IP Law Daily, PATENT—Fed. Cir.: Portable shopping bag patent invalidated on obviousness and functionality grounds, (Jun 22, 2022)

By Robert B. Barnett Jr., J.D.

A patent for a reusable and foldable shopping bag that fits within a shopping cart was invalidated because the claimed design was dictated solely by function and it was obvious.

The U.S. Court of Appeals for the Federal Circuit has affirmed a California federal district court’s ruling that invalidated a design patent for a reusable and foldable shopping bag that fits within a shopping cart on both functionality (its design was dictated solely by its function) and obviousness grounds. Thus, the lower court correctly ruled that Golden Eye Media USA, Inc., did not infringe Trolley Bags UK Ltd.’s patent. The appellate court also affirmed the lower court’s ruling that no trademark infringement occurred either, because all factors other than proximity of the goods weighed against a finding of a likelihood of confusion between the two marks (Golden Eye Media USA, Inc. v. Dehmoubed, June 22, 2022, Lourie, A.).

Background. Trolley Bags UK Ltd owned U.S. Patent D779,828 (the ’828 patent), directed to a reusable and foldable shopping bag that fits within a shopping cart. Trolley Bags has since changed its name to Evo Lifestyle Products Limited.

In any event, in 2017, Trolley Bags sent a cease-and-desist letter to Golden Eye Media USA, Inc. (GEM), contending that GEM’s sale of its Lotus Bags infringed the patent and violated its common law trademark for TROLLEY BAGS. IN 2018, GEM filed a declaratory judgment action in California federal court, asking for declarations that (1) GEM did not infringe the patent, (2) the patent was invalid for functionality and obviousness, and (3) GEM did not infringe the common law trademark.

The district court granted summary judgment to GEM on all three requests. Trolley Bags appealed the decision to the Federal District in D.C.

Patent validity. The district court had found the patent invalid both because its design was dictated by function and because it was obvious from prior art. Trolley Bags challenged both findings.

Functionality. According to the Federal Circuit, whether a design is dictated by function is determined by resort to whether (1) the protected design represents the best design, (2) the alternative design would adversely affect the utility of the specified article, (3) there are any concomitant utility patents, (4) the advertising touts particular features of the design as having specific utility, and (5) there are any elements in the design or an overall appearance clearly not dictated by function (Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1322 (Fed. Cir. 2016)).

The district court found that the horizontal poles of the claimed design were necessary for the bag to fit in a cart while standing upright. Any alternative design, the court concluded, would adversely impact the functionality. As a result, the first, second, and fifth factors weighed in favor of invalidity. The third factor was determined to be neutral because no utility patents existed. The court then found that the fourth factor weighed in favor of invalidity because the ads merely said that checkout time was halved because the bags did not have to be held open. As a result, the district court found that the design was driven solely by function, a ruling that the appellate found was not clearly erroneous and that left no genuine issues of material fact unresolved.

Obviousness. Obviousness requires a two-step analysis (Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)). Step one is to identify a single reference in existence that is basically the same as the claimed design. Step two is to use other references to create a design that has the same overall visual appearance as the claimed design. If a combination of those two steps produces the patented product, the patent is invalidated as obvious.

The Federal Circuit agreed with the lower court that Doyle was a primary reference, even though the Doyle design had a different handle, horizontal rods that differed in length and design, and a less rectangular shape. Even so, the appellate court concluded, the two designs created “basically the same” visual impression. The first step can be satisfied by a prior reference that contains slight differences.

Turning to step two, the Federal Circuit also agreed with the lower court that Brennan qualified as a secondary reference. Brennen contains similar handle stitching. Thus, if one were to combine the bag shape and handles of Doyle with the handle stitching from Brennan, one would create a shopping cart bag that “highly resembles” the one claimed by the Trolley Bag patent. As a result, the Federal Circuit ruled, the lower court did not commit clear error when it combined those two prior designs and determined that they rendered the Trolley Bag patent obvious.

The court, therefore, concluded that the patent was invalid on both functionality and obviousness grounds.

Patent infringement. In light of the appellate court’s conclusion that the patent was invalid on both functionality and obviousness grounds, the claim for patent infringement was rendered moot.

Trademark infringement. The question for trademark infringement was whether the GEM trademark was so similar to the Trolley Bag trademark as to create a likelihood of confusion and, thus, trademark infringement.

Trademark infringement for purposes of this appeal was determined by the factors set forth by the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979): (1) strength of the mark, (2) proximity of the goods in trade channels, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and the degree of care likely to be exercised by the purchaser, (7) defendant’s intent in selecting the mark, and (8) likelihood of expansion of the product line.

In examining the various factors, the Federal Circuit concluded that they all weighed against a finding of a likelihood of confusion except for the proximity of the goods. The actual logos looked quite different, with GEM using a lotus plant on a black background and a stylized font with the word “Lotus” most prominent, while Trolley Bag used a shopping cart on an orange background with a block font with the word “Trolley Bags” most prominent. Furthermore, no actual confusion was demonstrated, despite both products being in the market for a period of time. The appellate court agreed with the lower court that no genuine dispute of material fact existed on the likelihood of confusion from the use of the two marks. Thus, no infringement occurred, and the lower court’s ruling was affirmed.

The Federal Circuit, therefore, affirmed the district court’s grant of summary judgment to GEM.

The case is No. 2021-2096.

Attorneys: Cody R. LeJeune (LeJeune Law, PC) for Golden Eye Media USA, Inc. Matthew L. Cutler (Harness, Dickey & Pierce, PLC) for Evo Lifestyle Products Ltd. f/k/a Trolley Bags UK Ltd.

Companies: Golden Eye Media USA, Inc.; Evo Lifestyle Products Ltd.

Cases: Patent Trademark FedCirNews