Tips & Takeaways: Apple v. Samsung

I've learned some things about services I'll recommend to people from some of the things today's Apple v. Samsung decision at the Federal Circuit laid out.

I. When two forms of IP can overlap, use them.

One of the common questions that IP attorneys get from their corporate clients is "why shouldn't I just pick Trademarks because they last forever?" Answer: Apple v. Samsung.

Apple's legendary verdict of nearly a billion dollars was reduced in part due to the CAFC's ruling that the "unregistered trade dress" features were functional according to 9th Circuit precedent in Disc Golf. However, design patent awards drawn to nearly the exact same subject matter were upheld, because of the way design patents are treated when part of the design covers material of utility: the jury is instructed to compare only the ornamental aspects in the design.

So a design patent with a term of 14 years can offer more bulletproof protection against a claim of functionality than a perpetual trademark.

II. Marketing absolutely needs to be in constant contact with your Trademark team.

There was a great deal of the case dedicated to the 3rd factor of the Disc Golf functionality test: whether advertising highlighted utilitarian value of a feature. The very particular phrasing and appearance of Apple's advertisements were scrutinized- and we're talking about Apple, here.

They have what they call a "product as hero" style where they try to show the audience the product and its features and let it speak for itself. Still, this 3rd factor was a key in the CAFC determining that Apple's trade dresses were functional.

Any trademark planner advising a marketing department now may try to make sure they give a close eye to any language in advertisement that tries to get too creative with highlighting "features".

III. If you have to make a choice, Patents are King

Trademarks are great, valuable assets, but they also require a lot of legwork to prosecute, enforce, and maintain, especially for a corporation with Apple's reach.

That's not to say that patents don't also require investment, a sharp prosecutor, litigation skill, and diligent maintenance; but often, the cost is front-loaded with a comparatively smooth enforcement over the term of the patent. In my opinion, the patent-holder wins in a few categories right now:

  1. Presumption of Validity - While registered trademarks are technically presumed valid just like issued patents, you will also find that juries can wrap their heads around the entirety of a trademark easier than the entirety of an issued patent. Because they can understand a trademark, they will likely be more willing to invalidate a "presumed valid" trademark they can understand than a "presumed valid" black box of a patent that they lack the technical expertise to grasp fully. They're more willing to really believe the USPTO did their job when it would be too hard for them to craft an alternative narrative.

  2. Fewer pitfalls - Unlike trademarks which can "go generic" and require recognition as a designation of origin, design and utility patents are valid for their term, period, assuming you're current on fees and such. The "likelihood of confusion" test versus "deception" seems to give patents more leeway as well.

  3. Predictable law - Bear in mind that the CAFC had to apply 9th Circuit trademark law. Unlike Copyrights which tend to have their law crowd around American cultural titan regions such as California or New York, and Patents whose appellate precedent is set by the CAFC, Trademarks exist wherever business is done. When law splits in Trademarks, it splits in 12 circuits- because the CAFC has its own TTAB-appeal-based caselaw. Patent law has one source: the CAFC.

  4. Patents are clear and easy to write demands for - Not that registered trademarks aren't, but let's face it: one of the largest corporations in the US asserted 5 unregistered trademarks and one registered. Apple didn't actually bother to register the trademarks, which were not put into writing until the complaint was filed.

Imagine you got a demand that said "You have stolen the general look and feel of my product". Now imagine you got a demand that said "You stole feature X from my product as set forth in US Design Patent No. YYY,YYY". Which are you more likely to call out and litigate? The one that refers to a written, issued patent, or the one that you know the other side is going to have to bill expensive litigators for months to prove up, possibly to no avail?

Today's decision was tough news for Trademark planners, and hard to hear for a lot of good litigators out there, but there are useful lessons here for growing businesses and IP rightsholders.

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