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Common Issues in Patent and Trademark Litigation

IP Intellectual Property - Patent and Trademark

Utility patents protect ideas and inventions, design patents protect the ornamental aspects of a product, and trademarks protect the exclusive consumer association with your company that your brands, logos, or designs evoke. Despite the differences in these types of intellectual property (“IP”), lawsuits involving patents and trademarks have striking similarities and crucial differences.

Overlap of Design Patent With Trade Dress

Design patents and trade dress are legal protections for visually identifiable features of a commercial product, the purpose of which is not exclusively or primarily functional. Famous examples include the distinctive shape of Coca-Cola bottles and the red soles of Christian Louboutin shoes. The owner of the UGG brand has both design patents and trademarks covering its shoe designs, demonstrating the overlap in protection afforded by these two forms of intellectual property. If a visually identifiable feature of a product turns out to have too functional a role, it will not qualify for trade dress or design patent protection. For example, the shape of Gibson guitars does not qualify for trade dress because it was determined to serve a primarily acoustic function. This means that in order to make a case for design patent and trade dress infringement, the IP owner must emphasize the aesthetic, non-functional design features. By the same token, in defending against claims of infringement by a design patent and trade dress owner, the accused infringer is best served by persuading a court that the allegedly aesthetic features in fact serve a primarily functional purpose.

Significance of Commercial Success in Patent and Trademark Cases

One of the various ways to attack the validity of an issued patent is to show that the subject matter claimed was obvious in view of the prior art. However, patent owners are able to come forward with evidence in rebuttal of such a validity attack, which consists of objective indicia of non-obviousness, the most common of which is commercial success. Proof of commercial success must be related to the product or service covered by the patent in order to even be considered in assessing the merits of the invalidity attack. But commercial success is not a concept exclusive to patents, it plays a role in trademarks as well. Commercial success is an important factor in proving the strength of a trademark, and, therefore the scope of protection it enjoys against infringements even in less related fields. For example, if you can prove your social media platform is commercially successful, you might stop a dating app from using the same mark your platform uses.

The intersection of the patent law and trademark law with the concept of commercial success can create dilemmas for litigants depending on the facts of the case. A plaintiff in a patent and trademark case must be careful to differentiate commercial success arising from an innovative product, and commercial success arising from the goodwill accrued under the brand. And a defendant in a patent and trademark case can exploit this tension by arguing that commercial success is not attributable to the strength of a mark, or to innovation, whichever will better serve its defense.

Offer for Sale vs. Date of First Sale

If you sell goods or services incorporating an invention one year or more before filing a patent application, then your patent can be held invalid. This patent-invalidating activity is referred to as an “offer for sale,” which differs and is distinct from the “date of first sale” that must be identified in your trademark application. A date of first sale identified for trademarked goods in a trademark application that is earlier than the actual date of first sale is potentially invalidating if the U.S. Trademark Office relied upon the date in issuing the registration. For example, descriptive marks cannot be registered until they have “acquired distinctiveness” (consumer understanding that the trademarked product comes from a single source). Acquired distinctiveness in turn requires five years of use. If the trademark applicant falsely claims an earlier date of first use, resulting in a finding by the U.S. Trademark Office of “acquired distinctiveness,” then the false first use date can invalidate the resulting trademark registration on the grounds of fraud. Fact-finding on an “offer for sale” can help you determine if the “date of first sale” claimed by a trademark owner is too early and therefore effectively defend both patent and trademark infringement claims.

Choice of Venue

Patent cases may be litigated only in federal court, and trademark cases may be litigated in either federal or state court. Consequently, if the claims are brought together, they must be brought in federal court. The patent venue statute dictating where you can bring suit is much more narrowly drawn than the venue provisions that apply to trademark disputes. Generally, you may sue a trademark infringer anywhere the infringing mark is used, but you can only sue the patent infringer under two scenarios:

  1. Where the accused infringer is incorporated (or if an individual, where the infringer resides); or
  2. Where the accused infringer has committed acts of infringement and has a regular and established place of business.

Contact Norris McLaughlin About Patent and Trademark Disputes

Please contact trademark attorney Jeanne Hamburg at or patent attorney Joseph Farco at if you require assistance in any dispute involving patents and/or trademarks.