DCT
3:23-cv-01001
Logo Brands v. Twenty Six Designs LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Logo Brands, Inc. (Tennessee)
- Defendant: Twenty-Six Designs, LLC (New Jersey)
- Plaintiff’s Counsel: Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C.
- Case Identification: 3:23-cv-01001, M.D. Tenn., 09/20/2023
- Venue Allegations: Plaintiff Logo Brands asserts venue is proper because it is a Tennessee corporation with its principal place of business in the district, and because Defendant Twenty-Six Designs directs business, licensing, and enforcement activities at the district.
- Core Dispute: Plaintiff seeks a declaratory judgment of non-infringement and invalidity of Defendant’s design patent and alleged trade dress related to a perforated tote bag design.
- Technical Context: The dispute centers on the ornamental design of tote bags, often constructed from EVA foam, which are popular for beach, utility, and general-purpose use.
- Key Procedural History: The action follows a cease-and-desist letter from Twenty-Six Designs to Logo Brands dated September 12, 2022, subsequent licensing offers, and a draft complaint. The complaint raises significant validity challenges based on the patent’s prosecution history, alleging an improper priority claim to an earlier utility patent and asserting that the design was on sale more than one year prior to its effective filing date.
Case Timeline
| Date | Event |
|---|---|
| 2007-10-18 | Earliest Alleged Priority Date for U.S. Patent No. D728,938 |
| 2008-12-24 | Filing Date of Application for U.S. Patent No. 8,312,816 ('816 Patent) |
| 2011-11-19 | Date prior to which the "Bogg Bag" was allegedly first sold |
| 2012-11-19 | Filing Date of Application No. 13/680,885 |
| 2014-04-16 | Filing Date of U.S. Patent No. D728,938 |
| 2015-05-12 | Issue Date of U.S. Patent No. D728,938 |
| 2022-09-12 | Twenty-Six Designs sends cease-and-desist letter to Logo Brands |
| 2023-09-20 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D728,938 - "Carrying Case"
The Invention Explained
- Problem Addressed: As a design patent, the '938 Patent does not describe a technical problem. Its purpose is to protect the novel, ornamental, and non-functional aesthetic appearance of a carrying case.
- The Patented Solution: The patent claims the specific visual design for a carrying case as depicted in its seven figures ('938 Patent, Claim). Key ornamental features shown include a rectangular tote bag with rounded bottom corners, two loop handles, and a distinctive pattern of circular holes on the front and back faces ('938 Patent, FIG. 1-3). The design also includes specific profile views and a particular bottom surface appearance ('938 Patent, FIG. 4-7).
- Technical Importance: The complaint alleges that the underlying product, the "Bogg Bag," is marketed as functional, with features that prevent tipping and are durable (Compl. ¶¶85, 87). The design itself contributes to a specific aesthetic in the consumer market for utility tote bags.
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a carrying case, as shown and described." ('938 Patent, Claim).
- The essential elements of the design are the visual characteristics embodied in the collective views of the patent's drawings, including:
- The overall shape and proportions of the bag.
- The rounded bottom corners.
- The specific arrangement and appearance of the circular apertures on the front and rear faces.
- The shape and attachment points of the handles.
- The appearance of the bag in profile, top, and bottom views.
III. The Accused Instrumentality
Product Identification
- The "Logo Brands Bag" (Compl. ¶127).
Functionality and Market Context
- The complaint describes at least two versions of the accused product: one with apertures and one without (Compl. ¶¶127, 140). The version with apertures is alleged to have 23 holes on one side and a different number on the other, which typically bears a third-party logo (Compl. ¶161). A photo provided in the complaint shows the Logo Brands Bag with a buffalo-head logo in place of some apertures (Compl. ¶127).
- The complaint alleges that the bottom portion of the bag is reinforced with additional material, demarcated by a horizontal line, to enhance strength, support, and ensure the bag remains upright (Compl. ¶¶130-132). The tread on the bottom of the bag is described as consisting of "a random series of squiggly lines and upside-down chevrons or nested arrowheads" (Compl. ¶129). This tread is depicted in a photograph of the bottom of the accused bag (Compl. ¶128).
IV. Analysis of Infringement Allegations
The plaintiff, Logo Brands, seeks a declaratory judgment of non-infringement. Its allegations focus on visual differences between its product and the patented design, arguing that an ordinary observer would not be deceived.
D'938 Patent Non-Infringement Allegations
| Claim Element (from '938 Patent Figures) | Plaintiff's Contention of Non-Infringement | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of the carrying case. | An ordinary observer would not find the Logo Brands Bag substantially similar to the patented design due to numerous differences, including the presence of a third-party logo. | ¶165 | FIG. 1-7 |
| A specific pattern of apertures on the front and back faces. | The Logo Brands Bag with holes has a different number of apertures (e.g., 23 on one side, fewer on the other) compared to the symmetrical design shown in the patent. A version of the bag has no apertures at all. | ¶¶137-139, 161, 164 | FIG. 2-3 |
| The unadorned surface where apertures are located. | The Logo Brands Bag features a prominent third-party logo, which is alleged to be the "compelling reason for the consumer to purchase" the bag and distinguishes its appearance. | ¶163 | FIG. 2-3 |
| The appearance of the bottom of the bag. | The tread on the bottom of the Logo Brands Bag consists of squiggly lines and chevrons, which is different from the design shown in the patent. | ¶129 | FIG. 7 |
Identified Points of Contention
- Scope Questions: The central infringement question is whether, in the eye of an ordinary observer, the accused Logo Brands Bag appropriates the novelty of the patented design which distinguishes it from the prior art. The complaint alleges the field is crowded with similar bags from third parties, potentially narrowing the scope of protectable design elements (Compl. ¶¶100-125).
- Technical Questions: A key factual question is what visual impact the differences asserted by the plaintiff—namely the different hole count, the prominent logo, and the different bottom tread—have on the overall aesthetic of the bag. The court will need to determine if these differences are minor or if they create a sufficiently distinct visual impression to avoid infringement.
V. Key Claim Terms for Construction
In design patent litigation, the focus is less on construing specific terms and more on determining the scope of the claimed design, particularly by separating ornamental features from functional ones.
- The Term: Functional Elements of the Design
- Context and Importance: The plaintiff argues that numerous features of the '938 patent are functional and therefore should be disregarded when assessing infringement. If successful, this would narrow the scope of the protectable design to only its purely ornamental aspects, making a finding of non-infringement more attainable.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation (More Functional): The complaint alleges that the apertures are functional, citing the parent '816 utility patent which discloses that apertures in the bag are for receiving snap fasteners (Compl. ¶¶77, 170). Plaintiff further alleges that the bag's rectangular shape, rounded corners, and the reinforced horizontal line near the bottom are functional for providing strength and stability, preventing the bag from tipping over (Compl. ¶¶85, 131-133, 183-184).
- Evidence for a Broader Interpretation (More Ornamental): Twenty-Six Designs, in its draft complaint, allegedly defined its trade dress as a collection of these same features, including the "rectangular shape," "rounded bottom corners," and "arbitrary pattern of... holes," suggesting it views them as part of a protectable aesthetic combination (Compl. ¶80). This may be used to argue that the features, taken together, create an overall ornamental impression.
VI. Other Allegations
Invalidity Allegations
Logo Brands dedicates Count Two of its complaint to seeking a declaratory judgment that the '938 Patent is invalid on several grounds (Compl. ¶¶169-174).
- Functionality: The complaint asserts the patent is invalid because its claimed features, particularly the apertures, are dictated by function, as disclosed in the '816 parent utility patent (Compl. ¶170).
- Improper Priority Claim / Lack of Enablement: The complaint alleges that the drawings in the '938 Patent (e.g., rounded corners, specific profile views) are different from and not disclosed in the parent '816 Patent (e.g., right-angle corners). It argues the '938 Patent is therefore not enabled by the parent patent and cannot properly claim priority to its earlier filing date (Compl. ¶¶56-63, 73-75, 171).
- On-Sale Bar: If the priority claim is invalid, the '938 Patent's effective filing date would be its own filing date of April 16, 2014, or at earliest the November 19, 2012 filing date of its direct parent application. The complaint alleges that the commercial embodiment of the design, the "Bogg Bag," was on sale prior to November 19, 2011, which is more than one year before that critical date, potentially rendering the patent invalid under 35 U.S.C. § 102 (Compl. ¶¶46-47, 54).
Indirect Infringement
- The complaint seeks a declaration of non-infringement for both direct and indirect infringement, but does not plead specific facts beyond the general denial (Compl. ¶168).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive issue will be one of validity based on priority: Can the D'938 design patent validly claim priority back to its 2008 grandparent application, despite the alleged material differences between its drawings and those in the parent patent? The resolution of this question will determine the patent's effective filing date and the viability of the on-sale bar defense.
- A second core issue is one of design scope and functionality: To what extent are the key features of the claimed design—particularly the apertures, the overall shape, and the reinforced base—dictated by utility? The court's determination will define which elements are merely functional and which are truly ornamental, thereby setting the scope of the patent for the infringement analysis.
- Finally, assuming the patent is deemed valid and its scope is determined, a key evidentiary question will be one of overall appearance: Would an ordinary observer, accounting for the prior art, be deceived into thinking the Logo Brands Bag is the patented design, or do the alleged differences, most notably the prominent third-party logo and different hole pattern, create a distinct visual impression that avoids infringement?