USA – ARIZONA Trends and Developments Contributed by: George Saad, PLATZ JURIS, PLLC
and earlier filing discipline. The old practice of filing a single design patent and hoping for the best is no longer tenable. The Ninth Circuit angle: why it matters even when the case is filed elsewhere Of the four cases above, two – Lululemon v Costco and PMI v Five Below – are pending in the Ninth Circuit’s domain. That alone is instructive: the most doctrinally ambitious dupe cases of the current docket, the ones pleading trade dress and design patents together, are both in Circuit courts whose decisions Arizona-based brand owners (and any consumer-goods company with meaningful West Coast distribution) should treat as the operating manual. Three points matter most: • First, the functionality analysis is rigorous: the Circuit applies • Disc Golf Association , Inc . v Champion Discs , Inc ., 158 F.3d 1002 (9th Cir. 1998), which asks whether the feature is essential to use, affects cost or qual- ity, or has commercially viable alternatives. Brand owners should document the availability of alterna- tive designs at the time of their design choices, not after the dupe appears. • Second, theSleekcraft factors govern likelihood of confusion: eight factors, fact-intensive, and heavily survey-dependent. Investing in confusion surveys at the pre-litigation stage is often worth the cost. • Third, Ninth Circuit apparel and consumer-goods cases lean fact-specific. The Circuit’s decision in adidas America , Inc . v Skechers USA , Inc ., 890 F.3d 747 (9th Cir. 2018) illustrates how trade dress can protect a distinctive product silhouette while simultaneously denying protection to other ele- ments the plaintiff wanted to claim. The lesson: plead specifically, prove specifically. Where the dupe economy pushes back Candor is useful here. In-house counsel who walk into mediation without having internalised the defences will leave leverage on the table. Four counterargu- ments are effectively certain to appear in any dupe dispute.
• “No one is confused”. TikTok’s #LululemonDupe hashtag is now a litigation exhibit. Defendants argue that a thriving dupe culture, in which con- sumers proudly and openly seek out the lookalike because it is a lookalike, negates the likelihood of confusion. The argument is not frivolous, though brand owners can respond with post-sale confu- sion theories, sponsorship-or-affiliation confusion, and the observation that dupe culture itself presup- poses the distinctiveness of the original. • “The features are functional”. This is the single most important defence in dupe cases. Brand owners should anticipate it in every consultation, every clearance, and every filing. A product design that evolved for engineering reasons will struggle to be repositioned as trade dress after the fact. • “The trade dress lacks secondary meaning”. This is especially acute in product-design cases after • Wal - Mart v Samara Bros . Brand owners must be prepared with survey evidence, advertising expenditure records, unsolicited media coverage, and documented consumer associations, ideally compiled before a dispute arises. • “The design patent is obvious under LKQ”. Expect aggressive inter partes review (IPR) filings. Design patent portfolios built under the old Rosen-Durling regime deserve a fresh review under the new framework, including assessment of whether continuation strategies might shore up vulnerable claims. A layered strategy: why no single pillar is enough The through-line of the preceding analysis is that no single IP right is sufficient against a sophisticated dup- er. Trade dress is vulnerable to functionality defenc- es. Copyright protects decoration but not structure. Design patents, post-LKQ, require more investment and survive less easily. The answer is layered protec- tion: the deliberate, contemporaneous deployment of all three regimes against the features most worth defending. A layered strategy works because duplication that evades one regime often infringes another. A com- petitor who drafts around a design patent may still copy protected packaging artwork. A competitor who changes the artwork may still misappropriate protect- able trade dress. Layering multiplies the defendant’s
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