for the Third Circuit affirmed a decision of the district court that granted summary judgment to Lotte International America Corp. because Ezaki Glico’s cookie design was functional and not entitled to trade dress protection in Kaisha v. Lotte International America Corp. Noting that trade dress protection does not extend to functional or useful features, and there was no dispute that Pocky’s design was useful, the Third Circuit explained that the trade dress was invalid and “[t]hat’s the way the cookie crumbles.”

Ninth Circuit Reverses Functionality and Fame Findings in Office Chair Trademark Case

On June 25, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Blumenthal Distributing v. Herman Miller, Inc. in which the appellate court reversed some parts of a Central District of California ruling on trade dress and trademark infringement claims related to office chairs sold by Herman Miller, and affirmed others. The Ninth Circuit’s decision discusses at length the issue of functionality, an area of trademark law which is undefined by statute and is notable for overturning parts of the district court decision because of an erroneous jury instruction based upon the Ninth Circuit’s own model rules. The decision also includes a partial dissent by Circuit Judge Michelle Friedland on the issue of dilution, with Judge Friedland arguing that Herman Miller hadn’t proven the requisite fame to prevail on its trademark dilution claims.