USA – ARIZONA Trends and Developments Contributed by: George Saad, PLATZ JURIS, PLLC
cost of designing around, and it increases the plain- tiff’s leverage at every stage from demand letter to trial. It also creates rhetorical cohesion: a complaint that pleads trade dress, copyright, and design patent together tells a story of deliberate, systematic copying that any one claim alone would struggle to convey. The lesson of the current docket is that the brand owners bringing the most formidable cases – ie, Lulu- lemon most clearly, are those who invested in layered portfolios before anyone started calling their products “dupes”. The brand owners most exposed are those who relied on a single right, typically trade dress, and are now discovering its limits in public. A practical checklist for in-house counsel The following is a condensed action list for legal teams at brand-owning enterprises. It is not exhaustive. It is what every in-house IP counsel should have either already done or already scheduled: • Conduct a trade dress audit. Identify which pack- aging and product designs are genuinely non-func- tional, distinctive, and associated with your brand. Document secondary-meaning evidence now – eg, advertising spend, unsolicited media, and survey data, while it is still cheap to obtain. • Register the copyright in your packaging artwork. The filing fee is nominal. The upside – statutory damages and attorney’s fees under 17 U.S.C. § 505 – is outsized. This is the most frequently neglected step in consumer-goods IP strategy. • File design patents early and often. A design pat- ent application must be on file before, or within a narrow grace period after, public disclosure. Treat every meaningful product launch as a filing oppor- tunity. Post-LKQ, prosecution should emphasise careful claim drafting and thorough prior art review. • Build a marketplace surveillance programme. Monitor retailer house brands, Amazon market- place listings, TikTok Shop, and fast-fashion plat- forms. Trade mark and trade dress rights can be weakened by tolerated infringement; documented enforcement preserves them.
• Draft a demand-letter playbook. Many dupes are withdrawn on first contact. A standardised, escala- tion-tiered demand process reduces enforcement cost and creates the paper trail that matters if litigation becomes necessary. • Re-evaluate pre-LKQ design patents. Portfolios prosecuted under the Rosen-Durling framework may have vulnerabilities under the new standard. Continuation and selective reissue strategies may help shore up claims that matter most. • Co-ordinate across IP regimes. Trade dress coun- sel, copyright counsel, and patent prosecutors often work in separate silos. Force them into the same room at least once per product cycle. The dupe economy does not respect doctrinal bounda- ries; neither should the defence. The road ahead The cases currently pending, Mondelēz v Aldi , Smuck- er v Trader Joe ’ s , Lululemon v Costco , and PMI v Five Below , will not all succeed. Some may settle on con- fidential terms that teach the bar nothing. Some may produce rulings that clarify functionality doctrine, sec- ondary-meaning standards, or post-LKQ design pat- ent enforceability. All four, however, signal the same strategic reality: brand owners are no longer willing to treat dupe culture as the cost of doing business, and they have begun to invest in the doctrinal infrastruc- ture necessary to push back. For in-house counsel and the brand-owning enter- prises they advise, the question is not whether dupes will arrive. They are already in the aisle, on the feed, and in the cart. The question is whether the brand’s IP portfolio is ready for the fight. The brands that win will be those that built the portfolio before they needed it.
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