Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent decision from the Trademark Trial and Appeal Board, the parent company for Timberland had its ex parte appeal of the denial of a trade dress registration for its boot design affirmed. Timberland filed a trade dress application for the design (or configuration) of one of its boot designs. Because product configuration trade dress must be non-functional and have secondary meaning in order to be registered, Timberland submitted evidence of from retailers and publications referring to celebrities such as Justin Bieber and Beyonce’s daughter, Blue Ivy, as wearing the boots embodying the asserted trade dress. The TTAB affirmed the refusal to register by rejecting the claim of secondary meaning noting, among other things, that “This evidence may demonstrate the popularity of Applicant’s lace-up boots, but it does not show that the celebrities wearing the Timberland boots associate Applicant’s claimed trade dress with the source of the boots they are wearing. Nor do these excerpts and images direct the attention of potential consumers to identify Applicant’s claimed trade dress as the source of Timberland boots.” This should not be taken as a blanket refusal to register trade dress is shoe designs. It appears to simply be a case of insufficient evidence. Thus, one takeaway here is that if secondary meaning and non-functionality can be established, one may still try to register product designs as trademarks.

2. In a recent decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR), the Board invalidated a design patent owned by General Motors directed to a vehicle front fender design found on a 2018 Cadillac XTS. The Board found that the primary reference (a 2013 GM design patent for a Cadillac Escalade fender) was substantially the same as the design patent under review. The challenger also presented secondary references that were the same types of articles of manufacture that bridged the gap in the design differences between the primary reference and the patent under review. The takeaway here is that while it is not easy to invalidate a design patent, and the PTAB is not frequently involved in reviewing design patents, it can be done.

3. In a recent, interesting decision in a trade dress (not patent) case from the Sherman Division of the Eastern District of Texas, Nothing Bundt Cakes (which are really great!) sued an individual doing business as “All About Bundt Cakes” for trade dress infringement related to the frosting pattern used by Nothing Bundt Cakes. Nothing Bundt Cakes has an incontestable federal trademark registration for its frosting pattern. The defendant engaged in the same business of selling bundt cakes online and via social media, used the same frosting pattern as Nothing Bundt Cakes, and before changing her fictitious business name to “All About Bundt Cakes” used the name “Anything Bundt Cakes,” all of which seem to make out an egregious case of infringement. Nothing Bundt Cakes filed a motion for preliminary injunction to stop the infringing activities, which were having negative effects on its business. Not surprisingly, the defendant did not respond to the Complaint, the motion, or appear at the hearing on the PI motion. The Court granted the motion for preliminary injunction. The takeaway here is probably fairly obvious.