Trade Dress

Johanna Foods, Inc. v. Coca-Cola - D.N.J.

October 21, 2010

In response to efforts by Coca-Cola to enforce its design patents, Johanna Foods, Inc. filed a declaratory judgment complaint on September 21 in the U.S. District Court for the District of New Jersey against Coca-Cola, d/b/a Simply Orange Juice Company. According to the complaint, in December 2009, Coca-Cola sent Johanna a letter asserting their rights under trade dress law and under seven design patents relating to beverage containers. In that letter, Coca-Cola allegedly stated that it had filed suit against third parties to whom Johanna had previously supplied and/or licensed a carafe-shaped container design and that the third parties had “each agreed to cease use of the accused design in settlement of the action.” The complaint also stated the Coca-Cola sent an August 2010 letter to Johanna customer ALDI asserting federal and state trademark rights as well as design patent rights against the beverage packaging that Johanna sold to ALDI, again citing “previous successful efforts” against other third parties. In September 2010, Coca-Cola then allegedly sent another letter to Johanna, reviewing the previously stated enforcement efforts and threatening suit over Johanna’s supply of beverage containers to ALDI as well as Johanna’s use of its own beverage containers in its own Tree Ripe brand.

Johanna’s complaint asserts that Coca-Cola’s “previous successful efforts” resulted in confidential, out-of-court settlements and not adjudication on the merits of the cases. Johanna also states that Coca-Cola’s litigation threats may significantly harm Johanna’s business relationship with ALDI and its profits from its Tree Ripe brand. The complaint further notes that Johanna itself has design patents on both its Nature’s Nectar Bottle (for which ALDI is a customer) and its Tree Ripe Bottle.

Kraft Foods Sues Van Law Food Products Over Bottle

May 23, 2011

Kraft Foods filed suit against Van Law Food Products in the U.S. District Court for the Southern District of New York on May 17, 2011. In the Complaint, Kraft Foods alleges that the bottles sold by Van Law Food Products, including those sold under the Eating Right brand (pictured below) infringe six design patents held by Kraft Foods.

Eating Right Bottles (copied from Complaint) Kraft Bottles (Figs. 2-4 of D568,164)

Déjà vu - Crocs sues Skechers for Design Infringement

May 24, 2011

In December of 2008, Crocs Inc. and Skechers Inc. agreed to settle patent litigation (case number 1:08-cv-01450, in the U.S. District Court for the District of Colorado) concerning U.S. D517,789, U.S. D564,208 and U.S. D564,207. That patent litigation concerned a line of slip-on foam clogs made by Skechers, which Crocs alleged infringed the patents.

On May 20, 2011, Crocs filed a complaint and initiated a new suit against Skechers, case number 1:11-cv-01330, in the U.S. District Court for the District of Colorado. Crocs alleges the Swifts line introduced in the summer of 2010 by Skechers is an “obvious imitation” of Crocs’ original shoe design for the CROCBAND^TMmodel footwear, which is protected by U.S. D610,784. Crocs also alleges Skechers breached a settlement agreement of September 23, 2010, stemming from Crocs’ contact with Skechers’ around the time the Swifts line was introduced.

Nestlé continues Trend of Recent Consumer Products Design Patent Complaints

January 31, 2012

Continuing a pattern of design patent infringement suits involving consumer products filed in recent months, Nestlé Healthcare Nutrition, Inc. “(Nestlé ) and Gerber Products Company (“Gerber”) sued Mead Johnson & Company, LLC (“Mead Johnson”) in the United States District Court for the District of Delaware on January 26, 2012.

The suit, 1:12-cv-0079, alleges that the sale of certain Mead Johnson bottles infringes Nestlé’s U.S. Design Patent No. D 447,421 (“the ‘421 patent”). The complaint further alleges unfair competition, trade dress infringement, and various state law causes of action against Mead Johnson. The ‘421 patent is directed towards an ornamental design for a bottle. See Fig. 1 to the left.

Lindby Custom successfully enforces a design for motorcycle parts, but would the proposed PARTS legislation have affected the court’s ruling?

February 22, 2012

On February 15, 2012, the U.S. District Court for the Central District of California entered Default Judgment in the matter of Lindby Custom, Inc. v. AMI Group (case no. 8:10-cv-01779). In its Complaint, Lindby Custom alleged infringement of U.S. Design Patent D548,142 (“the D142 patent”), in addition to trade dress and unfair competition claims.

The D142 patent claims “the ornamental design for the combined engine guard and highway peg” for motorcycles, shown below.

Beats sues Yamaha for trade dress and design patent infringement

February 15, 2013

Beats Electronics, LLC (Beats) filed a complaint against Yamaha Corporation of America (Yamaha) on February 6, 2013, in the Central District of California, alleging infringement of Beats’ design patents and trade dress. The complaint includes a request that the court enter a judgment that requires Yamaha to deliver to Beats, for destruction, all of the alleged infringing headphones and any materials which depict the alleged infringing headphones. The complaint demands a jury trial on all issues.

According to the complaint, counsel for Beats notified Yamaha on November 30, 2012, of its belief that the Yamaha Pro 300, Yamaha Pro 400 and Yamaha Pro 500 headphones infringe Beats patents and Beats’ trade dress rights, and the complaint alleges that the Pro 300, Pro 400 and Pro 500 headphones are “knock-offs of Beats’ world-famous ‘Studio,’ ‘Solo,’ and 'Wireless’ model headphones.”

Skechers v. Fila

July 7, 2014

Skechers USA filed a complaint against Fila in the Central District of California-Western Division, alleging infringement of US D661,884 and US D688,446, both directed to slip-on shoes, and alleging unfair competition and trade dress infringement of trade dress rights in Skechers Go Walk(R) shoe.

The complaint states a letter providing written notice of infringement was sent to Fila in July 2013, and in August 2013, Fila agreed to cease making the allegedly infringing shoe, the Amazen Memory Moc (referred to as "Version 1"). Allegedly, Fila stated it redesigned the Amazen Memory Moc (the redesign referred to as "Version 2") and agreed to cease manufacture of Version 1. However, the Complaint states Version 1 "is still available for purchase nearly one year after Skechers' written notice." Complaint, pages 3 and 20.

Version 1 is alleged to infringe the trade dress of the Skechers Go Walk(R) shoe as well as both US D661,884 and US D688,446, while Version 2 is alleged to infringe only US D661,884. Images from the complaint embodying the allegations are reproduced below:

[US D661,884]

[US D688,446]

[Trade Dress illustration: Skechers Go Walk(R) (top); Fila Amazen Memory Moc (Version 1) (bottom)]

Ugg! Deckers' Design Patent Infringement Claim Is Not Kicked to the Curb

September 15, 2014

On September 8, 2014, Judge Otis D. Wright, II, U.S. Dist. Ct., C.D. Calif., issued an Order keeping alive a claim for design patent infringement while booting other asserted claims in a Motion to Dismiss under F.R.C.P. 12(b)(6). See Deckers Outdoor Corp. v. J.C. Penney Co., Inc., C.D. Cal., Case No. 2:14-cv-02565-ODW(MANx) (“Order Granting in Part Motion to Dismiss with Partial Leave to Amend,” Doc. 30, Sept. 8, 2014).

Deckers Outdoor Corporation (“Deckers”) is known for its famous UGG® sheepskin and suede boots, among other products, sold online and at retail stores throughout the U.S. According to Deckers, its UGG® line of boots began a metaphorical ascent into the stratosphere after being featured on Oprah Winfrey’s television show in 2000, when Oprah supposedly “emphatically declared … how much she ‘LOOOOOVES her UGG boots.’” See First Amended Complaint, Doc. 18, ¶ 12. This ascent continued, as many well-heeled celebrities embraced the boots and were photographed wearing them. With such a stamp of fashion approval, one can easily understand that Deckers would do whatever it could to protect its valuable image, brand, and products from harm by imitators seeking to capitalize on Deckers’ success.

Apple v Samsung – Design Patents Hold Firm, Trade Dress Gives Way

June 15, 2015

On May 18, 2015, the Federal Circuit issued its long-awaited decision on Samsung’s appeal of Apple’s nearly $930 million 2014 judgment for infringement of Apple’s design patents and utility patents covering various smart phones and tablets, and for dilution of its trade dresses. See Federal Circuit Appeal Nos. 2014-1335, 2015-1029. See also our previous discussions regarding the Apple-Samsung dispute here and here.

Hoist v. Health In Motion, Inspire Fitness and Sunset Swings, and Does 1-10

September 24, 2015

Hoist Fitness Systems, Inc. (“Hoist”) filed a Complaint against Health In Motion, LLC (“Health In Motion”), Inspire Fitness and Sunset Swings (“Inspire Fitness”), and Does 1-10 (collectively, “Defendants”) on August 31, 2015 in the District Court for the Southern District of California. Incidentally, the Complaint specifies that the fictitious defendants named “Does 1-10” “include, but are not limited to, any subsidiaries, affiliates, and/or parent companies of Health In Motion.”

In its Complaint, Hoist alleges “patent infringement, trade dress infringement, unfair competition, and unjust enrichment with regard to Hoist’s intellectual property rights.”