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James Aquilina

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James has extensive practice experience in all aspects of U.S. intellectual property law and regularly counsels clients in the areas of utility and design patent, trademark, copyright, and trade secret law, with emphases on rights procurement, portfolio development and management, rights enforcement, and licensing.

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Upending decades of continuity in the world of design patents, the United States Court of Appeals for the Federal Circuit (“CAFC”), sitting en banc in LKQ Corporation v. GM Global Technology Operations LLC, overturned the Rosen/Durling standard for obviousness of design patents, originally set forth in In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982) and further refined in Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), to align the test for obviousness for design patents with the U.S. Supreme Court precedent for utility patents originally set forth in Graham v. John Deere Co., 383 U.S. 1 (1966) and refined in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).  In so doing, the CAFC outlined the new framework by which design patent obviousness is to be determined at the United States Patent & Trademark Office (“USPTO”) during examination and post-grant proceedings, as well as during district court litigation involving infringement or invalidity challenges of design patents.Continue Reading R.I.P. Mr. Rosen: Federal Circuit Upends Longstanding Design Patent Obviousness Test

The beauty industry is ever changing, and makeup trends and viral product releases can drastically increase a company’s profits.  However, without proper legal protection, competitors can quickly replicate a product, eating into those profits. 

In this post, we will address how design patents and trade dress can be employed to provide protection for various beauty-related tools and products.Continue Reading Protecting the Product: Beauty Products

The United States Patent and Trademark Office (“USPTO”) is amending the rules of practice in patent cases by creating a separate space for individuals with educational backgrounds in design-related disciplines to qualify to practice before the USPTO in the limited capacity of design patent application proceedings. This new rule does not impact those already registered to practice any patent matters before the USPTO. The USPTO, with this rule amendment, will now recognize applicants to the design patent bar that have degrees in any of industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, art teacher education, or a degree equivalent to one of the listed degrees. This list of educational backgrounds matches those sought out by the USPTO to fill out the ranks of the design patent examination corps.Continue Reading New USPTO Design Patent “Bar” to be Created in 2024

As we’ve written about in prior posts, it’s possible under U.S. trademark law for distinctive visual element(s) to become a trademark, i.e., an identifier of source for a particular party’s goods or services.Continue Reading The Blue Turf of Boise State: On “Service” Dress and the Creation of Source Identification

Last week, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the law on comparison prior art in design patent cases. In the decision, captioned Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, 21-2338 (Sept. 15, 2023), the Federal Circuit provided guidance on the types of prior art that can be reviewed by courts and juries in the comparative prior art stage of the infringement analysis of design patent cases.  In the initial case, Columbia Sportswear North America, Inc. (“Columbia”) sued Seirus Innovative Accessories, Inc. (“Seirus”) for infringing U.S. Design Patent No. D657,093 (“the D’093 Patent”) via sales of its products containing HeatWave™ liner material, as illustrated side-by-side below.Continue Reading Design Patents are Heating Up at the Federal Circuit, Again

The recent proliferation of useful Artificial Intelligence (“AI”) tools for tasks like text, image, music, and software code generation is all the rage. In the intellectual property sphere, one of the hottest topics surrounding the use of these AI tools is whether the works of art or inventions (including works of industrial design) created using these tools can still be considered the creation of the individual author or designer. This question is of critical importance because the U.S. copyright and patent laws are currently written in a way that require human creation to be eligible for protection.Continue Reading AI & IP: A Not-so-Perfect Pairing

The USPTO’s Trademark Trial and Appeal Board (“Board”) recently ordered the cancellation of two trademark registrations for product configurations of safety helmets, shown below and both directed to “… a three dimensional configuration of two ridges located along the center of a safety helmet….”Continue Reading Safety Helmet Product Configuration Trademark Registrations Demolished by Lack of Evidence of Acquired Distinctiveness

Save the Date to Attend the 16th Annual USPTO Design Day

The 2023 iteration of the United States Patent and Trademark Office (USPTO)’s annual Design Day will be held on May 4, 2023, with options to attend either in-person at USPTO headquarters in Alexandria, Virginia or virtually.

Registration will be made available in April 2023, and we will share the sign-up link with our blog readers at that time.  Quarles’ design patent attorneys have spoken at previous Design Days and will once again be in attendance at this year’s event.Continue Reading SAVE THE DATE – 16th Annual USPTO Design Day Announced for May 4, 2023

As highlighted by a recent decision of the United States District Court for the Southern District of New York[1], a party’s failure to properly mark its products with its issued U.S. patent number(s) will very likely result in a complete loss of the ability to recover infringement damages that occurred prior to the delivery of a specific allegation of infringement to an accused infringer.  As further explained below, companies should thus very seriously consider the inclusion of patent markings on all relevant products.
Continue Reading Failure to Mark Patent Number on Products Results in Complete Loss of Pre-Suit Infringement Damages