Last week, the Federal Circuit ruled partly against Apple in its patent and trademark infringement case against Samsung, concluding that while Apple’s design patents were infringed by Samsung, the trade dress and trademark rights that Apple asserted were not infringed because the underlying subject matter was not trademarkable. Essentially, the elements of the iPhone design that Apple argued were trademarkable (the rounded edges of the phone, the home screen design with the grid-like pattern of icons, and the flat screen surrounded by a beveled frame) were found to be influenced by functional considerations, including a concern that the features made the phone simpler for a consumer to use. In other words, the design of the phone was driven by intuition, an idea that was apparently injected into the design process decades ago when Steve Jobs first founded the company. The question is whether a company’s legacy for simple, intuitive design can be implemented into the trade dress and product design in such a way that it becomes a source identifier. Furthermore, if those types of design characteristics are source-identifiers, is there any way that a company could develop the characteristics such that they are not functional?
To really answer this question, it helps to understand this maxim: the essence of a trademark is source identification. Always has been, and always will be. Even in the face of technology, which always seems to be pushing the envelope of how a company can truly engage a consumer, trademarks must maintain their source identifying capability. The beauty of the statutory definition of a trademark is that there are no restrictions on the form of the trademark, just so long as it serves the purpose of source-identification (and usually nothing more). For example, there is no statute or public policy that requires trademarks to cater exclusively to one of the five senses; any type of identifier that can be discerned by consumers is fair game for a trademark. This gives companies a lot of freedom in defining their brand. Given enough creativity and vision, a company could be quite unique in their branding endeavors.
To really answer this question, it helps to understand this maxim: the essence of a trademark is source identification. Always has been, and always will be. Even in the face of technology, which always seems to be pushing the envelope of how a company can truly engage a consumer, trademarks must maintain their source identifying capability. The beauty of the statutory definition of a trademark is that there are no restrictions on the form of the trademark, just so long as it serves the purpose of source-identification (and usually nothing more). For example, there is no statute or public policy that requires trademarks to cater exclusively to one of the five senses; any type of identifier that can be discerned by consumers is fair game for a trademark. This gives companies a lot of freedom in defining their brand. Given enough creativity and vision, a company could be quite unique in their branding endeavors.
On the other side of the equation is consumer opinion. For a feature to be truly source identifying, consumers have to actually “get it”, but not in a way that the consumer fails to equate the intended branding with the source of that brand. If a consumer merely sees a particular design component as aesthetically pleasing or making the product easier to use, the feature cannot serve as a trademark. For example, if a company has a legacy of using sea animal likenesses as the forms for kitchen utensils and glasses, a consumer may completely miss the connection between the products and the company that makes them. In this case, the sea creature designs are simply ornamental because they are designed simply to represent themselves, not recognize the company as the source of these items. And designs that are merely ornamental cannot serve as trademarks (ornamentation is simply fluff, it is not informational). Besides the ornamentation issues, there are simply too many other companies making kitchen utensils bearing unique shapes of sea creatures; how could a consumer possibly tell one shark cup apart from another shark cup? A unique design may make the underlying product more appealing to consumers, but it cannot tell them where the product came from.
Apple has always prided itself on fusing form with function, for example, creating a mouse as a component for users to operate the computer. A more modern example is the use of a single button on the face of the phone, a decision apparently born from Steve Jobs’s phobia of buttons. Also, Apple’s sleek iPhone design may make the phone itself more visually appealing for the same reasons that all other Apple products are attractive: they like simple, sleek design embodied through metallic casings, glass, and monochrome color options. But the choice to follow minimalist design principles and include (or exclude) certain design features is not a choice that results in a feature that can identify Apple as the source of the products that contain the design. Minimalist design is a school of thought not owing its origin to any particular company. As a school of thought, any other company is free to design their products according to the teachings of the school. In a word, minimalism is not distinctive.
Another mainstay of Apple is the principle of form follows function, or the rule that the shape of an object should be primarily based upon its intended function or purpose. This appears to be a corollary of one of Apple’s core design principles: products should be designed for the people that will be using it. Notice that this principle doesn’t necessarily put the functionality of a product on a pedestal to the exclusion of all other considerations. Instead, the design of a product itself (including user interfaces, product packaging, and any messaging delivered by the product) is one of the driving forces behind the choice of making one component a certain shape or choosing to make the product casing rounded. Even with the injection of design considerations into the overall engineering process, a company could still focus too intently on the end-goal: making a product more usable. Design features that are included solely for usability reasons means the particular features cannot be trademarked, no matter how much a company is known for such designs.
Apple has always prided itself on fusing form with function, for example, creating a mouse as a component for users to operate the computer. A more modern example is the use of a single button on the face of the phone, a decision apparently born from Steve Jobs’s phobia of buttons. Also, Apple’s sleek iPhone design may make the phone itself more visually appealing for the same reasons that all other Apple products are attractive: they like simple, sleek design embodied through metallic casings, glass, and monochrome color options. But the choice to follow minimalist design principles and include (or exclude) certain design features is not a choice that results in a feature that can identify Apple as the source of the products that contain the design. Minimalist design is a school of thought not owing its origin to any particular company. As a school of thought, any other company is free to design their products according to the teachings of the school. In a word, minimalism is not distinctive.
Another mainstay of Apple is the principle of form follows function, or the rule that the shape of an object should be primarily based upon its intended function or purpose. This appears to be a corollary of one of Apple’s core design principles: products should be designed for the people that will be using it. Notice that this principle doesn’t necessarily put the functionality of a product on a pedestal to the exclusion of all other considerations. Instead, the design of a product itself (including user interfaces, product packaging, and any messaging delivered by the product) is one of the driving forces behind the choice of making one component a certain shape or choosing to make the product casing rounded. Even with the injection of design considerations into the overall engineering process, a company could still focus too intently on the end-goal: making a product more usable. Design features that are included solely for usability reasons means the particular features cannot be trademarked, no matter how much a company is known for such designs.
 |  Source: "MacBook" by redjar (Jared C. Benedict), also active as en:User:redjar and User:redjar - flickr. Licensed under CC BY-SA 2.0 via Wikimedia Commons - http://commons.wikimedia.org/wiki/File:MacBook.jpg#/media/File:MacBook.jpg |
But what if we look at Apple’s iPhone design flourishes as simply aesthetically appealing, incorporated into the design simply because the design is visually pleasing? One easy example is candy sold in a heart-shaped box for valentine’s day. There is nothing about candy on valentine’s day that says candy has to be sold in a heart-shaped box; consumers just find such a design to be objectively better given the occasion. In the case of smartphones, there is nothing about phones that says they have to have rounded corners, a single button on the face of the phone, or a beveled edge. The interesting thing in the case of Apple is that it was first to market with a phone that seemed to have all the features that consumers found appealing. If one company is allowed to exclusively use features that consumers find appealing (maybe not for any reason other than that the phone “feels” right when they grip it), restricting the ability of competitors to use the same features would be anti-competitive. The anti-competition effect doesn’t have anything to do with the trademark aspects of the design feature; it has everything to do with a design feature not functioning as a trademark at all but only as a functional consideration. So, it is nice that phones have rounded corners (like the iPhone); rounded edges make the phone easier to put into your pocket. Seeing icons arranged in a grid is nice because there is some uniformity, and users find it easier to locate a particular app. Because these features have great appeal to consumers, and because they were created largely to cater to a users’ “intuition”, the items create a competitive need for other phone makers to make similar phones.
There’s no question that Apple engineered these design elements and hit on something brilliant with consumers. The fact that Apple had used similar design features on other products like the iPod or MacBook was not enough to make the features source-identifying, especially where a significant part of the appeal of those features was their usability.
The lesson seems to be that a company should be mindful of overreaching when they design their products and define which elements are to be protected as trade dress. Paradoxically, even though it can take years of use in commerce before trade dress is recognized as a protectable trademark, the validity of trade dress itself can be impacted at the earliest stage of the design process.
There’s no question that Apple engineered these design elements and hit on something brilliant with consumers. The fact that Apple had used similar design features on other products like the iPod or MacBook was not enough to make the features source-identifying, especially where a significant part of the appeal of those features was their usability.
The lesson seems to be that a company should be mindful of overreaching when they design their products and define which elements are to be protected as trade dress. Paradoxically, even though it can take years of use in commerce before trade dress is recognized as a protectable trademark, the validity of trade dress itself can be impacted at the earliest stage of the design process.
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