Gideon Korrell Discusses $18.5M Design Patent & Trademark Reversal

In a significant ruling, the Federal Circuit reversed a jury’s $18.5 million verdict in Top Brand LLC v. Cozy Comfort Company LLC, highlighting evolving standards in design patent claim scope and trademark infringement evidence. Gideon Korrell considers this decision noteworthy for three key reasons: the prosecution history disclaimer applies to design patents, the accused product fell within the surrendered scope, and trademark infringement evidence failed under the likelihood-of-confusion standard.

Background: Oversized Hoodies and the D788 Design Patent

Cozy Comfort sells a popular oversized wearable blanket called “The Comfy,” protected by U.S. Design Patent No. D859,788 (“D788 patent”) and two federal trademark registrations. Top Brand markets similar products under brands like “Tirrinia” and “Catalonia” through Amazon and other platforms.

Cozy Comfort claimed that seven of Top Brand’s product lines infringed both its design patent and trademarks. Initially, the jury sided with Cozy Comfort, awarding $15.4 million for design patent infringement and $3.08 million for trademark violations. The district court denied Top Brand’s motion for judgment as a matter of law, prompting an appeal.

Design Patent: Prosecution History Disclaimer Applied

The Federal Circuit, with Judge Dyk writing for a unanimous panel, ruled that the district court erred by not applying a prosecution history disclaimer to the design patent. While this doctrine is common in utility patents, this case confirms its strong applicability to design patents as well.

During prosecution, Cozy Comfort narrowed the D788 patent’s scope to overcome prior art. Key distinguishing features included:

1. A narrow, square-like marsupial pocket

2. Pocket placement beneath the armholes

3. Downward-sloping bottom hemline

4. Different vertical alignment of the armscye pouch

Top Brand’s products mirrored the disclaimed features, particularly in pocket shape and hemline. The court concluded that no reasonable jury could find infringement once the patent was properly construed. This reinforces precedents like Egyptian Goddess, Inc. v. Swisa, Inc. and highlights the limits of design patent claims.

Trademark: Weak Evidence of Confusion

The court also reversed the trademark infringement award. Key findings included:

· “THE COMFY” is a weak, descriptive mark for wearable blankets.

· Top Brand used the term “Comfy” descriptively, not as a source identifier.

· Customer confusion evidence was minimal and not clearly linked to Top Brand’s actions.

The court emphasized that descriptive terms cannot form the basis of a trademark claim without strong evidence of secondary meaning, citing KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. and Booking.com B.V.

Strategic Implications

Charles Gideon Korrell identifies several important takeaways from this ruling:

1. Design patentees must respect prosecution history: Statements made during patent prosecution can limit claim scope in litigation.

2. Design patent protection is narrow: Patents protect only the shown drawings and are easily limited by a disclaimer.

3. Trademark claims require clear evidence: Descriptive or generic terms cannot be monopolized without proof of source-identifying use.

4. No need to challenge patent validity: Since infringement findings were reversed, the court did not consider the patent’s validity, following established case law.

This decision will likely influence how district courts handle claim construction in design patent cases and serves as a warning against asserting weak trademark claims without substantial evidence.

Gideon Korrell believes the ruling underscores the importance of careful prosecution and litigation strategy, especially for patents and trademarks with narrow scope or descriptive elements.