Vedder Price PC issued the following announcement on July 23.
Vedder Price is pleased to announce a recent litigation victory for its client, Bodum. Led by Shareholder Nicole Wing, the Vedder Price team secured a victory from the Seventh Circuit Court of Appeals, which affirmed the winning jury verdict Vedder Price obtained in 2018 in a trade dress case involving Bodum’s French press coffee makers.
For the past 25 years, Vedder Price has vigorously enforced Bodum’s intellectual property “trade dress” rights in the design of the French press coffee maker trademarked as the CHAMBORD®. Protection of trade dress is reserved for truly distinctive products because it is protection in perpetuity; it does not expire like a patent would. At the 2018 trial against A Top New Casting (per which manufactured and sold a nearly identical product), Vedder Price proved the CHAMBORD®’s entitlement to this protection. The jury ruled in favor of Bodum, awarding $2 million in damages, which the judge doubled to $4 million for willful infringement. The judge also entered a permanent injunction preventing A Top from ever copying a product that embodies the CHAMBORD® trade dress.
A Top appealed, arguing that the claimed trade dress elements on the CHAMBORD® French press were functional, which would deny a product trade dress protection. The Seventh Circuit found that A Top confused the concept of something having a use (e.g., the product’s handle) and being functional, as that term is used in trade dress law. The Seventh Circuit unanimously affirmed the jury’s verdict, recognizing Bodum’s product as an iconic design. As a significant development in the area of trade dress law pertaining to the circumstances under which utility patents are relevant to a functionality analysis, the court’s ruling not only limits the applicability of utility patents in trade dress cases, it suggests that such patents may not even be admissible unless the party introducing those patents into evidence can point to the trade dress elements in the claims.
Vedder Price Shareholder Nicole Wing, who handled the 2018 trial and subsequent appeal, counsels and represents Bodum nationwide in protecting Bodum’s brand, image and reputation. According to Ms. Wing, “Trade dress is always a difficult claim to prove, and this victory is paramount to our client’s protection of its brand going forward.”
This lawsuit is only one of the many ways that Vedder Price defends Bodum’s image. In the Internet era, intellectual property violations are rampant, and the law is nuanced. A Top’s product was a top seller on Amazon because a design that overall mirrors the Chambord, but is sold at a lower price point, can quickly capitalize on the years of promotion and brand development Bodum has spent on its Chambord French press coffee makers. In other cases, Vedder Price has stopped retailers from using “Bodum”-related search words or images of Bodum products to market non-Bodum coffee makers. Vedder Price is experienced in identifying intellectual property violations that taint its clients’ images or disparage its clients’ products by monitoring the marketplace, negotiating resolutions and proceeding to litigation when necessary.
Original source can be found here.