Anatomy of a Product Design Trade Dress Case: Courts Continue to Consider Convoluted Controversies

On February 21st, Ken Germain and Glenn Bellamy, both of Wood Herron & Evans, LLP, will discuss how courts labor to apply trade dress and utility patent concepts in difficult cases that call into question the relationship between these two forms of intellectual property.

Federal courts at all levels – including the Supreme Court in landmark cases decided early in the 21st Century (Wal-Mart, 2000; TrafFix, 2001) – have struggled to define, then delineate, what constitutes valid/protectable “product design trade dress.” This task encompasses concepts of distinctiveness (via “secondary meaning”) and non-functionality, the latter presenting difficult legal and factual determinations.   Those courts also have grappled with concerns about how patent law protections might preclude separate trade dress protection for “designs” (including color combinations and product configurations) that often qualify as registered and/or unregistered trademarks.

After refreshing recollections of these particular issues, trademark lawyer/professor Ken Germain will summarize relevant Circuit Court cases from the most recent few years.  Then, Mr. Germain and Mr. Bellamy, a patent attorney, will discuss the specific issues they are facing in their roles as prospective expert witnesses in a pending federal case focusing on color combination/configuration of goods.

1.0 hour CLE available.



About the Speakers

Ken Germain has more than 40 years of varied experience in the trademark/unfair competition field and is a former full-time law professor. He focuses his practice on trademark counseling, consulting and litigation, including Early Neutral Evaluation. Ken is often retained as an expert witness on issues relating to trademarks and unfair competition, working on cases involving some of the nation’s largest companies in high-stakes, cutting-edge cases. He has testified in court over 15 times.

Ken served as an Adjunct Professor at the University of Cincinnati College of Law for a number of years, teaching trademark/unfair competition courses. Later, Ken served as the Distinguished Professorial Practitioner in the University of Dayton Law School’s Program in Law and Technology. Later, after serving as the Distinguished Senior Fellow in connection with the Law + Informatics program of the NKU Chase School of Law, Ken resumed his position at the University of Dayton.

Glenn Bellamy is a Partner at with more than two and a half decades of intellectual property litigation, patent and trademark prosecution, and U.S. Customs enforcement experience, first in Seattle and now in Cincinnati. He counsels clients on strategic plans for managing, enforcing, and defending global portfolios of patent and trademark rights relating to everything from firearms and hydraulic machinery to biomedical devices and optics to toys and games. Glenn has litigated trademark, patent, and publishing cases throughout the country in federal courts, arbitration, and before the International Trade Commission. Glenn, his wife Renée, and two children live near Loveland, Ohio.