The Federal Circuit recently held in Columbia Sportswear North America, Inc. v Seirus Innovative Accessories, Inc. that logos may be considered in the ordinary observer test.[1] Seirus Innovative Accessories (“Seirus”) makes and sells cold weather gear, and a lower court had ruled on summary judgment that U.S. Patent No. D657,093 to Snyder was infringed by Seirus’s gloves and glove liners:

The Federal Circuit reversed the summary judgement in part because the lower court improperly disregarded Seirus’s logo in the ordinary observer test.

The ordinary observer test is used to determine whether a claimed design is infringed and provides that an accused product infringes a claimed design if the two designs are substantially the same in the eye of an ordinary observer. In this case, Seirus’s gloves and glove liners included a logo that repeatedly interrupted a wave design, and Seirus argued that?due to the logos?the gloves and glove liners were not substantially similar to Columbia’s patented design. However, the lower court disregarded Seirus’s logos in the ordinary observer test, stating that “if the logo was removed from the Seirus design, an ordinary observer would have great difficulty distinguishing between the Seirus and Columbia designs.” The lower court noted that disregarding the logo was appropriate because 1) Columbia’s patented design was logo-free (i.e., did not claim logo placement) and 2) Seirus’s logo was a source identifier and not functional marking.

In overturning the lower court’s ruling of infringement, the Federal Circuit held that an ornamental logo may be considered in the ordinary observer test. Moreover, a logo may be considered even if the claimed design is logo-free. Specifically, the Federal Circuit stated that prior precedent “does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one”, and that “it would be inconsistent . . . to ignore elements of the accused design entirely, simply because those elements included the name of the defendant.”[2]

The ordinary observer test is also used to determine anticipation,[3] and logos may be considered during examination of design patent applications. As such, one benefit of claiming a logo as part of a design is that the logo could be used to distinguish over prior art. However, this decision indicates that potential infringers may also distinguish their accused products from the claimed design due to the claimed logo. Thus, when preparing design patent applications, applicants should take care in considering their use of logos and trademarks, as well as their competitors’ use of logos and trademarks.