July 1, 2015
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UNITED STATES: The Federal Circuit Strips the iPhone of Its Trade Dress Victory
While leaving the majority of the judgment unscathed, on May 18, 2015, the U.S. Court of Appeals for the Federal Circuit partially reversed a $930 million judgment against Samsung, ruling that Apple’s iPhone trade dress was not protectable. Apple Inc. v. Samsung Elec. Co., No. 2015-1029 (Fed. Cir. May 18, 2015).
Apple had alleged that Samsung infringed and diluted the iPhone’s registered icon trade dress and its unregistered trade dress, which purportedly covered such elements as “a rectangular product with four evenly rounded corners,” and “a flat, clear surface covering the front of the product.”
Applying Ninth Circuit precedent, the Federal Circuit analyzed the following Disc Golf factors to determine if Apple’s unregistered trade dress was functional and therefore non-protectable: “‘(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.’”
Analyzing the first factor, the court found that the trade dress provided a utilitarian advantage, given Apple’s testimony that it sought to create a design that was “easy to use,” and that the trade dress “improved the quality [of the iPhone] in some respects.” The court found further usability functions, such as rounded corners, which improved “pocketability,” and the rectangular shape, which maximized the display area.
Looking to the second factor, the court found that while Apple cited numerous alternative designs, it failed to establish that such designs offered exactly the same features as its asserted trade dress.
Applying the remaining Disc Golf factors, the Federal Circuit found that Apple failed to establish that its iPhone advertisements did not tout the utilitarian aspects of the iPhone’s trade dress, when it promoted features such as tapping and scrolling functions on the touch screen. Additionally, Apple had asserted that because it had “experienced manufacturing challenges,” the design “did not result from a ‘comparatively simple or inexpensive method of manufacture.’” The Federal Circuit, however, found those challenges to be related to durability issues and not trade dress design considerations.
Apple also failed to rebut Samsung’s showing that certain elements of the registered trade dress were functional, such as the evidence that the registered icon designs promoted usability and communicated to the user that certain functionality would occur by touching them.
This decision shows the difficulties of protecting trade dress—and serves as a reminder to monitor advertising carefully to avoid touting useful aspects of trade dress.
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