Aesthetic-Functionality Test Does Not Apply to Design Patents

The court denied plaintiff's motion for summary judgment that defendant's auto body part design patents were invalid and rejected plaintiff's argument that the aesthetic-functionality test should apply to design patents. "For at least three reasons the Court declines to import the aesthetic-functionality doctrine from trademark law to design-patent law. First, no court has done so. This despite that both trademarks and design patents have coexisted for well over a century. . . . Second, trademark law and patent law serve different purposes. . . . [T]rademark law 'seeks to promote competition' . . . patents inhibit competition. Yet the 'policy predicate for the entire [trademark] functionality doctrine stems from the public interest in enhancing competition.' . . . Third, there is greater reason for trademark law to be concerned with functionality (aesthetic or otherwise) than design-patent law. If a trademark could protect function, the mark holder would gain a perpetual monopoly over the product’s function without clearing the hurdles for obtaining any patent—utility or design. In contrast, those seeking a design patent must clear at least some hurdles related to novelty. And the term of monopoly is limited to 15 years. Thus, the inequity of a design patent protecting the aesthetically functional aspect of an article is simply not as great as a trademark doing so."

Automotive Body Parts Association v. Ford Global Technologies, LLC, 2-15-cv-10137 (MIED February 20, 2018, Order) (Michelson, USDJ)