A Twisted Tale; Of Patents Purchased and Plans that Fail

Who doesn’t love pretzels? They are a terrific snack, especially while enjoying a frosty, adult beverage,  getting ready to start the weekend. They have also been quite the rage lately as the bookends to a variety of different burgers and sandwiches. Today at lunch, for instance, I enjoyed a Pretzel Bacon Cheeseburger from Wendy’s that was, frankly, quite scrumptious. So, during my daily ritual of looking at recently filed patent litigations, I was attracted to an  infringement suit between Ms. Lesley Friend and Laurel Hill Foods, Inc.. The case centers on USD423184, entitled Pretzel, which interested me enough that I downloaded the complaint. What really compelled me to write a post on this litigation though, was the fact that the pretzel in question is shaped like a peace symbol, as can be seen in the image below:

Design Patent 423,184, an Ornamental Design for a Pretzel Shaped Like a Peace Symbol

Design Patent 423,184, an Ornamental Design for a Pretzel Shaped Like a Peace Symbol – Click to Expand

The irony of patent infringement around a peace symbol should not be lost in this, but if you look closely at the patent you will noticed that the inventor is Michael Lamont, in care of The Bijou Theater in Eugene, Oregon. You will also notice that it was granted in April of 2000, and thus will be expiring in April of next year, since design patents expire 14 years after their issue date. Ms. Friend resides in a suburb of Pittsburgh, not Oregon, so a quick check of the USPTO Assignments database provides the following details on a re-assignment of this patent in 2010:

Re-assignment Details for the D'184 Patent from the USPTO

Re-assignment Details for the D’184 Patent from the USPTO – Click to Expand

So, Ms. Friend purchased this patent from Ms. Michaele Rychetsky, who appears to reside in Oregon and apparently was affiliated, in some fashion, with the Bijou Theater currently, or in 2010.

Ms. Friend’s representatives in the re-assignement, and in the subsequent infringement lawsuit are The Webb Law Firm, of Pittsburgh. In an article by Rich Lord of the Pittsburgh Post-Gazette, one of the authors of the complaint, Daniel Brean, explains Ms. Friend’s rationale for purchasing the patent:

“She acquired this patent with the intent to start a pretzel business,” said Downtown attorney Daniel Brean, who along with colleague Russell D. Orkin authored the complaint. “She was in the process of building this pretzel business.”

He said he did not know why Ms. Friend was intent on making peace-symbol-shaped pretzels, but said she’s “a very nice person” and the symbol makes “a nifty pretzel.”

Then she discovered the competition. An exhibit to the complaint shows photographs of Laurel Hill “Pretzel Chips” in sea salt, honey multigrain and everything varieties, in the peace symbol shape.

“Attempts were made to amicably resolve this matter,” Mr. Brean said. “There have been discussions between Ms. Friend and counsel for the defendants.”

No treaty has been reached, so she sued.

As these sort of posts typically go, I start exploring them due to their whimsical nature, but as I dig in, I find interesting stories to tell related to one aspect of the case, or prosecution, or another. In this case, I began to wonder whether an ornamental design for a pretzel, shaped like a peace symbol, would cover a pretzel chip, shaped like a peace symbol. The pretzel chips made by Laurel Hill are quite thin, while in Fig. 2, from the D’184 patent, we see that the covered pretzel is reasonably thick:

Fig. 2 of D'184 Patent Provides Side View of Covered Peace Symbol Shaped Pretzel

Fig. 2 of D’184 Patent Provides Side View of Covered Peace Symbol Shaped Pretzel – Click to Expand

The Wikipedia page on Design Patents discusses the protection provided by US Design Patents:

A US design patent covers the ornamental design for an object having practical utility. An object with a design that is substantially similar to the design claimed in a design patent cannot be made, used, copied or imported into the United States. The copy does not have to be exact for the patent to be infringed. It only has to be substantially similar.

So maybe D’184 covers flat chips, in addition to thicker pretzels. On the other hand, the USPTO Design Patent Application Guide tells us the following on the Description section provided in Design Patents:

The Figure Descriptions indicate what each view of the drawings represents, i.e., front elevation, top plan, perspective view, etc.

Any description of the design in the specification, other than a brief description of the drawing, is generally not necessary since, as a general rule, the drawing is the design’s best description. However, while not required, a special description is not prohibited.

In addition to the figure descriptions, the following types of statements are permissible in the specification:

  1. A description of the appearance of portions of the claimed design which are not illustrated in the drawing disclosure (i.e., “the right side elevational view is a mirror image of the left side”).
  2. Description disclaiming portions of the article not shown, that form no part of the claimed design.
  3. Statement indicating that any broken line illustration of environmental structure in the drawing is not part of the design sought to be patented.
  4. Description denoting the nature and environmental use of the claimed design, if not included in the preamble.

As can be seen in Fig. 2, of the D’184 patent, there are no broken lines associated with this illustration, which would suggest that the covered pretzel may need to be of a certain thickness, in order to be covered. The guide goes on to say the following about the Drawings themselves in a Design Patent:

The drawing disclosure is the most important element of the application. Every design patent application must include either a drawing or a black and white photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, that nothing regarding the design sought to be patented is left to conjecture.

There are also some relevant comments associated with this topic provided in an article by Lorri W. Cooper of Pearne & Gordon LLP, entitled, Disclosed but not described: the new way to reject design patent applications that can be found on the Lexology site. In particular, this article speaks to claims associated with the height of an object in a Design Patent:

For example, the author has previously used language in Design Patent Application No.  29/424,218 (now U.S. Patent No. D675,825) to disclaim the height of one of the parts of a design.  The originally filed drawings showed the part in solid lines, but language included in the specification, as filed, stated that “[w]hile the interior walls of the basket are shown as being lower than the top edge of the basket, it should be appreciated that the inner walls may be at the same height as the top edge of the basket or at a different height relative to the top edge of the basket.”

While the Examiner rejected the language in the specification because “[t]he only claim that can be protected in a patent is exactly what is shown in the drawings,” the applicant was permitted to amend the drawings, in view of the language, to disclaim the height of the center divider.

In the case of the D’184 patent, the specification doesn’t include any language of this sort, as can be seen below:

FIG. 1 is a front view of the pretzel according to my design;

FIG. 2 is a right side view of the pretzel according to my design, the left side view being a mirror image thereof; and,

FIG. 3 is back side view of the pretzel according to my design.

As for the drawings themselves, they portray solid lines, so it will be interesting to see how successful Ms. Friend is at asserting this patent against a chip. Eventually, the issue will be decided by the courts or, as these cases normally go, it will be settled out of court.

Design patents have received a lot of attention recently, and while this case is potentially ironic, since it deals with a lawsuit involving the peace symbol, it is illustrative of how analysts should look at design patents, and consider how broadly they might be interpreted, which is a key method of determining their potential value.

Disclaimer: I am not a patent attorney and this post does not constitute legal advice. It just seemed like a really interesting, and potentially amusing, example worth writing about and sharing.

Comments 29

  1. Thank you Rubal. I hope the lesson on breadth of design patents came through as well.

    Best regards,
    Tony

  2. Tony, great post as usual. I am wondering how precedent from the Egyptian Goddess design patent case in 2009 would apply here. Having no background in law whatsoever, I only have a rudimentary understanding of that case, but from what I have read, it seems that a major test is now whether an ordinary consumer (a design PHOSITA, as it were) would be confused by the two designs. This apparently has strengthened design patents, as each “point of novelty,” e.g. depth of the pretzel as indicated by the solid line, does not have to be considered independently. But, as you cited above, the guidance issued by the USPTO seems to indicate that the narrow interpretation would apply.

    1. Hello Kristin,

      Great comment and I am happy that you liked the post. The link within the Wikipedia entry mentioning substantial similarity points to the CAFC decision in Egyptian Goddess so the point you are making is certainly relevant.

      The question in this case seems to be whether an ordinary consumer would be confused about buying a pretzel chip, in the shape of a peace symbol, when what they were looking for was a pretzel, in the shape of a peace symbol. I am not a patent attorney either, so I am not suggesting one path or another.

      Again, it will be interesting to see what happens here, if the case ever goes to trial, but I think it will be settled, or dropped before that happens.

      Thanks again for the comment,
      Tony

  3. Nice post Tony! I like your thoughtfulness of the assignment history, prior legal discussion of design patents, and the topic. I’ll wait for the patent litigation on candy shaped like a dove.

    1. Thank you Matt and happy to see that you are enjoying the posts.

      I found out quite a bit more about Ms. Friend as well but I didn’t think it was necessary to share all of it in a public forum.

      Speaking of dove-shaped candy, have a look at the cookie crumbles and deli packaging posts for more of the same.

      Thanks again,
      Tony

  4. Great an interesting post Anthony. Being a Design and Patent Attorney in India, would like to keen track of the case. Takes me back to the ” Bunny Rabbit case” as also the Mercedes Benz case in India for Trademark. From my experience, the dis-similarities may be demonstrated in the Court of Law and the class to which these designs are registered will make the difference

    1. Hello Jaya,

      Thank you for the comment and sharing your expertise.

      The classes in question are D01/106, D01/130 & 426/104. The most relevant looks to be D01/ 106 – Design for an edible food product that includes an ornamental feature or features that show the ornamental appearance of another article either as applied ornamentation or overall form.

      The pretzel and chip would both seem to fall under this category so perhaps the argument can be made that consumer confusion would ensue.

      I will post a follow-up if there are new developments.

      Thanks,
      Tony

    1. Hello Kalpana,

      Thank you for the comment. There have been several articles lately on design patents. Let me know if you would like the links.

      Thanks,
      Tony

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