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Defense of Claimed Violation Of Utility Patent And Trade Design Infringement


Successful defense resulting in favorable settlement involving federal court litigation involving duplication of product design, and infringement of trade design.


The plaintiff in this action had previously maintained a utility patent respecting the design and overall shape of its consumer product. Upon expiration of the plaintiffs utility patent an issue arose as to alleged duplication of the product design. In the action the plaintiff alleged and argues that during the course of the design patent (prior to its expiration) that it had acquired traditional trademark and trade design rights to the overall design. That is that consumers recognized the design as unique and emanating from a particular source.

In response Mr. Internicola and his team commissioned consumer studies to challenge the plaintiffs claims of secondary meaning and Mr. Internicola challenged plaintiffs claims on the grounds that the plaintiffs expired "utility patent" was indicative that the alleged design was "functional" and therefore not capable of traditional trademark / trade design protection.


Confidential settlement pre-trial, during discovery. Although the terms are confidential our client did pay a settlement fee. However settlement was viewed as much more cost effective than proceeding with trial and incurring significant expert witness and additional legal fees. The settlement was beneficial and effective for our client and its business.

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