Trade dress to the rescue? Not so fast. Patent design or trade dress infringement theories can sometimes be a successful remedy, but not always. Patent design requires a prior patent registration and often the victim of the infringement either did not realize it should have filed a design patent, or did not take the time or money and put it toward that task. Therefore, patent design is only as good as the forethought and planning that may have (or may not have) gone into the product design.
So, we are left with trade dress protection. Trade dress is typically defined as the “look and feel” of a product and is a bit elusive considering it is not usually filed in an application before the USPTO. Therefore, this client’s option is to try to establish a fact based infringement claim in a lawsuit, an often time consuming and expensive venture.
Converse is certainly up for the challenge. The shoe company has recently sued multiple companies concerning the alleged “copying” of its iconic Chuck Taylor shoe designs. While the outcome remains to be seen, a few defendants have made some interesting arguments. One argument heard in these cases is functionality – that is – if the design is functional, a necessary component for the product to work or function, then that element is not eligible for trademark protection. However, a more interesting argument currently being made is that Converse waited so long to file these lawsuits that the design was already copied by so many companies that it became “generic.” While trademark infringement defendants often argue laches, or delay in filing suit, has somehow prejudiced defendant, an argument that delay caused the design to become generic is a rare occurrence. Essentially, these defendants are arguing that that there many infringers and Converse did not act quickly enough so as therefore the design should not be afforded the protection claimed by Converse.
The Converse case provides an interesting lesson to business owners and designers. In brief, product lines and advertising campaigns should be reviewed periodically to determine whether the brands are adequately protected. Additionally, companies should also be vigilant when it comes to protecting its product designs, and even website designs, before it is too late.
The information in this article is for informational purposes only and does not constitute formal, legal advice. Consult with one of the attorneys from Roberts McGivney Zagotta LLC for advice about your particular circumstance.