September 21, 2023


Move Step By Step

Registering Product Design and the Purposeful Limitation

2 min read

by Dennis Crouch

TBL Licensing v. Vidal (4th Cir. 2023)

The Timberland Boot commerce gown case is pending earlier than the Fourth Circuit, elevating some fascinating questions in regards to the function of product commerce gown vs design patents vs copyright vs utility patents.

Timberland boots have been first bought within the Seventies with a novel design that rapidly resonated with customers. The corporate has now bought greater than $1.3 billion of the boots within the US, with greater than $100 million in gross sales most years.  The boot design is properly acknowledged as an icon.  The picture above just isn’t an precise boot bought by the corporate, however one created by an AI with the immediate “timberland boot.”

In 2015 Timberland started the method of registering the boot design as a trademark.  The proposed registration filings centered on iconic components of the boot, together with the silhouette options proven above. However, the USPTO refused to register the mark.  The examiner discovered that the design lacks secondary that means and can also be too practical.  The TTAB affirmed, however solely centered on the shortage of secondary that means. At that time Timberland filed a civil motion beneath 15 U.S.C. § 1071(b) in search of a courtroom order to register the design mark.  The district courtroom sided with the USPTO, holding that Timberland had did not show (1) that the design was nonfunctional; and (2) that customers acknowledge the design as a novel supply identifier.  The case is now pending attraction earlier than the Fourth Circuit.

One of many USPTO’s key arguments within the case focuses on timing.  Timberland boots have been in the marketplace for 50 years, and in line with the document the corporate has “by no means has demanded that rivals stop and desist from
promoting look-alike boots.”  And, though numerous of us acknowledge the look of Timberland boots, it seems that {the marketplace} is flooded with look-alike alternate options.

INTA has filed an amicus temporary in assist of Timberland arguing that the district courtroom erred in its performance evaluation. Relatively than analyzing whether or not the boot design “as a complete” is practical, the District Court docket incorrectly disectected the general look of the Icon Boot design into constituent components, with out addressing whether or not the mix of components (even when individually practical) shaped a complete that was extra than simply the sum of its components.

Learn the briefs right here:


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