When Emblems and Design Patents Intersect: Building Waves in Columbia v. Seirus | Jones Day

Jury verdict underscores the necessity of coordinating trademark and style and design patent portfolios.

For practically 30 several years, the inclusion of a trademark in the design and style of a defendant’s product did not necessarily mean significantly in the design patent infringement analysis. That transformed on August 6, 2021, in Columbia Sportswear North The usa, Inc. v. Seirus Progressive Add-ons, Inc., when a jury deemed, amid other matters, whether or not a trademark’s visual appeal and placement may well “give an ordinary observer a distinctive visual effect” than the patented design and style. 3:17-cv-01781 (S.D. Cal Aug. 6, 2021). The jury rendered a verdict that the accused layout that bundled a trademark did not infringe the design and style patent at difficulty.

The verdict in Columbia departs from prolonged-standing Federal Circuit precedent. In L.A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993), the Federal Circuit held that such as a mark or labelling does not stay away from design and style patent infringement as revealed in the pursuing shoe design and style and accused shoe:

The holding in L.A. Equipment intended for a lot of many years that the existence of a trademark is not an absolute defense to layout patent infringement. A would-be infringer really should not realize “avoidance of infringement by labelling.” Id.

Rapid ahead to the Columbia and Seirus dispute. Columbia sued its rival Seirus for infringing its style-patented surface sample for a heat reflective product used in liners for gloves and sleeping bags:


Relying on L.A. Gear, the district court docket disregarded the “labelling” in this article, the SEIRUS trademark, and granted summary judgment of infringement to Columbia. The Federal Circuit reversed, reasoning that a simple fact finder can’t “ignore aspects of the accused layout completely, only due to the fact individuals aspects involved the title of the defendant.” Id. at 1131. Alternatively, a jury must “take into consideration[] an decorative symbol, its placement, and its look as a person among the other probable variances concerning a patented layout and an accused a person.” Id. The Federal Circuit concluded that the district court docket had manufactured impermissible factual findings as to “no matter if an ingredient of Seirus’s layout would give an ordinary observer a distinctive visual perception than Columbia’s structure,” and returned the scenario to the district court for a trial on infringement. Id.

On remand, the jury rendered a verdict that Seirus’s layout did not infringe Columbia’s layout patent. The district court entered judgment on August 10, 2021. Submit-judgment motions will be thanks in early September, and an enchantment to the Federal Circuit might comply with after that.

The quick takeaway from Columbia v. Seirus is this: A trademark in a style and design could restrict legal responsibility for structure patent infringement. Pondering cautiously about how trademarks and structure patents relate to each and every other is essential and can have a considerable influence on certain sorts of models, significantly those in which logo and brand identify remedies can be visually popular. In all functions, coordinating brand and style patent portfolio enhancement and potential enforcement remains essential.