Apple has been active in the last few years attempting to protect a design, under the patent and trademark laws, that includes a pair of eighth notes. Notably, Apple has received some feedback from USPTO regarding both–it being granted a design patent to the musical notes (left image below), but being rebuffed by the Trademark Trial and Appeal Board (TTAB) as it attempted to register a similar trademark (right image below).
There is little doubt that you can obtain both a design patent and a trademark to the same ornamental design. As the Federal Circuit has opined:
The underlying purpose and the essence of patent rights are separate and distinct from those appertaining to trademarks. No right accruing from the one is dependent upon or conditioned by any right concomitant to the other. The longevity of the exclusivity of one is limited by law while the other may be extended in perpetuity. . . .trademark rights, or rights under the law of unfair competition, which happen to continue beyond the expiration of a design patent, do not ‘extend’ the patent monopoly. They exist independently of it, under different law and for different reasons.
In fact, there are reasons to apply for both a design patent and a trademark as it may provide protection for an important design that is (or will become) an important brand for your company or assist in the prevention of copying.
However, whether or not Apple should be entitled to both the design patent and the trademark is not the topic of this post – what is worth discussing is that the TTAB found that Apple’s potential trademark was confusingly similar to the iLike trademark (right), yet neither the iLike trademark (registered in 2008 well prior to Apple’s patent issuance) nor the analysis of the examining attorney at the USPTO was submitted to the examiner reviewing Apple’s design patent application.
Under the patent laws, all printed publications may be used as references, the date to be cited being the publication date. (Manual of Patent Examining Procedure (MPEP 901.06)). Additionally, applicants (and their attorney) owe a duty of candor to the USPTO and a duty to disclose information that would be material to the patentability of the invention. 37 CFR §1.56. The term “information” as used in 37 CFR 1.56 includes any information which is “material to patentability.” “Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.” 37 CFR §1.56(b).
Based on the broad scope of “information” should Apple have provided the USPTO patent examiner with the iLike trademark and the prosecution history of Apple’s trademark application? Given the TTAB’s findings and the broad definition of “information”, it seems as though there is a strong argument they should have. The argument for submission is buttressed when one considers the similarities between the tests for trademark registration and design patent infringement/allowance.
Both trademarks and design patents have similar tests for infringement and allowances—a mark infringes a registered trademark if the mark is confusingly similar to the trademark, such that a consumer would be deceived as to origin of similar products, and similarly a design patent is infringed if in the eye of an ordinary observer, situated as a typical purchaser of the item, the two designs are substantially the same such that observer would be deceived into consummating the purchase, the patent is infringed. In determining whether or not a trademark should be registered in view of other existing marks or whether a design patent should be allowed over existing prior art, the USPTO uses similar guidelines as are used to determine infringement (based on old rule that what is infringed is necessarily anticipating prior art).
Given the apparent similarity between Apple’s design patent and trademark designs and the similarities between how the designs would be evaluated in view of prior art designs and registrations, it seems clear that Apple should have submitted the iLike trademark as prior art and also submitted the analysis and prosecuting history of the examining attorney at the USPTO who was evaluating the trademark application. Apple may have believed that the iLike trademark was cumulative of the volume of prior art patents and patent applications it submitted to the USPTO, but certainly the examining attorney’s remarks (and Apple’s responses) would not have been. Ultimately, Apple’s omission may leave its design patent vulnerable to an invalidity challenge.