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 attention-grabbing questions in regards to 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 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 effectively 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 which means and can be too useful.  The TTAB affirmed, however solely centered on the dearth of secondary which means. At that time Timberland filed a civil motion beneath 15 U.S.C. § 1071(b) looking 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 available on the market for 50 years, and based on the document the corporate has “by no means has demanded that rivals stop and desist from
promoting look-alike boots.”  And, though plenty of 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 help of Timberland arguing that the district courtroom erred in its performance evaluation. Reasonably than analyzing whether or not the boot design “as an entire” is useful, the District Courtroom incorrectly disectected the general look of the Icon Boot design into constituent components, with out addressing whether or not the mixture of components (even when individually useful) fashioned an entire that was extra than simply the sum of its components.

Learn the briefs right here: