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Registering Product Design and the Functional Limitation – Patently-O

May 16, 2024

America’s leading patent law source
by Dennis Crouch
TBL Licensing v. Vidal (4th Cir. 2023)
The Timberland Boot trade dress case is pending before the Fourth Circuit, raising some interesting questions about the role of product trade dress vs design patents vs copyright vs utility patents.

Timberland boots were first sold in the 1970s with a unique design that quickly resonated with consumers. The company has now sold more than $1.3 billion of the boots in the US, with more than $100 million in sales most years.  The boot design is well recognized as an icon.  The image above is not an actual boot sold by the company, but one created by an AI with the prompt “timberland boot.”
In 2015 Timberland began the process of registering the boot design as a trademark.  The proposed registration filings focused on iconic elements of the boot, including the silhouette features shown above. But, the USPTO refused to register the mark.  The examiner found that the design lacks secondary meaning and is also too functional.  The TTAB affirmed, but only focused on the lack of secondary meaning. At that point Timberland filed a civil action under 15 U.S.C. § 1071(b) seeking a court order to register the design mark.  The district court sided with the USPTO, holding that Timberland had failed to prove (1) that the design was nonfunctional; and (2) that consumers recognize the design as a unique source identifier.  The case is now pending appeal before the Fourth Circuit.
One of the USPTO’s key arguments in the case focuses on timing.  Timberland boots have been on the market for 50 years, and according to the record the company has “never has demanded that competitors cease and desist from
selling look-alike boots.”  And, although lots of folks recognize the look of Timberland boots, it turns out that the marketplace is flooded with look-alike alternatives.
INTA has filed an amicus brief in support of Timberland arguing that the district court erred in its functionality analysis. Rather than analyzing whether the boot design “as a whole” is functional, the District Court incorrectly disectected the overall appearance of the Icon Boot design into constituent elements, without addressing whether the combination of elements (even if individually functional) formed a whole that was more than just the sum of its parts.
Read the briefs here:
Law Professor at the University of Missouri School of Law.
Did they register designs on the shape of the boot in the USA or elsewhere? If so, why should they be able to now extend the term of protection under TM law?
Did they register patents on the boots in the USA or elsewhere? Do those patents cover the features they’re now seeking to cover with TM protection? If so, why should they get TM protection for something that’s functional?
why should they be able to now extend the term of protection under TM law?
Reminds me of the Traffix case…
link to
Suppose the maker of a cola drink devises a distinctive and visually attractive shape for the glass bottle in which they market their product. They register its design. After many years of huge success, they register the bottle shape as a trademark, and thereby enjoy protection without limit of term.
That’s OK, isn’t it?
And if that’s OK, why not OK here too? It’s just a different but also iconic container design, isn’t it? Or is it that the bottle includes capriciously added non-functional design features?
… capriciously…?
Indeed, it was predictable, and predicted by some (!), with the increased uncertainties re utility patent validity issues since AIA, that Design Patents remained yet, some small bastion of freedom. But ugh, and alas, half the circling buzzards have landed and seem to be doing test pickings ! 🙂 Expect more previously-unpicked pickings 🙂
Freedom’s just another word for lawless nonsense that grifters can exploit until normal people get fed up with their idiocy and greed.
^^^ I am more than certain that Malcolm does not realize just how much more his statement says about him than about anything else.
Clearly, he exemplifies the Authoritarianism of the Sprint Left ‘groupthink.’
Design patents have been broken for ages. But it was only when “round corners” paid off like a broken slot machine that people really started to take notice of how to exploit the problems.
Ohhh shiny.
But wrong. After market auto parts we’ll precede the more glittery focus
“After market auto parts we’ll precede the more glittery focus”
Is there more to this poem? Not bad.
All way s’more

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Dennis Crouch
Professor, University of Missouri School of Law
SSRN Articles

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Jason Rantanen
Professor, University of Iowa College of Law
SSRN Articles
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