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Can Branding Avoid Design Patent Infringement?

Design patents cover ornamental designs for “article[s] of manufacture,” protecting a design “as shown and described” in the submitted drawing. 37 CFR §1.153(a). A recent Federal Circuit case determined that addition of the potential infringer’s logo into the design could be relevant to determining infringement. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., Appeal Nos. 2018-1329, et al. (Fed. Cir. Nov. 13, 2019).  Columbia Sportswear earned D657093 for thermal material bearing a wave design, without words. Seirus sold hats, gloves and socks using a similar design, but adding its name in the design.  The lower court characterized the addition of Seirus’ logo and orientation as “minor” differences, following precedent that “design patent infringement … does not … allow avoidance ... by labeling.”  The Federal Circuit reversed on November 13, 2019, holding that the 1993 precedential case “does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance” as factors in determining infringement. The district court erred by not ignoring material facts, and must reconsider the case to determine the importance of this particular use of the brand on the overall design patent.