Los Angeles Intellectual Property Trademark Attorney Blog

Dog chew toys are in the middle of a design patent and trade dress infringement tug-of-war lawsuit filed by Benebone against Pet Qwerks.  The design patents cover a stick design with “Y” shaped ends.  Patent Nos. D870,400 and D871,686.  Benebone contends that Pet Qwerks, “rather than design its own product[,]…began selling a ‘BarkBone Stick’ that is a knock-off of Benebone’s patented design and the ‘Flavorit BarkBon’ that knocks off another popular Benebone design.”  The complaint admits, as it must, that Pet Qwerks’ ends have three prongs instead of the double prong “Y” shape claimed in the patents, but maintains that the accused product appears substantially the same to an ordinary observer and would deceive the observer to purchase the product supposing it to be Benebone’s patented product.

The trade dress design infringement claim, however, seems like a bit of a stretch, but the complaint is dogmatic in its trade dress definition and contentions.  “The Maplestick is a clear example of this design language; while its modern and clean design takes cues from sticks, it intentionally does not look like an actual stick. There are several key design features at work here. First, the main portion of the Maplestick is dead-straight, unlike a real stick.”  Commentary: I have seen straight sticks and distinctly remember one from Catholic boarding school.  “Second, it has equal branches at both ends, unlike a real stick.”  Commentary: it appears that someone has never fashioned a slingshot from a tree branch.  “Third, the branches at each end are terminated in a cylindrical way, which is not found in a natural stick.”  Commentary: sticks are usually cylindrically shaped, that’s why we count the “rings” to determine a tree’s age.  The complaint also lists similarities in the respective packaging, but makes the surprising allegations that both packages display “the American flag and Made in USA label,” as well as Pet Qwerks marking its packaging with “Real Bacon” while Benebone’s uses “Did somebody say Real Bacon?”  Those allegations in support of trade dress similarity are dubious and unprotectable.

Although design patents and trade dress both protect ornamental product designs and often overlap, the test for infringement under each discipline is different.  Design patents use the Ordinary Observer test: “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  Gorham Manufacturing, Inc. v. White, 81 U.S. 511, 528 (1871).  The Federal Circuit then tweaked the test to account for prior art and the modified test becomes: ““whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.”  Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008).

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Sugarfina sells premium gourmet candy, including alcohol flavored gummy bears, including luxurious gift packages sold in stores, hotels, and food retailers.  Sugarfina started in 2012 and because of early popularity, federally registered many intellectual property rights, including design patents, copyrights, and trade dress protection for its products and packaging.  Sugarfina’s trade dress protection includes its products’ designs, appearance, and packaging, including features like the square and rectangular shapes, the color combinations, the clear top cubes with a patterned band and shapes, and the bottom container holding a series of cube wells or trays.  Its copyrights cover the box for its clear candy cubes, spaced arrangements, spaced cube receiving wells, and the distinctive boxes use for the clear cubes (Reg. Nos. VA00019663482 and VA0001963483).  Lastly, Design Patent No. D763,684 protects Sugarfina’s “Candy Bento Box” packaging design.  

Bouquet Bar and its owners are sued for federal trade dress infringement, federal false designation of origin and unfair competition, federal patent infringement, federal copyright infringement, and state unfair competition.  Defendants began in 2017 selling gummy bears and other candy products in square and rectangular shaped packaging.  Bouquet Bar appeared on an ABC show called Shark Tank, where they presented their products to a group of wealthy investors.  During the course of the TV show, one investor specifically mentioned that “[t]his looks just like Sugarfina” and advised the owners that they need to pursue something different or more unique.  Additionally, defendants had worked events as a flower vendor where Sugarfina products were present, making them aware of the Sugarfina’s brand and intellectual property rights.

In October 2017 and January 2018, Sugarfina sent Bouquet Bar cease and desist letters and attempted face-to-face meetings to settle the issue to no avail.  Thus, Sugarfina alleges that Bouquet Bar is intentionally copying its trade dress with the intent to cause consumer confusion, despite advice from entrepreneur experts and cease and desist letters.  The Supreme Court held that product design trade dress could not be inherently distinctive and required secondary meaning.  Wal-Mart Sores v. Samara Bros., 529 U.S. 205, 211 (2000).  However, product packaging can be inherently distinctive if it is arbitrary, fanciful, or suggestive.  Id.  Because Sugarfina does not have a federally registered trade dress in its product packaging, it would have to prove that its product packaging is inherently.