Many industries rely on design patents to protect the look and feel of their products—especially when aesthetics drive customer interest, brand identity, or market differentiation. In Top Brand LLC v. Cozy Comfort Company LLC, the Federal Circuit weighed in on whether a company’s statements to the U.S. Patent and Trademark Office (Patent Office) during prosecution can be used to limit the scope of an issued design patent. In a precedential decision with wide implications for product-focused companies, the Federal Circuit held that they can.
Case Background
Cozy Comfort alleged that its competitor, Top Brand, sold oversized hooded sweatshirts and wearable blankets that infringed Cozy Comfort’s design patent and its trademark for the phrase, “THE COMFY.” During claim construction, Top Brand asserted that statements Cozy Comfort made during patent prosecution limited the scope of the design patent. The district court rejected those arguments and, when the case proceeded to trial, instructed the jury simply to compare the accused products with the designs shown in the patent drawings. The jury found the design patent valid, found that Top Brand infringed the design patent and the trademark, and awarded more than $18 million in damages.
Federal Circuit Strengthens Prosecution History Disclaimer Doctrine
On appeal, the Federal Circuit reversed. It ruled that “prosecution history disclaimer,” a long-standing doctrine for utility patents in which a patent applicant surrenders claim scope, applies to design patents as well.
Prosecution history disclaimer applies. The Federal Circuit began by holding that the district court erred in declining to construe the claims. Design patent claims are based on the drawings of the design patent, but their scope may be impacted by what the patent applicant argues in prosecution. The Federal Circuit grounded its analysis in utility-patent precedent, noting that prosecution-history disclaimer is a “well-established” doctrine that prevents a patentee from later recapturing claim scope surrendered through amendments or arguments to the Patent Office. It held that design patents are not meaningfully different: the court had already recognized disclaimer by amendment for designs in Pacific Coast Marine Wind-shields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), where canceling figures and text “narrowed the scope of [the] original application, and surrendered subject matter.” Because the purpose of the disclaimer doctrine is to provide public notice and to hold applicants to their representations, the court saw “no reason to distinguish between disclaimer by amendment and disclaimer by argument” in the design-patent context. Indeed, in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), the Federal Circuit ruled that district courts should consider the “effect of any representations that may have been made in the course of the prosecution history” when construing a design claim.
Cozy Comfort disclaimed claim scope to obtain its patent. The court then applied the disclaimer framework to Cozy Comfort’s prosecution record. During prosecution, the patent examiner rejected the claimed sweatshirt design as anticipated by a prior art design called “White.” Cozy Comfort overcame the rejection by arguing that its design differed from White in specific ways, including pocket width and placement, pocket geometry, relative position of the armholes, and direction of the bottom hem slope. These arguments convinced the examiner that the overall ornamental appearance of Cozy Comfort’s design differed from White and secured allowance of the patent. The court held that these arguments also “disclaim[ed] the significance of specific features” and thus “surrendered claim scope” as to those features. Under the doctrine of prosecution history disclaimer, Cozy Comfort could not later rely on those very features to prove infringement.
The accused sweatshirts did not infringe in light of these disclaimers. Having construed the claims, the court turned to infringement. It ruled that the accused sweatshirt differed from the patented design with respect to many of the same features that Cozy Comfort had disclaimed during prosecution. An “ordinary observer” therefore would not find the accused sweatshirts substantially the same as the patented design and the accused sweatshirts did not infringe as a matter of law.
No trademark infringement. The Federal Circuit also reversed the jury’s trademark infringement verdict. Applying the Sleekcraft “likelihood of confusion” framework, the court held that “THE COMFY” is a weak mark because “comfy” is descriptive for blanket-type garments and the record contained only de minimis evidence of actual consumer confusion.
Why This Case Matters: