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Lessons in Trademarking Trade Dress: Apple vs. Samsung

By John DiGiacomo

Lessons in Trademarking Trade Dress

The long-running legal battle between Samsung and Apple over the shape of their respective smart phones provides some interesting lessons regarding trade dress law and how common law trade dress rights work. See news article here.

Apple vs. Samsung: Design Patents and Trademarks for Apple’s iPhone

In 2007, Apple, Inc. brought to market its first iPhone. It was very popular with consumers. The iPhone is a smartphone which, in general, is a cellphone “with a broad range of other functions based on advanced computing capability, large storage capacity, and internet connectivity.” See Samsung Electronics Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016).

Apple sought and obtained several design patents including a patent covering a black rectangular front face with rounded corners, a patent covering a rectangular front face with rounded corners and a raised rim, and a patent covering a grid of 16 colorful icons on a black screen. At the same time, Apple also obtained trademark registration for some aspects of the trade dress of the iPhone, particularly the icon array.

Samsung also manufactures smartphones. After release of the iPhone, Samsung began manufacturing and selling a series of smartphones that resembled the iPhone in appearance. Apple sued, claiming infringement of the design and utility patents and also sued for trademark infringement based on theories of dilution. After trial, a jury agreed that Samsung had infringed Apple’s design and utility patents and awarded Apple $399 million. That award was reversed by the US Supreme Court in 2016 and remanded for further proceedings.

The jury also agreed with Apple on the trademark dilution claim and awarded Apple over $290 million. However, that award was reversed by the Ninth Circuit Court of Appeals. See Apple Inc. v. Samsung Electronics Co., Ltd., 786 F. 3d 983 (9th Cir. 2015). The case is now headed towards its fourth jury trial.

Apple vs. Samsung: Legal Principles of Trade Dress and Trademark

The Lanham Act governs trademarks and trade dress. And, just like a trademark, it is possible to obtain federal registration trade dress. In general, “trade dress” can be conceived of as the way in which a product or service is packaged or presented. In general, the view is from the “totality of elements.” The purpose of trade dress is the same as that of trademarks generally: to identify the source of the product.

However, courts have long balanced the trademark protection for “source identification” against the need for competition. In theory, a trademark will last forever — a perpetual monopoly — as long as the mark is used in commerce. As such, a registration that protects trade dress will not be allowed if the trade dress diminishes competition or gives the owner of the mark some competitive advantage. This leads to a requirement that the trade dress be nonfunctional. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).

In general terms, courts have held that a product feature is “functional” if the

  • Function is essential to the use or purpose of the product
  • Function affects the cost or quality of the product
  • Function has some utilitarian advantage
  • Function has some other competitive advantage
  • Product works better in the particular shape or design

Apple vs. Samsung: Unregistered Trade Dress Held to be Functional

The ability to sue for trademark infringement/dilution does not require registration of your trademark with the US Patent & Trademark Office. One of the more interesting aspects of the Apple/Samsung case was Apple’s assertion of dilution with respect to unregistered trade dress. According to the Ninth Circuit case cited above, Apple’s asserted unregistered trade dress was described as follows:

“A rectangular product with four evenly rounded corners;

a flat, clear surface covering the front of the product;

a display screen under the clear surface;

substantial black borders above and below the display screen and narrower black borders on either side of the screen; and

when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons.”

The legal effect of not having this trade dress registered on the principal federal trademark register is twofold:

  1. The evidentiary burden of proof is placed on Apple to prove that the trade dress, taken as a whole, is not functional AND
  2. No presumption of trademark validity

Under Ninth Circuit precedent, four factors are used in considering whether trade dress is functional:

  1. Whether the design yields a utilitarian advantage
  2. Whether alternative designs are available
  3. Whether advertising touts the utilitarian advantages of the design, and
  4. Whether the particular design results from a comparatively simple or inexpensive method of manufacture

On each of these factors, the Ninth Circuit found that the iPhone trade dress was functional.

  • On the first factor, the court found there to be several utilitarian advantages. The rounded corners of the iPhone improved “pocketability” and “durability.” Further, the rectangular shape maximized the size of the display screen and the size of the corresponding texts or video or photos shown on the screen. Further,
  • On factor two, Apple failed to identify any alternative designs that were as utilitarian.
  • Likewise, Apple’s advertising subtly touted the advantage of the smooth surface, the size and icon configuration that allowed easy “thumbing” and the shape that fit easily in the hand.
  • On the final element — simple or inexpensive method of manufacture — Apple again lost. Because this trade dress was unregistered, Apple had the burden of proof and Apple had provided no evidence on this point.

Taking the factors into consideration, the Ninth Circuit held that the iPhone’s trade dress was functional and, thus, not entitled to trademark protection.

Apple vs. Samsung: Registered Trade Dress Also Held to be Functional

Apple also asserted that Samsung infringed/diluted Apple’s trade dress that was registered with the USPTO. Legally, federal trademark registration provides “prima facie evidence” of non-functionality and also places the burden of proof on the challenger — Samsung in this case. The “prima facie” evidence can be overcome. If sufficient evidence is produced demonstrating functionality, trademark registration loses its evidentiary significance.

Apple asserted registered trade dress for the each of and for the combined array of 16 icons on the iPhone’s home screen as framed by the iPhone’s graphic display of a rounded-rectangular shape with silver edges and a black background. For example, the design features of the first icon depicted the letters “SMS” in green inside a white speech bubble on a green background. There was/is a separate description for each of the sixteen icons.

The Ninth Circuit quickly concluded that the trade dress for the iPhone’s icons were functional. The court noted that Apple’s own expert from the trial testified that the interface on the iPhone promoted usability. The expert testified: “the whole point of an icon on a smartphone is to communicate to the consumer using that product, that if they hit that icon, certain functionality will occur on the phone.” As such, the Ninth Circuit held the trademark registration to be invalid on the grounds of functionality.

Applicable Lessons Learned

With more money and lawyers than most companies in the world, the trade dress troubles of both Apple and Samsung evidence the difficulty in obtaining trade dress protection. Due to this difficulty, it is important to work closely with an attorney if you are seeking trade dress protection or registration. An attorney can provide you with advice on how to advertise your product to ensure that you can seek and maintain trade dress protection.

Contact Revision Legal

If you need more information on trade dress, trademark law, or have other questions about trademarks, contact the lawyers at Revision Legal. Revision Legal offers a wide array of legal services related to internet law, intellectual property and business law, including all services related to trademarks. We can be reached by email or by calling us at 855-473-8474.

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