Apple Trademarks in the U.S. Design and Layout of Retail Stores

Apple obtained a registration (U.S. Registration No. 4,277,914) which covers retail store services in the United States for the design and layout of its retail stores.  The description of the mark is as follows:

--The store features a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store's ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a oblong table with stools located at the back of the store, set below video screens flush mounted on the back wall. The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items are considered to be part of the overall mark.--

Registration was initially refused for lack of inherent distinctiveness by the U.S. Patent and Trademark Office because the applied-for mark consists of a nondistinctive three-dimensional configuration that would not be perceived as a service mark, but only as decoration or ornamentation.  Apple was able to obtain registration by claiming that the mark had acquired distinctiveness.  In order to prove acquired distinctiveness, Apple submitted declarations describing the success of Apple’s retail stores, consumer awareness of the store configuration trade dress, and Apple’s marketing efforts to increase consumer awareness of its store design.  Further, Apple submitted promotional materials, images, articles, web pages, and consumer surveys in order to demonstrate the United States awareness of the Apple retail stores.

Apple v. Samsung: Injunction Denied and No Juror Misconduct

As we previously reported, Apple moved for an injunction to enjoin Samsung from infringing, contributing to the infringement, or inducing infringement of Apple’s U.S. Design Patent Nos. 604,305 and 618,677.  The federal judge in the case, Judge Lucy Koh, however, denied Apple’s request for permanent injunction, allowing Samsung to continue selling products found to infringe Apple’s patents.

In a recent order, Judge Koh denied the request for permanent injunction, finding, inter alia, that Apple did not prove the causal nexus between infringement of its patents and irreparable harm alleged to have been suffered.  That is, Apple did not show its lost sales were because Samsung infringed Apple’s patents.

According to FOSS Patents, Apple will undoubtedly appeal the decision denying permanent injunction to the Federal Circuit.

On the same day as denying Apple’s permanent injunction request, Judge Koh also issued an order denying Samsung’s motion for a new trial based on a juror misconduct claim.  In their claim, Samsung moved for a new trial on the basis that the jury foreperson gave dishonest answers during voir dire and was actually biased against Samsung.  The judge denied the claim because evidence concerning the standards applied during jury deliberation is barred by Federal Rule of Evidence 606(b).

Update on Friday, December 21, 2012 at 12:41PM by Marc Albert Robinson

On Thursday, December 20, 2012, as expected, Apple gave notice of appeal of Judge Koh's order denying the request for a permanent injunction.

As reported by USA Today, the notice indicates that Apple would be appealing the order along with "all other orders, rulings, findings, and conclusions underlying and related to that order."

Apple v. Samsung: The UK

As we previously posted, Judge Birss ordered Apple to publish a notice on its website for six months, as well as in several newspapers and magazines, that the Samsung Galaxy tablets do not infringe Apple's designs, to "correct the damaging impression" that Samsung copied Apple's product.

On October 18, 2012, the Court of Appeal affirmed Judge Birss. Of note, the judgment stated:

Because this case (and parallel cases in other countries) has generated much publicity, it will avoid confusion to say what this case is about and not about. It is not about whether Samsung copied Apple's iPad. Infringement of a registered design does not involve any question of whether there was copying: the issue is simply whether the accused design is too close to the registered design according to the tests laid down in the law. Whether or not Apple could have sued in England and Wales for copying is utterly irrelevant to this case. If they could, they did not. Likewise there is no issue about infringement of any patent for an invention.

So this case is all about, and only about, Apple's registered design and the Samsung products.The registered design is not the same as the design of the iPad. It is quite a lot different.For instance the iPad is a lot thinner, and has noticeably different curves on its sides. There may be other differences - even though I own one, I have not made a detailed comparison. Whether the iPad would fall within the scope of protection of the registered design is completely irrelevant. We are not deciding that one way or the other. This case must be decided as if the iPad never existed.

As noted above, Apple was ordered to publish a notice on its website, which the Court of Appeal affirmed. The notice was recently published on Apple's UK website.

Update on Thursday, November 1, 2012 at 9:48AM by Marc Albert Robinson

The Guardian reports that Apple's previously published notice, copied below, has been determined to be non-compliant by the court of appeal.  

In particular, it appears the following italicized paragraphs have been deemed non-compliant.

Samsung / Apple UK judgment

On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronic (UK) Limited’s Galaxy Tablet Computer, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple’s registered design No. 0000181607-0001. A copy of the full judgment of the High court is available on the following link www.bailii.org/ew/cases/EWHC/Patents/2012/1882.html.

In the ruling, the judge made several important points comparing the designs of the Apple and Samsung products:

"The extreme simplicity of the Apple design is striking. Overall it has undecorated flat surfaces with a plate of glass on the front all the way out to a very thin rim and a blank back. There is a crisp edge around the rim and a combination of curves, both at the corners and the sides. The design looks like an object the informed user would want to pick up and hold. It is an understated, smooth and simple product. It is a cool design."

"The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool."

That Judgment has effect throughout the European Union and was upheld by the Court of Appeal on 18 October 2012. A copy of the Court of Appeal’s judgment is available on the following link www.bailii.org/ew/cases/EWCA/Civ/2012/1339.html. There is no injunction in respect of the registered design in force anywhere in Europe.

However, in a case tried in Germany regarding the same patent, the court found that Samsung engaged in unfair competition by copying the iPad design. A U.S. jury also found Samsung guilty of infringing on Apple's design and utility patents, awarding over one billion U.S. dollars in damages to Apple Inc. So while the U.K. court did not find Samsung guilty of infringement, other courts have recognized that in the course of creating its Galaxy tablet, Samsung willfully copied Apple's far more popular iPad.

Apple's notice has been reported as amounting to a "non-apology" and an attack on Samsung, and it is apparent the court was not please with the notice.  As reported by Bloomberg, Judge Robin Jacob said today:

“I’m at a loss that a company such as Apple would do this. That is a plain breach of the order.”

Further, in response to Apple's request for 14 days to make the change to the notice, Judge Jacob reportedly stated: 

“I would like to see the head of Apple make an affidavit setting out the technical difficulties which means Apple can’t put this on [their website]. I just can’t believe the instructions you’ve been given. This is Apple. They cannot put something on their website?”

Update on Tuesday, November 13, 2012 at 1:03PM by Marc Albert Robinson

The Court of Appeal has ordered Apple to pay all of Samsung’s legal fees over the dispute.  Of note, Judge (Sir) Jacob wrote (with emphasis added):

As to the costs (lawyers' fees) to be awarded against Apple, we concluded that they should be on an indemnity basis. Such a basis (which is higher than the normal, "standard" basis) can be awarded as a mark of the court's disapproval of a party's conduct, particularly in relation to its respect for an order of the court. Apple's conduct warranted such an order.

See ZDNet's article of November 12, 2012.

Apple v. Samsung: ITC Initial Determination

On October 24, 2012, the ITC issued an "Initial Determination on Violation of Section 337," in Inv. No. 337-TA-796.  In this case, Apple alleged Samsung had imported various infringing devices (smartphones and tablets) into the U.S. 

In summary, ALJ Tomas B. Pender determined that a violation of Section 337 of the Tariff Act of 1930 has been found in connection with several utility patents and U.S. Design Patent No. D618,678 (Fig. 1 of which is reproduced below).  ALJ Pender also concluded that this patent is not invalid.

ALJ Pender also determined that no violation of Section 337 was found in connection with U.S. Design Patent No. D558,757 (Figs. 3-4 of which is reproduced below), and concluded that this patent is not invalid. 

Apple v. Samsung: Apple requests injunctions

Following the jury verdict, Apple has requested an injunction of seven Samsung phones based on design patent infringement of D677 and D305.

Update on Wednesday, August 29, 2012 at 9:00AM by Marc Albert Robinson

As reported by Reuters, Judge Koh has set a December 6, 2012, hearing date for Apple's request for injunctions.  Originally, the hearing was scheduled for September 20, 2012, but this date will now be used for a hearing to dissolve the sales ban on Samsung's Galaxy Tab 10.1.