Designers, manufacturers and retailers of furniture in the United States often are targets of second comers that copy their furniture designs for sale to the same consumers. While there is no “one-size-fits-all” solution, traditional concepts of trademark, copyright and design patent protection, along with advanced planning before a product enters the market, can be useful in designing an overall protection strategy. Ideally, a strategy should be put in place when the furniture is initially designed, with decisions made regarding whether to seek a utility or design patent, whether to file copyright registrations on the designs and/or catalogs depicting the designs, whether and when to seek trademark protection and the type and manner of advertising and promotion of the furniture. As discussed below, each of these decisions affects the protection and enforcement of rights in furniture designs.
Trademark/Trade Dress Protection
Federal registration in the U.S. Patent and Trademark Office (USPTO) can be vital when seeking to enforce rights in a furniture design, as it carries with it a presumption of validity and a prima facie showing that the registered furniture design is entitled to protection. It also is not easily obtained nor can it usually be obtained before there have been sales and promotion of the product. In order to increase the chances that a furniture design will achieve protection afforded other trademarks, thought should be given initially as to how sales and advertising will be made.
Under the Lanham (Trademark) Act, 15 U.S.C. § 1051 et seq., if a product configuration is nonfunctional and associated in the minds of consumers with a single source, it can be protected as trade dress. However, it can be difficult to establish that any particular furniture design is protectable trade dress. In Wal-mart Stores, Inc. v. Samara Brothers
, the U.S. Supreme Court found that a product configuration cannot be inherently distinctive. 529 U.S. 205, 216 (2000). Therefore, a party claiming trade dress rights in a furniture design must prove that the furniture design has acquired secondary meaning such that in the minds of the relevant consuming public, “the primary significance of [the furniture design] is to identify the source of the product rather than the product itself.” Id.
at 211, 216. Furniture designs are considered to be product configurations in the United States. See Alphaville Design, Inc. v. Knoll, Inc
., 627 F. Supp. 2d 1121, 1128 (N.D. Ca. 2009). Secondary meaning, by definition, does not exist when a design is first conceived and marketed, but is accumulated over time as public recognition of the design as a source indicator is created and increases.
Acquired Distinctiveness before the USPTO
An application to register a furniture design with the USPTO generally will be met with a rejection on the ground that the design is non-distinctive. The applicant then must provide evidence of acquired secondary meaning in the applied-for design. Alternatively, such evidence can be presented with the initial application, usually in the form of declarations and supporting evidence. Consideration should be given as to when to file an application, which is likely to succeed only after the product has been in the public and has acquired secondary meaning, unlike the other forms of protection discussed below that can provide protection from the first creation of the product.
While claims of acquired distinctiveness may be made and accepted based on a claim that a trademark has been used for five years, 15 U.S.C. § 1052(f), this alone is not sufficient generally to evidence secondary meaning in furniture and other product designs. See In re Ennco Display Systems Inc
., 56 U.S.P.Q.2d 1279, 1284 (T.T.A.B. 2000). Some additional showing of secondary meaning beyond length of use generally must also be submitted, such as public exhibition of the design, awards, accolades, significant sales and advertising expenditures and mentions in media. Id.
Declarations from distributors or sales agents generally will not be useful, as they are not the ultimate consumers of the applicant’s products. In re Ennco Display Systems
, 56 U.S.P.Q.2d at 1284.
The type of advertising which will evidence secondary meaning is advertising that does not refer to a design’s utilitarian features, but rather to the design elements sought to be protected. The advertising should also stress the supposedly distinctive “identifying feature” of the product configuration, such as advertising that encourages consumers to “look for” the distinct design element sought to be protected to be sure they are buying an authentic product. Effective advertising campaigns should relate to the particular product in question
to the extent possible. General advertising campaigns that relate to a variety of products may not be sufficient to support secondary meaning in one particular product. In re Becton, Dickinson and Co.
, 675 F.3d 1368, 1374–75 (Fed. Cir. 2012). Well planned and creative advertising and promotion can help lead to successful registration of a furniture design in the USPTO.
More than three years after filing an application to register the chair design shown below, an applicant successfully secured Registration No. 2511360 for this chair design.
The applicant overcame many of the difficulties described earlier in this article. The USPTO initially rejected the application, finding that the proposed design was not distinctive. The applicant asserted that the proposed design was its signature product, was produced exclusively for more than 20 years and functioned as a source indicator, submitting hundreds of pages of advertising materials, brochures, a list of media coverage and declarations from a furniture designer, a retailer and a distributor. Despite the amount of evidence, the USPTO maintained its position that the design was not distinctive. The applicant, after having submitted additional evidence that showed a two-dimensional depiction of the design on hangtags, on packaging boxes and in advertising materials, ultimately overcame these objections. The applicant also pointed out that retailers and distributors were its direct customers. The trademark examiner ultimately agreed that the proposed design had acquired distinctiveness, and the chair design was registered.
Nonfunctionality of Trade Dress before the USPTO
Furniture also must be nonfunctional in order to merit protection. A furniture design is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Brown Jordan International, Inc. v. The Mind’s Eye Interiors, Inc.
, 236 F. Supp. 2d 1152, 1155 (D. Haw. 2002). The inquiry into functionality often is combined with a secondary meaning analysis, as a de facto functional product configuration may only be registered on the USPTO’s Principal Register with a showing of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). In re Ennco Display Systems, Inc.
, 56 U.S.P.Q.2d at 1283.
If a utility patent is issued for a furniture design at any time, the claimed features of the trade dress are presumed functional and are not entitled to protection. See Specialized Seating, Inc. v. Greenwich Industries, L.P.
, 472 F. Supp. 2d 999, 1011 (N.D. Ill. 2007). However, if the furniture design comprises elements that are not functional and not covered by the utility patent, that presumption can be rebutted. Alphaville Design, Inc.
, 627 F. Supp. 2d at 1133. The decision to file a utility patent application should take into account whether a particular nonfunctional design element also should be protected. The manner in which functional aspects of a design are advertised also should be reviewed to determine how it affects claims of nonfunctional trade dress. Specialized Seating, Inc.
, 472 F. Supp. 2d at 1006–07.
Copyright protection is an additional option to protect furniture designs. Copyright protection exists at the time a design is created. Copyright Act of 1976, 17 U.S.C. § 302(a). However, registering the copyright in that design with the United States Copyright Office is beneficial for several reasons, including the following: (1) in the United States, a registration (or pending application in certain jurisdictions) is required in order to file an infringement suit; and (2) certain damages and attorney fees are only available if a copyright application is filed within three months of the publication of the design. A copyright application can be filed at the time a design is created or when it is published. Where designers or others who are not full-time employees are engaged to create designs, there should be written agreements in place acknowledging that the works are works for hire and, where possible, also assigning all rights in the design to the entity commissioning the works. See Christians of California, Inc. v. Clive Christian New York, LLP
, No. 13–cv–275 (KBF), 2014 WL 4743422, at *3 (S.D.N.Y. Sept. 15, 2014).
To be eligible for copyright protection, the furniture design must be original and conceptually separate from the furniture’s utilitarian function. Universal Furniture International, Inc. v. Collezione Europa USA, Inc
., 618 F.3d 417, 429 (4th Cir. 2010). Originality can be more difficult to prove if a furniture design imitates historical furniture or furniture that otherwise is in the public domain. Because the bar for originality is relatively low, however, a furniture design generally will be considered original if the designer can show that new elements were created or combined from various elements in the public domain in a new and unique way, such as by selecting and arranging elements of historical furniture to “bring something new to the party” and “offer modernized interpretations of historical pieces of furniture.” Id
. at 431.
Functional aspects of furniture are not eligible for copyright protection. However, the decorative elements that are separable from the functional elements can be protected. Id.
at 434. In seeking copyright protection, which can be slightly harder to obtain for furniture which is functional by its very nature, a clearly articulated description of which aspects of the furniture are decorative and how those decorative aspects are conceptually separable from the remainder of the design can help. The plaintiff in Universal Furniture
did this by explaining that the “three dimensional shells, acanthus leaves, columns, finials, rosettes, and other carvings” on the furniture “were superfluous nonfunctional adornments for which the shape of the furniture (which is not copyrightable) serves as the vehicle.” Id.
Given the relatively low cost of applying for a copyright registration, companies can benefit from having a system in place whereby every design created is the subject of a copyright application, or at least those designs that are likely to be registered.
Registration of photographs of furniture and/or catalogs containing furniture also should be considered, particularly in industries where it is common for infringers to use catalogs or photographs to “shop around” the designs to third parties that can create them less expensively than the maker of the “authentic” furniture. Often, these entities will also use a trademark, if there is one, along with representations to unsuspecting customers that the copies are actually authentic. Thus, adopting a trademark along with the development of a design is recommended.
Design Patent Protection
Design patent protection is available only after it is registered with the USPTO. Im-portantly, a design patent application must be filed within one year after the furniture is first offered for sale, the furniture is first displayed in public or the first publication of a drawing of the furniture. Pride Family Brands, Inc. v. Carl’s Patio, Inc
., 992 F. Supp. 2d 1214, 1221 (S.D. Fla. 2014). Because the filing of an application for trademark/trade dress protection will be considered a printed publication of a drawing of the furniture, as will a copyright registration in certain circumstances, thought should be given to the order and timing of the filing of copyright, trademark and design patent applications. See In re Richard Lister
, 583 F.3d 1307 (Fed. Cir. 2009). In order to be eligible for design patent protection, the furniture design must be ornamental and non-obvious. See Ashley Furniture Industries Inc. v. Lifestyle Enterprise Inc
., 574 F. Supp. 2d 920, 927, 931(W.D. Wis. 2008). A design patent holder has an exclusive right to use the subject of the design patent for 14 years from the issuance of the patent. A company that owns a design patent on non-obvious, ornamental furniture can prevent others from making substantially similar furniture without having to prove that the design has acquired distinctiveness.
A well-thought-out strategy for protection of furniture designs which involves consideration of trade dress, copyright and design patent protection, as well as purposeful advertising and selling strategies, can increase the protection and enforcement of furniture designs in the United States.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association