Design Patents on Truck Parts Are Valid

Author: Susan Meyer

In a recent decision, the Federal Circuit Court of Appeals ruled that design patents on Ford truck hoods and headlights are not invalid as functional articles, holding “the aesthetic appeal of a design to consumers is inadequate to render that design functional.” Automotive Body Parts Association v. Ford Global Technologies, LLC, No. 2018-1613 (Fed. Cir., July 23, 2019).

According to a patent attorney, design patents protect a “new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171(a). Established law prohibits design patents on primarily functional designs due to their lack of ornamentality. Utility patents, on the other hand, must be functional to be patentable. Valid design patents may contain some functional elements but may not claim a “primarily functional” design. “If a particular design is essential to the use of the article, it cannot be the subject of a design patent.” L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993).

This case was brought by the Automotive Body Parts Association (ABPA), who asked the court to hold that the aesthetic appeal, and not the mechanical or utilitarian aspect, of a patent design may render it functional. The court declined to adopt the ABPA’s unique argument.

The designs at issue are below.

Ford testified that a design team, and not engineers, designed the ornamental features for the hood and headlights, and although engineers reviewed the final designs, there were no changes to the aesthetic designs based on engineering or functional requirements. The court stressed the importance of prior tests that looked at the presence or absence of alternative designs. Of course, there are a variety of hood and headlight designs available.

Overall, the court found the ABPA’s arguments that designs that derive commercial value from their aesthetic appeal are functional, would gut the principles of design patents: “The very thing . . . for which [the] patent is given is that which gives a peculiar and distinctive appearance, its aesthetic.” The commercial edge the design may give a patent owner is “exactly the type of market advantage manifestly contemplated by Congress in the laws authorizing design patents.”

This recent ruling from the Federal Circuit clarifies that design patent defendants should not focus on whether a design’s aesthetic appeal is functional, but rather focus on the functionality of the article of manufacture itself. Patent owners will do well to develop evidence early of invention by designers and not engineers, and of a variety of design options in the field to show the lack of functional necessity for the particular patented design.

About the author: Susan B. Meyer is a partner and co-chair of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. She is a registered patent attorney whose practice focuses on intellectual property litigation, prosecution, and counseling for clients in a wide variety of industries and technologies. Ms. Meyer’s biography can be found here.

Does Your Business Need a Patent Audit?

A patent audit evaluates and reports on the status of your business’ technology protection program.  A patent audit outlines considerations relevant to your ability to secure, protect and enforce your patent rights and, if desired, provides an appraisal of the value of these rights. You can save significant money by doing some preliminary research to clearly describe product ideas before engaging into patent attorney services by using a patent database search solution.

To know if you need a patent audit, consider:

  • Does your business have a portfolio of patents and do you have the original patents?
  • Does your business have a migration plan for expanding its technology and do you manage the protection of the new technology?
  • Does your business use its patented technology out of the country and is this technology patented where it is used?
  • Does your business use patented technology of others and do you have copies of these authorizations?
  • Does your business permit others to use your patented technology and do you have copies of these authorizations?
  • Does your business rely upon employees or independent contractors to create improved technologies and do you have the agreements that cover these relationships?

Your answers to these questions will indicate if it is time to contact an IP audit specialist to ask about a patent audit.

Does Your Business Need a Copyright Audit?

A copyright audit evaluates and reports on the status of your business’ copyrightable works of art.  An audit outlines considerations relevant to your ability to secure, protect and enforce your rights and, if desired, provides an appraisal of the dollar value of these rights.

To know if you need a copyright audit, consider:

  • Does your business rely on copyrightable works of art (writings, images, drawings, computer programs, photographs) and do you have certificates of copyright registration for these works?
  • Does your business use copyrightable works of art for ancillary business activities (marketing, advertising, website images, product descriptions, product manuals) and do you have certificates of copyright registration for these work?
  • Does your business use works of art from others and do you have copies of these written authorizations?
  • Does your business have the right to enforce the copyright rights you are authorized to use?
  • Does your business authorize others to use works of art and do you have copies of these authorizations?

Your answers to these questions will indicate if it is time to contact an IP audit specialist to discuss a copyright audit. If you have had an audit already and  need marketing guidance visit Victorious.

Does Your Business Need a Trademark Audit?

A trademark audit evaluates and reports on the status of your business’ trademarks and related name rights.  An audit outlines considerations relevant to your ability to secure, protect and enforce your rights and, if desired, provides an appraisal of the dollar value of these rights.

To know if you need a trademark audit, consider:

  • Does your business use a brand name for your goods or services, has this brand name been registered and can you locate these registrations?
  • Does your business use different names for its goods and services, have these names been registered and can you locate these registrations?
  • Does your business use its brand name as your domain name and do you have confirmation of your domain name registration?
  • Does your business use a domain name and has that domain name been registered?
  • Does your business do business out of the United States and are your names registered in the countries where you do business?
  •  Does your business use the names of others and do you have copies of the authorizations to use those names?

Your answers to these questions will indicate if it is time to contact an IP audit specialist to ask about a trademark audit.

Does Your Business Need a Trade Secret Audit?

A trade secret audit evaluates and reports on the status of your business’ trade secrets.  A trade secret audit outlines considerations relevant to your ability to secure, protect and enforce your trade secrets and, if desired, provides an appraisal of the value of these trade secrets.

To know if you need a trade secret audit, consider:

  • Does your business rely on information that is not readily known to others and that provides a business advantage over your competitors and do you require a confidential disclosure agreement to be signed to see such information?
  • Does your business have and maintain a trade secret program?
  • Does your business monitor terminated employees, the single largest reason trade secrets are lost?
  • Does your business permit others to examine and use your trade secrets, do you require a use license and do you have copies of these agreements?
  • Does your business use trade secretsof others and do you require maintenance of these outside trade secrets?
  • Do you have copies of authorizations to examine and use the trade secrets of others?

Your answers to these questions will indicate if it is time to contact an IP audit specialist to ask about a trade secret audit.

Webinar Addresses Trademark Issues Important to Businesses

Today the Gordon & Rees Intellectual Property Practice Group presented a webinar titled “What You Need to Know About Trademarks” that discussed areas of critical importance to businesses regarding trademarks. Topics included the establishment of trademark rights through use; the differences between common law and registered marks; the value in a federal trademark registration; trademark searching before adopting a mark; the proper use of trademark marking; foreign trademark registrations; infringement actions in federal and state court; and appeals, oppositions and cancellation proceedings before the Trademark Trial and Appeal Board. To listen to the webinar, click here.

We will be holding webinars throughout the year on various intellectual property subjects including copyrights and patents. To join us, click here.