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Sarah Burstein Profile picture
@design_law
Sep 14, 2020 • 8 tweets • 4 min read • Read on X
Sad to say the CBP is right here: A product that looks too much like another can be a "counterfeit" under the Lanham Act even if the packaging makes it clear these products don't come from Apple.
The courts have ruled that product shapes can be registered as trademarks. Once so registered, copycat designs can qualify as "counterfeits"--again, even if the labeling is clear and non-deceptive.
This is yet another reason why product shapes shouldn't be registrable as trademarks.
And if you don't like CBP enforcement of trademarks, you'll hate this proposal: patentlyo.com/patent/2020/01…
To be clear, I mean CBP is right that these could potentially be "counterfeits," despite the packaging.

Without seeing the registration(s) at issue, I won't comment on the merits (i.e., whether these products are, in fact, counterfeits).
Okay, it looks like these may be the registrations at issue:

tsdr.uspto.gov/#caseNumber=88…

tsdr.uspto.gov/#caseNumber=88…

If that's right, and from the photos in the @verge stories, I don't think the OnePlus Buds are counterfeits.
For more on CBP enforcement of trademark infringement & counterfeiting, I recommend this article by @LCGrinvald: papers.ssrn.com/sol3/papers.cf…
Anyway, what I'd really like to know about this seizure is: Did Apple file an allegation against the OnePlus Buds with the CBP? (See generally cbp.gov/document/publi…) Or did the CBP seize them on its own initiative?

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More from @design_law

Sarah Burstein Profile picture
Oct 28, 2022
Federal Circuit reverses NDIL grant of a preliminary injunction in a "Schedule A" case, finding the court improperly analyzed the issue of design patent infringement: bit.ly/3Wh8ynI Chart annexed to the court'...
I need to read this more deeply but, on first skim, it seems like the infringement expert may have been falling victim to the concept fallacy. The accused products just don't look the same as the claimed designs, even if they feature an "hourglass shape."
This part, though, concerns me: Page 13-14 of the court's d...
Read 15 tweets
Sarah Burstein Profile picture
Oct 28, 2022
Issued this week to Shenzhen Zewei Network Technology Co., Ltd—D968,029, for a design for a “Makeup Practice Tool”: bit.ly/3sCUoiR #DesignPatents A rectangular plate-like item with two heavy-lidded eyes, no
This one was issued to a different patentee this week: A rectangular plate-like item with two heavy-lidded eyes, no
When I was flipping through this week's patents, I assumed these were different versions of the same design filed by the same applicant. I was wrong: Screenshot of the front page of both patents, D968,028 (issu
Read 4 tweets
Sarah Burstein Profile picture
Sep 3, 2022
Great post on a really interesting and important case. I'll share a few additional thoughts:
I do think that comparison art should be limited; it shouldn't be "anything goes." The question is where that limit should be. I think it should mirror the question of scope.
One problem, as @patentlyo notes, is strategic language use by patentees. Here, the claim is directed to a "heat-reflective material." Top of the cover page of U.S. D657,093, showing the title as
Read 12 tweets
Sarah Burstein Profile picture
Dec 30, 2021
.@WilliamsSonoma (@westelm) accuses @Wayfair of infringing various design patents, engaging in false advertising, and violating both Massachusetts and California unfair competition laws: design-law.tumblr.com/post/671760508…
As others have pointed out, there may be some prior art issues here:
Williams-Sonoma sets up its design patent claims by illustrating its alleged commercial embodiments, then the actual claim, then the accused product. That's not the test.
Read 9 tweets
Sarah Burstein Profile picture
Dec 29, 2021
It's not every day that I see a book about Civil War belt buckles cited as prior art in a design patent case (from @GRIPSIX v. Argali Outdoors): design-law.tumblr.com/post/671763534…
By the way, this is not how design patent invalidity works:
For design patents, you don't divide the design into elements and create Frankenart.

You have to find a single piece of prior art that looks "the same" (102) or "basically the same" (first step of 103) as the claimed design.

See generally: papers.ssrn.com/sol3/papers.cf…
Read 4 tweets
Sarah Burstein Profile picture
Dec 17, 2019
Morning trademark musing: There are two companies currently involved in a trademark and trade dress dispute. I buy the contested products from both of them.
The purported mark owner has messed up 50% of my orders and I just learned that while it sells gift sets, it doesn't provide wrapping, gift receipts, or gift messages.
The accused infringer has flawless execution when it comes to distribution & delivery. It provides gift options.
Read 4 tweets

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