U.S. Trade Dress Laws
In addition to the utility patent infringement claims, Apple Inc. also claimed that Samsung infringed on the trade dress of their iPhone device. According to the Cornell Legal Information Institute, Trade dress is a legal term that is used when referring to the design and shape of the materials in which a product is packaged. Trade dress allows a manufacturer to design its product to set it apart and to be easily recognized by consumers. In the United States, a product's trade dress is protected under the Lanham Act which is a federal statute that regulates trademarks and trade dress laws. Under this act, consumers are protected from buying a product that is meant to imitate another product.
Trade dress laws within the United States are mainly divided into two separate categories. The first category relates to the overall design of a product and can include both the physical design of a product (shape, size, physical specifications,) as well as the design of how user interfaces (mobile applications, website layouts, etc.) The U.S. courts typically look at three pieces of criteria when evaluating whether or not trade dress infringement has occurred (Handelman, Stretching Trademark Laws to Protect Product Design and Packaging).
The three pieces include evaluating if : (i) the trade dress in question is non-functional (not required for a product to perform its main function), (ii) the trade dress is unique or distinctive and has acquired a status of secondary meaning with product in which the trade dress is being questioned, and (iii) the customers within the product’s market are likely to be confused when dealing with the products in which the infringement may have occurred. If the three areas of concern are met, the courts will allow the lawsuit to proceed (Leisten, Protecting a Company's Graphical User Interface).
The second category included within trade dress deals with the packaging of a product. The United States Supreme court defined product packaging (in terms of trade dress litigation) as being “composed of the overall combination and arrangement of the design elements that make up the product’s packaging, including graphics, layout, color, or color combinations.” (Defined in the Wal-mart Stores, Inc. vs. Samara Bros. case No. 99-150). Packing primarily deals with how a product is presented to the customer and how the packaging relates to how the consumers “identify the source of the product”(Wal-mart Stores, Inc. V. Samara Brothers, Inc., Supreme Court of the United States).
The following quote is from the “Opinion of the Court” documents from the Wal-Mart Stores, Inc. vs. Samara Bros court case and explains the court’s views of product packaging and product/brand distinctiveness:
" Although the words and packaging can serve subsidiary functions–a suggestive word mark, for instance, may invoke positive connotations in the consumer’s mind, and a garish form of packaging may attract an otherwise indifferent consumer’s attention on a crowded store shelf–their predominant function remains source identification. Consumers are therefore predisposed to regard those symbols as indication of the producer, which is why such symbols “almost automatically tell a customer that they refer to a brand,”id., at 162-163, and “immediately … signal a brand or a product ‘source,’ ” id., at 163."
One could even conclude that this is why the courts do not require that the product and its packaging attain a secondary meaning and this is a main difference in the evaluation of trade dress infringement when dealing with product design and product packaging. For trade dress infringement to occur within the context of product design the requirement of secondary meaning must satisfied. A generic mark on or relating to a product and gain a secondary meaning if the product and the mark are so closely linked that buyers immediately associate the mark with the manufacturer’s product and vice versa. Secondary meaning is not required when dealing with product packaging.
Trade dress laws within the United States are mainly divided into two separate categories. The first category relates to the overall design of a product and can include both the physical design of a product (shape, size, physical specifications,) as well as the design of how user interfaces (mobile applications, website layouts, etc.) The U.S. courts typically look at three pieces of criteria when evaluating whether or not trade dress infringement has occurred (Handelman, Stretching Trademark Laws to Protect Product Design and Packaging).
The three pieces include evaluating if : (i) the trade dress in question is non-functional (not required for a product to perform its main function), (ii) the trade dress is unique or distinctive and has acquired a status of secondary meaning with product in which the trade dress is being questioned, and (iii) the customers within the product’s market are likely to be confused when dealing with the products in which the infringement may have occurred. If the three areas of concern are met, the courts will allow the lawsuit to proceed (Leisten, Protecting a Company's Graphical User Interface).
The second category included within trade dress deals with the packaging of a product. The United States Supreme court defined product packaging (in terms of trade dress litigation) as being “composed of the overall combination and arrangement of the design elements that make up the product’s packaging, including graphics, layout, color, or color combinations.” (Defined in the Wal-mart Stores, Inc. vs. Samara Bros. case No. 99-150). Packing primarily deals with how a product is presented to the customer and how the packaging relates to how the consumers “identify the source of the product”(Wal-mart Stores, Inc. V. Samara Brothers, Inc., Supreme Court of the United States).
The following quote is from the “Opinion of the Court” documents from the Wal-Mart Stores, Inc. vs. Samara Bros court case and explains the court’s views of product packaging and product/brand distinctiveness:
" Although the words and packaging can serve subsidiary functions–a suggestive word mark, for instance, may invoke positive connotations in the consumer’s mind, and a garish form of packaging may attract an otherwise indifferent consumer’s attention on a crowded store shelf–their predominant function remains source identification. Consumers are therefore predisposed to regard those symbols as indication of the producer, which is why such symbols “almost automatically tell a customer that they refer to a brand,”id., at 162-163, and “immediately … signal a brand or a product ‘source,’ ” id., at 163."
One could even conclude that this is why the courts do not require that the product and its packaging attain a secondary meaning and this is a main difference in the evaluation of trade dress infringement when dealing with product design and product packaging. For trade dress infringement to occur within the context of product design the requirement of secondary meaning must satisfied. A generic mark on or relating to a product and gain a secondary meaning if the product and the mark are so closely linked that buyers immediately associate the mark with the manufacturer’s product and vice versa. Secondary meaning is not required when dealing with product packaging.
Apple's Trade Dress Claims
The trade dress claims made by Apple against Samsung include the packaging of its products, the physical design of its iPhone device, the color scheme of the phone, the design and orientation of buttons and speakers on the device, and the graphical user interface of the device itself. Although Apple has claimed that Samsung has infringed on numerous of its trade dresses, the majority of their claims rely on three trade dress registrations that they own. The first set of trade dress infringement claims made by Apple refers to Samsungs replication of its device design (Trademark U.S. Registration No. 3470983). This registration deals with both the physical design and software-related trade dresses of the device. More specifically, the registration outlines the shape of the device (a black rectangular with rounded corners), the orientation of the devices applications (a grid of 16 icons, with 4 that are “fixed” and have a grey background and 12 other icons over a black background), the look of the application icons (squares with rounded corners), and the design of many of the devices icons.
There are fifteen different icons included within the No. 3470983 registration are the clearly described and of the fifteen Apple claims that Samsung copied seven. The seven icons include (1) the “phone” icon, (2) the “messages” icon, (3) the “contacts” icon, (4) the “notes” icon, (5) the “photo” icons, (6) the “settings” icon, and (7) the “iTunes” or music icon. An image containing a side-by-side comparison of the 7 icons can be found in the Appendix of this document.
Another second set of claims made by Apple relates to Samsungs replication of their devices color combinations and placement on the device (Trademark U.S. Registration No. 3475327). The Mark Information section of the registration describes the trademark as a device having “The color gray appears as a rectangle at the front, center of the device. The color black appears on the front of the device above and below the gray rectangle and on the curved corners of the device. The color silver appears as the outer border and sides of the device.”
The final set of claims made by Apple relate to infringements on the basic design of their device (Trademark U.S. Registration No. 3,457,218). The trademark is registered “for the configuration for a rectangular handheld mobile digital electronic device with rounded corners.” Samsung, along with many professionals in both the technology and law fields, have questioned whether or not this registration should be upheld or repealed because of its vagueness and ambiguity. In fact, Samsung believes that the majority of Apple’s patents are ludicrous and had the following to say:
“Today's verdict should not be viewed as a win for Apple, but as a loss for the American consumer. It will lead to fewer choices, less innovation, and potentially higher prices. It is unfortunate that patent law can be manipulated to give one company a monopoly over rectangles with rounded corners, or technology that is being improved every day by Samsung and other companies. Consumers have the right to choices, and they know what they are buying when they purchase Samsung products. This is not the final word in this case or in battles being waged in courts and tribunals around the world, some of which have already rejected many of Apple's claims. Samsung will continue to innovate and offer choices for the consumer.”
Samsung was clearly not only aggravated due to the loss in a significant lawsuit over such vague patents including “rectangles with rounded corners”, but also because they believe that the court’s decision negatively affects the industry, innovation, choices for the consumer, and competitive pricing. Since the majority of Apples “wins” over Samsung have come in the U.S. courts, it appears that it is the American consumer who stand to lose the most, but consumers all over the world could be affected. (Arthur, CNET News)
There are fifteen different icons included within the No. 3470983 registration are the clearly described and of the fifteen Apple claims that Samsung copied seven. The seven icons include (1) the “phone” icon, (2) the “messages” icon, (3) the “contacts” icon, (4) the “notes” icon, (5) the “photo” icons, (6) the “settings” icon, and (7) the “iTunes” or music icon. An image containing a side-by-side comparison of the 7 icons can be found in the Appendix of this document.
Another second set of claims made by Apple relates to Samsungs replication of their devices color combinations and placement on the device (Trademark U.S. Registration No. 3475327). The Mark Information section of the registration describes the trademark as a device having “The color gray appears as a rectangle at the front, center of the device. The color black appears on the front of the device above and below the gray rectangle and on the curved corners of the device. The color silver appears as the outer border and sides of the device.”
The final set of claims made by Apple relate to infringements on the basic design of their device (Trademark U.S. Registration No. 3,457,218). The trademark is registered “for the configuration for a rectangular handheld mobile digital electronic device with rounded corners.” Samsung, along with many professionals in both the technology and law fields, have questioned whether or not this registration should be upheld or repealed because of its vagueness and ambiguity. In fact, Samsung believes that the majority of Apple’s patents are ludicrous and had the following to say:
“Today's verdict should not be viewed as a win for Apple, but as a loss for the American consumer. It will lead to fewer choices, less innovation, and potentially higher prices. It is unfortunate that patent law can be manipulated to give one company a monopoly over rectangles with rounded corners, or technology that is being improved every day by Samsung and other companies. Consumers have the right to choices, and they know what they are buying when they purchase Samsung products. This is not the final word in this case or in battles being waged in courts and tribunals around the world, some of which have already rejected many of Apple's claims. Samsung will continue to innovate and offer choices for the consumer.”
Samsung was clearly not only aggravated due to the loss in a significant lawsuit over such vague patents including “rectangles with rounded corners”, but also because they believe that the court’s decision negatively affects the industry, innovation, choices for the consumer, and competitive pricing. Since the majority of Apples “wins” over Samsung have come in the U.S. courts, it appears that it is the American consumer who stand to lose the most, but consumers all over the world could be affected. (Arthur, CNET News)
Samsung's Packaging Before and After the Release of Apple's iPhone
Samsung's Interface Icons Before and After the Release of Apple's iPhone
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