Design Patent Infringement as Unfair Competition

The rule for determining design patent infringement requires an assessment of substantial similarity through the eyes of an ordinary observer—similarity sufficient to induce the observer to purchase the infringing design supposing it to be the patented design. That test, which originates in the Supreme Court’s 1871 Gorham Manufacturing Co. v. White decision, is an anomaly. It is a patent infringement test framed in language that would be more at home in a trademark infringement or unfair competition case. Yet the Federal Circuit has insisted that design patent infringement is unlike trademark infringement or unfair competition, dismissing any kinship as superficial. In this Article, I first show that the connection between design patent infringement and unfair competition is much deeper than previously recognized. The Gorham case record and associated historical sources help support this assertion. I then urge the Federal Circuit to explore what lessons modern trademark and unfair competition law might provide for design patent infringement law. I survey the law that has grown up around the confusion factors analysis that is used for most modern Lanham Act trademark and unfair competition claims, and I show how that law can be mined for subsidiary rules that would inform the design patent infringement analysis. I conclude that by declining to consult the jurisprudence of trademark infringement and unfair competition claims, the Federal Circuit is depriving itself of a repository of lessons—positive and negative—developed by courts over many decades, lessons that could bring some needed depth to the design patent infringement analysis.