Consumer preference for the specific appearance of a product does not make that appearance “functional” such that it would invalidate a design patent, the United States Court of Appeals for the Federal Circuit ruled recently.
In its July decision in Automotive Body Parts Association (ABPA) v. Ford Global Technologies, LLC, the Federal Circuit rejected ABPA’s “invitation” to “hold that the aesthetic appeal – rather than any mechanical or utilitarian aspect – of a patented design may render it functional.”
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While the court did not break new ground in its ruling, which involved replacement hoods and headlights for Ford’s F-150 trucks, the case is a reminder of the importance of seeking design patents, says John Augustyn, a shareholder in Leydig’s Chicago office.
“In the eyes of consumers, the value for many goods, like replacement automotive parts, is that they match the vehicle, even if some other part could perform the same function,” he notes. “By securing a design patent, a manufacturer can capture the service parts market for itself.”
While a utility patent must be based on a good’s functionality, a design patent protects a “new, original and ornamental design for an article of manufacture” under 35 U.S.C. § 171(a). An article of manufacture can have functional elements and still receive a design patent, but the ornamental design cannot be “primarily functional.”
In this case, ABPA argued that Ford’s design patents for its F-150 hood and headlights were invalid for lack of ornamentality, claiming their compatible appearance with the truck was, in fact, part of its “aesthetic functionality,” a concept ABPA borrowed from trademark law.
The Federal Circuit affirmed the district court’s grant of summary judgment in Ford’s favor, holding that “even in this context of a consumer preference for a particular design to match other parts of a whole, the aesthetic appeal of a design to consumers is inadequate to render that design functional.”
The court also noted that accepting ABPA’s argument would defeat the entire purpose of design patents.
“If customers prefer the ‘peculiar or distinctive appearance’ of Ford’s designs over that of other designs that perform the same mechanical or utilitarian functions, that is exactly the type of market advantage ‘manifestly contemplate[d]’ by Congress in the laws authorizing design patents,” the court wrote.
Elias Soupos, a shareholder in Leydig’s Chicago office, says that while companies may want to leverage “market advantage,” they may miss the opportunity to do so if they consider only a product’s functionality when making decisions about its patentability.
“Especially on a product that would not support a utility patent, a design patent is an excellent way to protect something that is otherwise unprotectable,” he says. “Looks may not be everything, but in this context, they are certainly worth a lot.”
