BLG Prevails in Trade Dress and Patent Dispute

July 23, 2010 | Intellectual Property News

BLG, now Lowe Graham Jones, achieved a victory on summary judgment for its client Star Asia USA in a lawsuit filed by Great Neck Saw Manufacturers. In the lawsuit, Great Neck asserted that Star Asia’s folding utility knives sold under the Titan trademark infringed trade dress and patent rights held by Great Neck, in accordance with folding knives sold by Great Neck under the Sheffield, Craftsman, and Husky brands.

The lawsuit was complicated at least in part because Great Neck asserted so many claims against Star Asia. First, Great Neck alleged that Star Asia infringed a utility patent for a folding utility knife that uses a replaceable razor blade. The court agreed with Star Asia that the accused knives were made differently, without infringing the patent.

Second, Great Neck claimed that the Star Asia knife infringed seven different Great Neck design patents. Star Asia was able to establish that there were numerous design attributes in the accused knife that differed from each of the asserted patents, making infringement impossible for Great Neck to prove at trial. Following the recent Supreme Court decision in Egyptian Goddess, the court held that the ordinary purchaser of the knives, giving the degree of attention such a purchaser usually gives, and recognizing the context of the prior art, would not be deceived into thinking that the Star Asia knives are the same as the designs of the Great Neck design patents.

Finally, Great Neck alleged that the Star Asia knife infringed its trade dress. The court agreed with Star Asia that the design of the knife was functional, not aesthetic, and therefore not entitled to trade dress protection at all. Having dismissed all of Great Neck’s claims, the court dismissed the action in favor of Star Asia.