In a recent article published in IPWatchdog, Knobbe Martens’ Design Patent Litigation Practice Chair Ben Katzenellenbogen examines issues that can arise from overlapping trade dress and design patent rights. He proposes that “both trademark and patent law would benefit from clarifying the interaction between design patents and trade dress,” particularly where a period of patent-enforced exclusivity gives rise to potentially perpetual trade dress protection for the same or similar features of a product. Katzenellenbogen analyzes decisions from the Supreme Court, Federal Circuit, and U.S. Patent and Trademark Office (USPTO) that offer varying guidance. “Courts could help promote consistency and predictability by expressly addressing and resolving this tension,” he suggests.
Katzenellenbogen recommends that brand owners “should continue to seek and obtain a variety of rights of varying scope to maximize their current protection and hedge against potential changes in the legal landscape.” Further, he adds that, particularly in cases where design patents cover potential elements of trade dress, rights holders “should consider seeking trademark protection on combinations of names, fonts, colors, and aspects of designs that are not expressly claimed in the design patents or that differ in some respects from the claimed designs.”
Read the full article, “Must All Good Things Come to an End, Or Can You Obtain a Perpetual Design Patent?” in IPWatchdog.
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