Lessons in Trademarking Trade Dress: Apple vs. Samsung

By: John DiGiacomo

Lessons in Trademarking Trade Dress
The long-running legal battle between Samsung and Apple over the shape of their respective smart phones provides some interesting lessons regarding trade dress law and how common law trade dress rights work. See news article here.

Apple vs. Samsung: Design Patents and Trademarks for Apple’s iPhone
In 2007, Apple, Inc. brought to market its first iPhone. It was very popular with consumers. The iPhone is a smartphone which, in general, is a cellphone “with a broad range of other functions based on advanced computing capability, large storage capacity, and internet connectivity.” See Samsung Electronics Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016).

Apple sought and obtained several design patents including a patent covering a black rectangular front face with rounded corners, a patent covering a rectangular front face with rounded corners and a raised rim, and a patent covering a grid of 16 colorful icons on a black screen. At the same time, Apple also obtained trademark registration for some aspects of the trade dress of the iPhone, particularly the icon array.

Samsung also manufactures smartphones. After release of the iPhone, Samsung began manufacturing and selling a series of smartphones that resembled the iPhone in appearance. Apple sued, claiming infringement of the design and utility patents and also sued for trademark infringement based on theories of dilution. After trial, a jury agreed that Samsung had infringed Apple’s design and utility patents and awarded Apple $399 million. That award was reversed by the US Supreme Court in 2016 and remanded for further proceedings.

The jury also agreed with Apple on the trademark dilution claim and awarded Apple over $290 million. However, that award was reversed by the Ninth Circuit Court of Appeals. See Apple Inc. v. Samsung Electronics Co., Ltd., 786 F. 3d 983 (9th Cir. 2015). The case is now headed towards its fourth jury trial.

Apple vs. Samsung: Legal Principles of Trade Dress and Trademark
The Lanham Act governs trademarks and trade dress. And, just like a trademark, it is possible to obtain federal registration trade dress. In general, “trade dress” can be conceived of as the way in which a product or service is packaged or presented. In general, the view is from the “totality of elements.” The purpose of trade dress is the same as that of trademarks generally: to identify the source of the product.

However, courts have long balanced the trademark protection for “source identification” against the need for competition. In theory, a trademark will last forever — a perpetual monopoly — as long as the mark is used in commerce. As such, a registration that protects trade dress will not be allowed if the trade dress diminishes competition or gives the owner of the mark some competitive advantage. This leads to a requirement that the trade dress be nonfunctional. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).

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