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

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