Registering Product Design and the Purposeful Limitation

by Dennis Crouch

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

The Timberland Boot commerce costume case is pending earlier than the Fourth Circuit, elevating some fascinating questions concerning the position of product commerce costume vs design patents vs copyright vs utility patents.

Timberland boots have been first bought within the Nineteen Seventies with a novel design that shortly resonated with shoppers. 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 effectively acknowledged as an icon.  The picture above shouldn’t be 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 targeted on iconic parts 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 be too practical.  The TTAB affirmed, however solely targeted on the shortage of secondary that means. At that time Timberland filed a civil motion beneath 15 U.S.C. § 1071(b) searching for a courtroom order to register the design mark.  The district courtroom sided with the USPTO, holding that Timberland had didn’t show (1) that the design was nonfunctional; and (2) that buyers 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 response to the file the corporate has “by no means has demanded that rivals stop and desist from
promoting look-alike boots.”  And, though numerous people 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 help of Timberland arguing that the district courtroom erred in its performance evaluation. Moderately than analyzing whether or not the boot design “as an entire” is practical, the District Courtroom incorrectly disectected the general look of the Icon Boot design into constituent parts, with out addressing whether or not the mixture of parts (even when individually practical) shaped an entire that was extra than simply the sum of its components.

Learn the briefs right here: