Court Declines to Apply Trademark Aesthetic Functionality Defense to Design Patents
The United States District Court for the Eastern District of Michigan recently held that the concept of aesthetic functionality, which may be used to invalidate a trademark, does not apply to design patents. Auto. Body Parts Ass’n v. Ford Global Techs., LLC, No. 2:15-cv-10137, 2018 U.S. Dist. LEXIS 26290, at *1 (E.D. Mich. Feb. 20, 2018).
A design patent provides protection for a period of 15 years from the date of grant to “[w]hoever invents any new, original, and ornamental design for an article of manufacture…” 35 U.S.C. § 171 (emphasis added). In contrast to a utility patent, a design patent protects the appearance of an article of manufacture.
In Automotive Body, the two design patents at issue (U.S. Patent No. D489,299 and U.S. Patent No. D501,685) related to a Ford F-150 hood and headlamp, respectively. Automotive Body, at *2-3. Automotive Body Parts Association (ABPA) filed a lawsuit against Ford Global Technologies, LLC (Ford) asking the court to declare the two patents invalid. Id. at *5. ABPA asserted the two patents were not for a “matter of concern” and were “dictated by function.” Id. at *14.
The “matter of concern” inquiry essentially requires the public to care about a particular design in order to allow the owner to obtain patent protection. Id. at *15 (citing In re Stevens, 173 F.2d 1015, 1019, (C.C.P.A. 1949)). An example of a design that is not a matter of concern is a rotary brush for a vacuum cleaner that is concealed from view during use of the vacuum. Id. at *15.
ABPA argued the hood and headlamp of the patents-at-suit are not a matter of concern because, when the F-150 is damaged, the owner simply wants replacement parts that will return her F-150 to its original condition. Id. The court, however, held that ABPA failed to establish that the matter of concern inquiry is constrained to the perspective of the vehicle owner at the time she is buying the replacement body part, as opposed to, for example, the time the owner initially buys the truck. Id. at *16. Since, at the time of purchase, the appearance of the vehicle likely mattered to the owner, the court held that ABPA failed to show the two patents-at-suit were not a matter of concern. Id. at *21.
The test for design-patent invalidity asks whether the appearance of the claimed design is dictated by function. Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). If so, then the article does not deserve patent protection. Ethicon at 1328. The test serves the two-fold purpose of: (1) encouraging design innovation; and (2) preventing design patents dictated by function from receiving a monopoly on the function without having to clear the hurdles of obtaining a utility patent. Automotive Body, at *21-22 (quoting Donald S. Chisum, 8 Chisum on Patents § 23.03 at 23–38 (2016)).
ABPA argued the hood and headlamp of the patents-at-suit were dictated by function as the hood and headlamp are designed to physically fit onto the F-150. However, the court held that given the availability of other hood and headlamp options having a different appearance that were able to physically fit the F-150, the patented designs were not necessary for the parts to perform their intended purpose. Id. at *22.
Seeking to apply the aesthetic functionality doctrine from trademark law, ABPA also asserted the patents-in-suit were invalid because they were designed to match the overall aesthetics of the vehicle. Id. at *21, 23.
Under trademark law, a mark associated with a particular source can be protected so as to encourage the mark holder to make high-quality goods and discourage competitors from selling poor-quality goods under the guise of the mark. See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 164 (1995). The functionality doctrine under trademark law prevents a producer from obtaining a trademark for a useful (i.e., functional) product feature in perpetuity. Id. at 165. Generally, “‘a product feature is functional,’ and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’” Id. (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 (1982)).
In addition, purely aesthetic product features can be protected as trademarks if they are source-identifying and non-functional. See Qualitex, 514 U.S. at 166. However, the Restatement (Third) of Unfair Competition notes that, if the “aesthetic value” of the product feature is in its ability to “confer a significant benefit that cannot practically be duplicated by the use of alternative designs,” then the product feature is “functional.” Id. at 170 (citing Restatement (Third) of Unfair Competition § 17, cmt. c, 175-176 (1995). By way of example, a trademark for the design of a heart shape used in connection with heart-shaped candy boxes would be invalid for aesthetic functionality. Restatement at § 17, illus 8. See also Mattel Inc. v. MGA Entertainment Inc., 782 F. Supp. 2d 911, 1004-1005, 1007 (C.D. Cal. 2011) (where trade dress was found invalid for being aesthetically functional as the trapezoidal packaging was not promoted as a source identifier).
Nevertheless, in Automotive Body, the court declined to import the aesthetic-functionality doctrine from trademark law into design-patent law. Id. at *24. First, the court noted that no court had ever applied the aesthetic-functionality doctrine from trademark law to design-patent law. Id. Second, the court noted that trademark law and patent law serve different purposes. Id. For example, “by protecting a firm’s reputation,” trademark law “seeks to promote competition.” See Qualitex, 514 U.S. at 165. In contrast, patents inhibit competition by creating “an environment of exclusion, and consequently, crippl[ing] competition.” Schering-Plough Corp. v. F.T.C., 402 F.3d 1056, 1065-66 (11th Cir. 2005). Third, the court noted the “greater reason for trademark law to be concerned with functionality (aesthetic or otherwise) than design-patent law,” i.e., the mark holder being able to gain a perpetual monopoly over the product’s function without clearing the hurdles for obtaining any patent—utility or design. Automotive Body, at *25; see Qualitex, 514 U.S. at 165. Rather, the court noted that one must overcome at least some obstacles related to novelty to obtain a design patent and, in doing so, receives a limited monopoly of 15 years. Automotive Body, at *25. Therefore, the potential inequality of allowing a design patent to protect aesthetic functionality is lower than allowing a trademark to do the same. Id.
Accordingly, the court rejected ABPA’s invalidity challenges. Id. at *35.
Takeaways: The court declined to apply the concept of aesthetic functionality, which may be used to invalidate a trademark, to the validity of a design patent. The matter of concern inquiry for a design patent is not necessarily limited to time at which a replacement part is purchased.
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