Why trade dress beats design patents

Via the Diva of Design Law, Sarah Burstein:

Unfortunately what’s obvious to a diva is not so obvious to us pikers. And while I work with patent lawyers to make sure creations entitled to protection under both trade dress and design patent get it, I don’t consider myself qualified to explain the “breadth” point referred to by Sarah in her tweet. But I did find this very good article, among a dozen mind-numbing ones, that does.

It’s on the Finnegan website, and is an article by two Finnegan lawyers, Elizabeth D. Ferrill and Sydney N. English. It’s called, “Yin and Yang: Design Patents and Trade Dress Rights,” originally published in 2015 by BNA’s Patent, Trademark & Copyright Journal. You should bookmark it, because as you’d expect, it’s quite comprehensive. I think that this is the part that goes to Sarah’s point:

Asserting trade dress rights can also be beneficial because it may be easier to show trade dress infringement than design patent infringement. Trade dress infringement requires a showing of a likelihood of confusion, while design patent infringement requires a showing that an ordinary observer would find the two designs in dispute are substantially the same. Likelihood of confusion is a lower standard of similarity than substantially the same because “likelihood of confusion” does not require a degree of “sameness,” but rather considers whether their likeness is likely to cause consumer confusion. The likelihood of confusion standard, however, is typically demonstrated with consumer evidence, whereas, the ordinary observer test is typically supported by an expert witness. The latter is usually quicker and less expensive than a consumer survey.

I wanted to put the whole thing in, but to be honest you can disregard the part about surveys. They’re a hot mess, as likely as not to get tossed out, and also increasingly unnecessary. Fact is, today’s judges just go with their hearts on a LIKELIHOOD OF CONFUSION or kick the can down to the jury and invite them to do the same. You can believe what Westlaw tells you or you can believe the old man who has lived it: Despite stacks and stacks of cases saying that the lack of a survey casts a long shadow over likelihood of confusion claims, courts in trademark cases routinely disregard this formulation. For that reason, they’ll almost never dismiss a plaintiff’s case on summary judgment merely because there’s no proof of a likelihood of confusion. That’s true even if a lack of actual confusion over an extended period suggests the contrary.

In other words, to proceed on trade dress grounds, you can probably skip the survey. You won’t even have to pay for that expert witness you’d need in a design patent case. Of course, it’s not always a picnic establishing trade dress rights. Whereas if you do have a design patent, that’s something you can wave around in court — which is not for nothing.

UPDATE:

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