When Trademarks And Design Patents Intersect: Making Waves In Columbia v. Seirus

• Published date: 01 September 2021
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Jones Day
• Author: Mr Gregory Castanias, John C. Evans, John G. Froemming and Meredith M. Wilkes

Jury verdict underscores the necessity of coordinating trademark and design patent portfolios.

For nearly 30 years, the inclusion of a trademark in the design of a defendant's product did not mean much in the design patent infringement analysis. That changed on August 6, 2021, in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., when a jury considered, among other things, whether a trademark's appearance and placement might "give an ordinary observer a different visual impression" than the patented design. 3:17-cv-01781 (S.D. Cal Aug. 6, 2021). The jury rendered a verdict that the accused design that included a trademark did not infringe the design patent at issue.

The verdict in Columbia departs from long-standing Federal Circuit precedent. In L.A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993), the Federal Circuit held that including a mark or labelling does not avoid design patent infringement as shown in the following shoe design and accused shoe:

The holding in L.A. Gear meant for many years that the presence of a trademark is not an absolute defense to design patent infringement. A would-be infringer should not achieve "avoidance of infringement by labelling." Id.

Fast forward to the Columbia and Seirus dispute. Columbia sued its rival Seirus for infringing its design-patented surface pattern for a heat reflective material used in liners for gloves and sleeping bags:

Relying on L.A. Gear, the district court disregarded the "labelling" here, the SEIRUS trademark, and granted summary judgment of infringement to Columbia. The Federal Circuit reversed, reasoning that a fact finder cannot "ignore elements of the accused design entirely, simply because those elements included the name of the...