Apple Asserts iPhone and iPad Shape Trademarks

Apple recently sued Samsung, claiming that the Korean manufacturer’s mobile phones and tablets infringe the trademark rights related to the iPhone and iPad line of products. I have written extensively about Apple’s unique and sophisticated approach to securing its design-related innovations with overlapping intellectual property rights. As I’ve mentioned in those writings, very few manufacturers have the legal knowledge and execution expertise to obtain shape trademarks for their products. Now it seems that Apple will assert the rights to their products’ look-and-feel in federal court against an aggressive competitor that has partnered up with another Apple arch rival, Google. Samsung’s devices use Google’s Android operating system.

In its complaint, Apple alleges that three federal configuration (shape) trademarks are infringed by Samsung’s devices. The two mobile phone devices are depicted side by side below:

Samsung's Galaxy next to Apple's iPhone

The trademarked elements relate to the rounded edges, the black finish and screen, the silver band running alongside the edge, and the configuration of software icons on the touchscreen.  Apple’s ability to obtain product shape and ornamental trademarks on all of these innovative product attributes indicate the high level of sophistication of their intellectual property strategy. Even today, many company executives are surprised to learn that it is possible to get federal trademark rights on anything other than a company name or logo. For Apple, it may be that their appreciation and investment in these product attribute trademarks may offer them a key weapon in the firecely competitive battle for mobile device supremacy.

Samsung’s allegedly infringing devices have sold well into the millions since their introduction in 2010. As part of the bundle of trademark rights, Apple may ask for reimbursement for any lost profits due to trademark infringement. Samsung’s operating margin is reportedly lower than Apple’s, yet that may still amount to hundreds of millions of dollars. Apple claims that the infringement was willful, since the copying is a case of “slavish” imitation. If this case ever reaches trial (which is unlikely) a judge and jury may award trebled damages due to Samsung’s willful behavior. Finally, and most importantly, Apple will seek a preliminary injunction early on in this litigation to prevent Samsung from selling any additional devices until the litigation is resolved. Given the strength of Apple’s trademarks, and the similarity between Apple’s and Samsung’s products, the judge may very well grant this extraordinary relief to Apple.

As part of any settlement (the more likely outcome), Apple may also require Samsung to redesign its mobile devices and tablets so that they do not create the likelihood of consumer confusion between the two competing companies’ products. That will, in the end, protect the Apple brand and differentiation that this company has worked so hard to develop and protect through the intellectual property system.

My guess is we’ll hear about a settlement to this case with terms favorable to Apple within a few months’ time.

Several ways to protect a website

How does one protect a website with great functionality and excellent design? The default is to obtain copyright on the expressive elements of the website. However, these other means are also used:

Utility patents can secure innovative functionality as a method/algorithm. For example, Netflix obtained this patent to secure the way its website guides users to create lists and queues for renting items.

Design patents can secure any ornamental or aesthetic design features on a website. For example, Google obtained this design patent on its clean search interface design.

Trademarks can secure any distinctive names, symbols or icons that are displayed on a website. Twitter does this, for example, by trademarking its stylized blue bird, the words “tweet” and “retweet” and its iconic “t” shaped logo. All of these are then used on the website.

Independent Designers: Here’s a Powerful Tool to Combat Knock-Offs

I’m always troubled when I hear stories about independent designers who are ripped off by knock-off artists, large retail chains and unscrupulous exporters who take advantage of low-cost manufacturing costs to catch a free ride from a designer’s work.

Reporter Christina Binkley wrote an interesting article on this very topic in The Wall Street Journal on April 29. The article discusses how the small, independent makers of the popular Shashi bracelet saw their unique fashion accessory imitated and sold for a fraction of the cost by a large corporate retailer shortly after the product gained mass appeal.

Innovators often fall victim to this type of intellectual property theft as free riders imitate a design and exploit a cost-based advantage that erodes the original design’s exclusivity, leading to brand erosion and foregone sales. From numerous articles I have read, it seems that this happens all too often to designers, and that all they can do is throw their arms up and accept this sorry state of affairs. As The Wall Street Journal article reports, most designers believe that the only response is to keep designing and hope their new creations will keep them above water.

I’d like to offer designers another solution based on strategic knowledge of intellectual property. Designers can register and protect their designs as numerous forms of intellectual property (IP), including trademarks, design patents, copyrights and trade dress. The Wall Street Journal article mentions this fact and discusses how these IP assets rarely prevent the flood of copycats.

The Wall Street Journal article, however, does not discuss a little-known procedure that IP owners can initiate that could offer them a powerful shield in their arsenal. The procedure is IP recordation with the U.S. Customs and Border Enforcement Authorities.

The process is actually quite simple. After you have registered your IP as a trademark, design patent, copyright or trade dress, all you need to do is file a short form with Customs and pay a $190 fee. The form is extremely simple and asks the IP owner to provide a registration number, describe the intellectual property, list parties authorized to use the mark, and provide an image of the intellectual property.

To access a screen shot of the actual form, click here.

Once your IP is recorded with Customs, you may then notify the office of any suspected parties that may be importing goods that infringe your IP. Customs may then decide to seize and impound the knock-off goods at any U.S. port while it conducts an infringement assessment. Impoundment creates a difficult scenario for the alleged infringers, including the foreign manufacturer and the domestic importers, which may include distributors and retailers. The procedure creates a cost for all these parties, buys the designer precious time to retain exclusivity for their designs (especially important when the design in question ties into a current fashion trend), and sends a clear signal that the designer means business.

The Wall Street Journal article mentions that designers may send cease-and-desist letters, and this is an important weapon in the independent designer’s arsenal. However, large companies tend not to respect these letters as much as when a big corporation with deep pockets is behind the letter. For an up-and-coming designer, having knock-off goods impounded is a much stronger weapon, especially when many companies that sell imposters have those items manufactured in China or other locations overseas.

Customs provides statistics on what types of goods have been seized under this impoundment procedure. In 2009, it conducted 14,841 separate IP-related seizures with confiscations worth $260.7 million. To view the statistics, click here.

To learn more about the impoundment procedure and how you can take advantage of it to protect your intellectual property, visit the Customs website here.

Designers, please consider using this legal tactic to protect your hard work and creativity under a system of fair trade for everyone.

Trademarks & Gray Market Pharmaceutical Law in the E.U.

I was invited to post a response on the Opinio Juris international law blog to an article written by Robert C. Bird (U. Connecticut) and Peggy Chaudhry (Villanova). Their article, ” Pharmaceuticals and the European Union: Managing Gray Markets in an Uncertain Legal Environment” was published by the Virginia Journal of International Law.

The article is very good, and they are offered an opportunity to respond to my questions and comments. To view the discussion, please click here.

Do Androids Dream of Cell Phones?

The Wall Street Journal reports that an heir to the estate of sci-fi author Phillip K. Dick has alleged that Google’s “Nexus One” phone infringes the author’s intellectual property estate. Mr. Dick is the author of “Do Androids Dream of Electric Sheep?”, which was the basis of the sci-fi cult classic “Blade Runner“. In that futuristic film-noir classic, Harrison Ford plays a bounty hunter who tracks down androids referred to as Nexus-6 models.

The Google phone is not the only phone that borrows from sci-fi cinema to boost its branding appeal. Motorola’s much celebrated Droid cell phone references the many robotic characters that play a key role in the “Star Wars” films. There are, however, important differences between the two cases. Lucasfilm, owner of the “Star Wars” franchise, registered the trademark Droid in 1985 for use with action figures. They maintain that registration and several others related to Droid. No other parties have registered Droid as a trademark. All that meant Motorola required a trademark license from Lucasfilm.

The estate for Philip Dick would have a much stronger claim against Google had they registered Nexus-6 as a trademark. Instead, other companies have registered the word Nexus for various types of goods and services. The critical question is whether the use of Nexus One for the cell phone market creates a likelihood of confusion with regards to sponsorship or source in relation to the Dick estate.

Another interesting twist arises if Google’s future versions of the phone increase sequentially. At some point, the phone may be branded as Nexus Six. By claiming an intellectual property dispute early on, the Dick’s estate may be pre-empting the controversy.

More Shape Trademarks

Special thanks to my friend in Athens, Ga., Marc Lazar, for pointing out additional shape trademark possibilities. I have expanded the archive of these fascinating products.

Note: The product image is followed by the issued trademark.

Iconic Shape Trademarks
Iconic Shape Trademarks

Vote For Your Favorite Shape Trademark

My research has led me to a somewhat exotic area: 3-D product shape trademarks. These are rare but powerful forms of intellectual property. They are usually reserved for product shape designs that have iconic characteristics. Their rarity suggests that the average company does not typically invest as much in product design as they should.

Here are some famous shape trademarks I have come across over the years.

Which one is your favorite? (Mine is the fish-shaped cracker)

Iconic Product Shape Trademarks
Iconic Product Shape Trademarks

Note: The product image is followed by the issued trademark.

Google Obtains Design Patent For Its Website

For some time now, I have noticed how Google has obtained several design patents for its website and user interface. See below.

Google Homepage Design Patent
Google Homepage Design Patent

They also recently applied for and obtained a new design patent for the layout of search results. Click here to see it.

A design patent is not your typical patent, and it only secures the aesthetic ornamental aspects of the goods.

Nothing is stopping Google from trademarking its clean, minimalist web interface. In fact, I wrote an article in The Wall Street Journal a while back on how Apple used this very strategy to obtain a shape trademark for its iPod and iPhone.

My most recent search of Google’s nearly 100 live trademarks, however, shows they have yet to learn from Apple’s trademark strategy success.

UPDATE: Please see this newer post to learn about additional ways to secure a website’s design and functionality.

Louis Vuitton Wins a $32 Million Trademark Judgment

That’s a pretty big sum for a trademark infringement case, litigated in a federal court in Northern California. What is interesting is it wasn’t levied against some knock off artists directly. Instead, the charge was contributory infringement (kind of like aiding and abetting) against web site hosts that allowed fake L.V. hand bags to be sold via the Web. This ruling will potentially have a big impact in the world of online retail. The case bears some similarity to Napster, which dealt with copyrights and online music exchanges.  In the L.V. case, however, it will be much harder in the future for fake goods sellers and their web hosts to escape unnoticed. This is, in sum, a big victory for trademark owners.

The full business wire story is here.