A New Survey Protocol for Proving/Disproving Design Patent Infringement

TASA ID: 961

A rather simple and inexpensive survey instrument can be created to prove or disprove design patent infringement. 

The nature of design patent lawsuits makes them "first cousins" to trade dress lawsuits in terms of proving or disproving infringement.  The common denominator is the issue of the "nonfunctional" element(s) of the patent or trade dress.

As opposed to the utility patent, which focuses on novel, useful and non-obvious inventions, the design patent does not focus on utility.  Instead, the design patent addresses ornamental design, which has been defined by the U.S. Patent and Trademark Office as the visual characteristic or aspects displayed by the object.

According to Arnold B. Silverman, a partner in the Pittsburgh-based law firm of Eckert Seamans Cherin & Mellott, "[w]hile a design patent may be issued for a utilitarian article, such a patent may be obtained only to the extent that the ornamental features dominate the functional features" (Silverman, "What Are Design Patents and When Are They Useful?" JOM, 45 (3) (1993), p. 63).

In comparison to design patent protection, trade dress protects the shape of a product or container, provided that the shape does not serve a utilitarian function and is distinctive (i.e., it serves as a "source identifier").  Classic trade dress examples are the shape of Coca Cola's COKE® bottle and the color pink for Owens Corning® insulation products.  Both the shape of the bottle and the color of the insulation are non-functional but define the products and indicate their source.

As with infringement in trade dress cases, survey instruments can be formulated to establishment infringement in design patent cases. 

A number of years ago, one of the expert-co-authors of this article (TASA ID: 0014471787), performed two consumer surveys on behalf of Black & Decker.  The product in question was a consumer tool, a sander product with the nose in a triangular shape like a computer mouse.  It seemed that Black & Decker owned a design patent on a product such as this but had never made or sold the product. 

Notwithstanding the Black & Decker patent, another tool manufacturer created a consumer hand tool that was remarkably similar to the Black & Decker design.  The expert was retained to conduct a consumer survey to determine if potential customers would be confused with the product compared with the design patent drawings. 

While what was performed was only a pilot study in one shopping mall, the results conclusively proved a likelihood of confusion between the allegedly infringing product and the design patent. 

Here is how the survey methodology unfolded. Relevant consumers, those who had purchased consumer hand tools or who said they intended to purchase consumer hand tools, were recruited in a shopping mall, given a small incentive, and brought into a room within the mall's research facility.  In the room under a drape were five different competitive consumer sanding products designated by the letters A, B, C, D and E (brand information was covered by black tape). One of these products looked very similar to the product depicted in the Black & Decker design patent drawings.

The interview subject was first shown the design patent drawings, which were left on the table.  He/she was then shown the five-product array and asked:  "Which, if any, of these products do you believe is the same product that you saw in the drawings?"

In reality, the allegedly infringing product was very similar to the design patent drawings, but not identical.  However, a substantial number of the subjects singled out the product that looked like the product depicted in the design patent drawings. 

The Probable End Result

This example was experimental research; no research report was produced.  Indeed, the numbers in this pilot study were not sufficient for evidence if this case ever were brought to trial.  Yet, the research clearly was very valuable and, when expanded, could have been used if a lawsuit was filed by Black & Decker.  As it turned out, the company that made the "mouse" sander went out of business.  However, if a full-blown survey such as the one described had been produced, it probably would have gone a long way in achieving a settlement.  In such a case, the plaintiff would probably not be interested in removing the defendant's product from the marketplace.  Rather, the plaintiff might seek to license its design patent in exchange for an appropriate royalty.  The survey results arguably open the doors to a settlement and an ensuing royalty agreement.    


This protocol makes use of accepted research-for-litigation best practices.  Moreover, it can also be done on-line with the design patent drawings shown on the screen and the array of products shown after the survey respondent has viewed the design patent drawings. 

The cost for such research is fairly inexpensive, especially in the light of the total costs of bringing an action for patent infringement.  Total costs for creating, conducting and reporting on such a study might range from $20,000 to $30,000 and would typically include a minimum of 50 interviews in four different venues, or 200-300 Internet interviews. 

While such a protocol works obviously well with consumer products, it also can adapt to industrial or business-to-business products.  The challenge is simply to locate relevant participants. 

The Other Side of the Coin

The protocol can be implemented equally as successfully by defendants who believe there is no design patent infringement.  Here the same methodology is used - whether in shopping malls or over the Internet - and if the results show insignificant levels of confusion, a defendant might use this information to successfully petition for summary judgment.

This article discusses issues of general interest and does not give any specific legal or business advice pertaining to any specific circumstances.  Before acting upon any of its information, you should obtain appropriate advice from a lawyer or other qualified professional.

This article may not be duplicated, altered, distributed, saved, incorporated into another document or website, or otherwise modified without the permission of TASA.

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