sub-header

Accused Infringer’s Ornamental Logo May Defeat Design Patent Infringement Claim

| Adam PowellRyan W. McBride

COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES  

Before Lourie, Moore, and Stoll. Appeal from the U.S. District Court for Southern District of California.

Summary: An accused infringer’s use of ornamental logos can and should be considered as one factor when analyzing design patent infringement.

Columbia alleged Seirus infringed a design patent depicting a horizontal wave-pattern design.  Seirus argued primarily that an ordinary observer would not be confused because it repeatedly used the Seirus Logo within its “HeatWave” design.  Seirus also identified other differences, including a 90 degree rotation and a wave design of varying spacing and size instead of a uniform design.  The District Court granted summary judgment for Columbia, finding that in a side-by-side comparison, “even the most discerning customer would be hard pressed to notice the differences between Seirus’s HeatWave design and Columbia’s patented design.”  The District Court relied on a previous Federal Circuit decision for the proposition that “logos should be wholly disregarded in the design-infringement analysis.” 

The Federal Circuit distinguished the prior decision that the District Court relied on because that case involved admitted copying.  As the court explained, “[a] would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its name.”  However, that decision does not prohibit consideration of an ornamental logo as one of several potential differences between a patented design and an accused one.  Thus, the Federal Circuit reversed and remanded for further consideration.

Editor: Paul Stewart