Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA764893
`
`Filing date:
`
`08/16/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91199897
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Plaintiff
`Samsung Electronics, Ltd.
`
`MICHAEL T ZELLER
`QUINN EMANUEL URQUHART SULLIVAN LLP
`865 SOUTH FIGUEROA STREET, 10TH FLOOR
`LOS ANGELES, CA 90017-2543
`UNITED STATES
`michaelzeller@quinnemanuel.com, margretcaruso@quinnemanuel.com
`
`Other Motions/Papers
`
`Michael T. Zeller
`
`michaelzeller@quinnemanuel.com, margretcaruso@quinnemanuel.com, jessi-
`carose@quinnemanuel.com, brettarnold@quinnemanuel.com
`
`Signature
`
`Date
`
`/s/ Michael T. Zeller
`
`08/16/2016
`
`Attachments
`
`Opposer - Status Update - 8-16-16.pdf(383157 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application Serial No.: 85041463
`
`
`
`
`
`
`
`
`
`Opposition No. 91199897
`
`
`May 18, 2010
`April 19, 2011
`
`(cid:1)
`
`(cid:1) F
`
`
`iled:
`Date Published:
`
`
`
`SAMSUNG ELECTRONICS CO. LTD.,
`
` Opposer,
`
` Applicant.
`
`
`
`v.
`
`
`APPLE INC.
`
`
`
`
`
`OPPOSER’S STATUS UPDATE AS TO THE CIVIL ACTION
`
`Opposer Samsung Electronics Co. Ltd. (“Opposer”) respectfully submits this status
`
`update as to the civil action that occasioned the suspension of this proceeding, as directed by the
`
`Board’s Order dated August 15, 2016.
`
`
`
`Proceedings in this matter were stayed pending the resolution of Apple, Inc. v. Samsung
`
`Electronics Co., Ltd. et al., Case No. 11-1846, in the United States District Court for the
`
`Northern District of California (the “Civil Action”). On March 6, 2014, the District Court in the
`
`Civil Action issued a final judgment, from which both parties appealed. These appeals were
`
`heard by the United States Court of Appeals for the Federal Circuit under docket numbers 14-
`
`1335 and 14-1368. On May 18, 2015, after briefing and oral argument, the Federal Circuit
`
`
`
`

`

`
`
`issued its decision. A copy of the Court’s Slip Opinion is attached hereto as Exhibit A for the
`
`Board’s convenience. The Federal Circuit held, among other things, that Apple’s asserted
`
`registered and unregistered iPhone trade dresses, which included square icons with rounded
`
`edges, were functional and therefore unprotectable. Slip Op. at 9-17. This ruling of
`
`unprotectability on functionality grounds extended specifically to Apple’s icons (id. at 11, 13,
`
`15-17) – the same element at issue in this Opposition proceeding.
`
`
`
`Although neither Apple nor Samsung has sought further review of the Federal Circuit’s
`
`relevant trade dress rulings, Samsung filed a petition for a writ of certiorari in the U.S. Supreme
`
`Court seeking review of the Federal Circuit’s judgment regarding design patent infringement and
`
`damages. The U.S. Supreme Court granted Samsung’s petition with respect to design patent
`
`damages. See Sup. Ct. Docket No. 15-777. The district court subsequently stayed all
`
`proceedings in the Civil Action pending resolution of matters by the Supreme Court. See Civil
`
`Action, ECF No. 3472 (March 22, 2016 Order). As of this date, briefing in the Supreme Court
`
`continues and the proceedings in the Civil Action are still stayed. Samsung therefore
`
`respectfully suggests that the instant Opposition proceedings remain suspended until all matters
`
`associated with the Civil Action are finally and fully concluded.
`
`Dated: August 16, 2016
`
`Los Angeles, California
`
`
`
`
`
`
`
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`
`
`
`
`/s/ Michael T. Zeller
`By:
`Michael T. Zeller
`michaelzeller@quinnemanuel.com
`865 South Figueroa Street, 10th Floor
`Los Angeles, California 90017-2543
`Phone: (213) 443-3000
`Fax: (213) 443-3100
`
`
`Attorneys For Opposer
`SAMSUNG ELECTRONICS CO., LTD.
`
`
`
`2
`
`

`

`
`
`Certificate of Service
`
`I hereby certify that a true and correct copy of the foregoing Opposer’s Status Update As
`
`To The Civil Action has been duly served by mailing such a copy first class, postage paid to
`Glenn A. Gunderson, Dechert LLP, Cira Centre, 2929 Arch Street, Philadelphia, PA 19104-2808
`on August 16, 2016.
`
`
`
`3
`
`

`

`
`
`Exhibit A
`Exhibit A
`
`

`

`Case: 14-1335 Document: 158-2 Page: 1 Filed: 05/18/2015
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC., a California corporation,
`Plaintiff-Appellee
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`a Korean corporation,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`a New York corporation,
`SAMSUNG TELECOMMUNICATIONS AMERICA,
`LLC, a Delaware limited liability company,
`Defendants-Appellants
`______________________
`
`2014-1335, 2015-1029
`______________________
`
`Appeals from the United States District Court for the
`Northern District of California in No. 5:11-cv-01846,
`Judge Lucy H. Koh.
`______________________
`
`Decided: May 18, 2015
`______________________
`
`WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
`Dorr LLP, Boston, MA, argued for plaintiff-appellee. Also
`represented by ANDREW J. DANFORD, MARK CHRISTOPHER
`FLEMING, ERIC FLETCHER, LAUREN B. FLETCHER, SARAH R.
`FRAZIER, KEVIN SCOTT PRUSSIA; JAMES QUARLES, III, MARK
`D. SELWYN, THOMAS GREGORY SPRANKLING, Washington,
`DC; RACHEL KREVANS, CHRISTOPHER ROBINSON,
`
`

`

`Case: 14-1335 Document: 158-2 Page: 2 Filed: 05/18/2015
`
`
`
` 2
`
` APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`NATHANIEL BRYAN SABRI, RUTH N. BORENSTEIN, Morrison
`& Foerster LLP, San Francisco, CA.
`
`KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
`Sullivan, LLP, New York, NY, argued for defendants-
`appellants. Also represented by WILLIAM ADAMS; ROBERT
`JASON BECHER, SUSAN RACHEL ESTRICH, B. DYLAN
`PROCTOR, MICHAEL THOMAS ZELLER, Los Angeles, CA;
`VICTORIA FISHMAN MAROULIS, Redwood Shores, CA;
`KEVIN ALEXANDER SMITH, San Francisco, CA.
`
`ERIK SCOTT JAFFE, Erik S. Jaffe, P.C., Washington,
`DC, for amicus curiae Hispanic Leadership Fund.
`
`TIM DELANEY, Brinks Gilson & Lione, Chicago, IL, for
`amicus curiae National Grange of the Order of the Pa-
`trons of Husbandry. Also represented by LAURA A.
`LYDIGSEN.
`
`MARK A. LEMLEY, Durie Tangri LLP, San Francisco,
`CA, for amici curiae David Abrams, Sarah Burstein,
`Michael A. Carrier, Bernard Chao, Andrew Chin, Ralph
`D. Clifford, Jorge Contreras, Thomas Cotter, Robin Feld-
`man, William Gallagher, Jon M. Garon, Shubha Ghosh,
`Amy Landers, Mark A. Lemley, Oskar Liivak, Brian J.
`Love, Jonathan Masur, Stephen McJohn, Mark P.
`McKenna, Tyler T. Ochoa, Michael Risch, Jason Michael
`Schultz, Lea Shaver, Jessica Silbey, Katherine J. Strand-
`burg, Rebecca Tushnet, Ryan Vacca.
`
`JOSEPH CARL CECERE, JR., Cecere PC, Dallas, TX, for
`amicus curiae The National Black Chamber of Commerce.
`
`MATTHEW SCHRUERS, Computer & Communications
`Industry Association, Washington, DC, for amicus curiae
`Computer & Communications Industry Association.
`
`
`

`

`Case: 14-1335 Document: 158-2 Page: 3 Filed: 05/18/2015
`
`APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`3
`
`MARK DAVID JANIS, Indiana University Maurer School
`of Law, Bloomington, IN, for amici curiae Jason J. Du
`Mont, Mark David Janis.
`
`PERRY J. SAIDMAN, Saidman DesignLaw Group, Silver
`Spring, MD, for amici curiae Design Ideas, Ltd., Novo
`Nordisk Inc., Lutron Electronics, Inc., Nuvasive, Inc.,
`Method Products, PBC, Oakley, Inc., Deckers Outdoor
`Corporation, Kohler Company.
`
`JOEL SAYRES, Faegre Baker Daniels LLP, Denver, CO,
`for amicus curiae Crocs, Inc.
`
`BRIAN BUROKER, Gibson, Dunn & Crutcher LLP,
`Washington, DC, for amici curiae Michael McCoy, Steven
`Carl Visser, Lorraine Justice, Jim Agutter, Prasad
`Boradkar, James G. Budd, Rama Chorpash, Gregory
`Bryant Darby, Ed Dorsa, Tom Gattis, Allan Hastings,
`James Kaufman, Brook Kennedy, Haig Khachatoorian,
`Carol Joan Lasch, Thornton Lothrop, Tom Matano,
`George L. McCain, Zhenyu Cheryl Qian, Lance G. Rake,
`James Morley Read, Kevin Reeder, Jinseup Shin, aka Ted
`Shin, Bruce M. Tharp, Gregory Thomas, Richard Wilfred
`Yelle. Also represented by HOWARD S. HOGAN, MARK
`ANDREW PERRY, SARAH SLADIC, LUCAS C. TOWNSEND;
`THEODORE J. BOUTROUS, JR., Los Angeles, CA; HERVEY
`MARK LYON, Palo Alto, CA.
`
`MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP,
`Washington, DC, for amici curiae Charles L. Mauro,
`James Douglas Alsup, Jr., Charles Austen Angell, Daniel
`W. Ashcraft, Joseph M. Ballay, Alex Bally, Michelle S.
`Berryman, Eric Beyer, Robert Ian Blaich, Gordon Paul
`Bruce, Robert Brunner, William Bullock, Bruce Claxton,
`Del Coates, Robert J. Cohn, James Couch, George Russell
`Daniels, Mark Dziersk, John Edson, Gerard Furbershaw,
`Carroll Gantz, John Leavitt Gard, Michael Garten, Don-
`ald M. Genaro, Betsy Goodrich, Stephen G. Hauser,
`
`

`

`Case: 14-1335 Document: 158-2 Page: 4 Filed: 05/18/2015
`
`
`
` 4
`
` APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`James J. Lesko, Scott David Mason, Patricia Moore, Louis
`Nelson, Christopher J. Parke, Nancy Perkins, Gordon
`Perry, Samuel B. Petre, Dale Raymond, Raymond W.
`Riley, Brian Roderman, Bryce G. Rutter, Andrew Serb-
`inski, Ritasue Siegel, Paul Specht, Budd Steinhilber, John
`V. Stram, Kerstin Nelsen Strom, Mathieu Turpault, Gary
`Van Deursen, Frank Von Holzhausen, Sohrab Vossoughi,
`Arnold Wasserman, Allan E. Weaver, Edmund A. Weaver,
`Robert Welsh, Stephen B. Wilcox, Angela Yeh. Also repre-
`sented by KATHERINE M. KOPP; RACHEL WAINER APTER,
`New York, NY; WILL MELEHANI, Irvine, CA.
`______________________
`
`
`
`Before PROST, Chief Judge, O’MALLEY and CHEN, Circuit
`Judges.
`
`PROST, Chief Judge.
`
`Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., Samsung Telecommunications America,
`LLC (collectively, “Samsung”) appeal from a final judg-
`ment of the U.S. District Court for the Northern District
`of California in favor of Apple Inc. (“Apple”).
`
`A jury found that Samsung infringed Apple’s design
`and utility patents and diluted Apple’s trade dresses. For
`the reasons that follow, we affirm the jury’s verdict on the
`design patent infringements, the validity of two utility
`patent claims, and the damages awarded for the design
`and utility patent infringements appealed by Samsung.
`However, we reverse the jury’s findings that the asserted
`trade dresses are protectable. We therefore vacate the
`jury’s damages awards against the Samsung products
`that were found liable for trade dress dilution and remand
`for further proceedings consistent with this opinion.
`
`BACKGROUND
`
`Apple sued Samsung in April 2011. On August 24,
`2012, the first jury reached a verdict that numerous
`
`

`

`Case: 14-1335 Document: 158-2 Page: 5 Filed: 05/18/2015
`
`APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`5
`
`Samsung smartphones infringed and diluted Apple’s
`patents and trade dresses in various combinations and
`awarded over $1 billion in damages.
`
`The infringed design patents are U.S. Design Patent
`Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 pa-
`tent”), and D604,305 (“D’305 patent”), which claim certain
`design elements embodied in Apple’s iPhone. The in-
`fringed utility patents are U.S. Patent Nos. 7,469,381
`(“’381 patent”), 7,844,915 (“’915 patent”), and 7,864,163
`(“’163 patent”), which claim certain features in the iPh-
`one’s user interface. The diluted trade dresses are
`Trademark Registration No. 3,470,983 (“’983 trade dress”)
`and an unregistered trade dress defined in terms of
`certain elements in the configuration of the iPhone.
`
`Following the first jury trial, the district court upheld
`the jury’s infringement, dilution, and validity findings
`over Samsung’s post-trial motion. The district court also
`upheld $639,403,248 in damages, but ordered a partial
`retrial on the remainder of the damages because they had
`been awarded for a period when Samsung lacked notice of
`some of the asserted patents. The jury in the partial
`retrial on damages awarded Apple $290,456,793, which
`the district court upheld over Samsung’s second post-trial
`motion. On March 6, 2014, the district court entered a
`final judgment in favor of Apple, and Samsung filed a
`notice of appeal. We have jurisdiction under 28 U.S.C.
`§ 1295(a)(1).
`
`DISCUSSION
`
`We review the denial of Samsung’s post-trial motions
`under the Ninth Circuit’s procedural standards. See
`Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d
`1358, 1370-71 (Fed. Cir. 2009). The Ninth Circuit reviews
`de novo a denial of a motion for judgment as a matter of
`law. Id. “The test is whether the evidence, construed in
`the light most favorable to the nonmoving party, permits
`only one reasonable conclusion, and that conclusion is
`
`

`

`Case: 14-1335 Document: 158-2 Page: 6 Filed: 05/18/2015
`
`
`
` 6
`
` APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`contrary to that of the jury.” Id. (citing Theme Promo-
`tions, Inc. v. News Am. Mktg. FSI, 546 F.3d 991, 999 (9th
`Cir. 2008)).
`
`The Ninth Circuit reviews a denial of a motion for a
`new trial for an abuse of discretion. Revolution Eyewear,
`563 F.3d at 1372. “In evaluating jury instructions, preju-
`dicial error results when, looking to the instructions as a
`whole, the substance of the applicable law was [not] fairly
`and correctly covered.” Gantt v. City of Los Angeles, 717
`F.3d 702, 707 (9th Cir. 2013) (quoting Swinton v. Potomac
`Corp., 270 F.3d 794, 802 (9th Cir. 2001)) (alteration in
`original). The Ninth Circuit orders a new trial based on
`jury instruction error only if the error was prejudicial. Id.
`A motion for a new trial based on insufficiency of evidence
`may be granted “only if the verdict is against the great
`weight of the evidence, or it is quite clear that the jury
`has reached a seriously erroneous result.” Incalza v.
`Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007)
`(internal quotation marks omitted).
`
`Samsung appeals numerous legal and evidentiary ba-
`ses for the liability findings and damages awards in the
`three categories of intellectual property asserted by
`Apple: trade dresses, design patents, and utility patents.
`We address each category in turn.
`
`I. Trade Dresses
`
`The jury found Samsung liable for the likely dilution
`of Apple’s iPhone trade dresses under the Lanham Act.
`When reviewing Lanham Act claims, we look to the law of
`the regional circuit where the district court sits. ERBE
`Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d
`1278, 1287 (Fed. Cir. 2010). We therefore apply Ninth
`Circuit law.
`
`The Ninth Circuit has explained that “[t]rade dress is
`the totality of elements in which a product or service is
`packaged or presented.” Stephen W. Boney, Inc. v. Boney
`
`

`

`Case: 14-1335 Document: 158-2 Page: 7 Filed: 05/18/2015
`
`APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`7
`
`Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). The essen-
`tial purpose of a trade dress is the same as that of a
`trademarked word: to identify the source of the product. 1
`McCarthy on Trademarks and Unfair Competition § 8:1
`(4th ed.) (“[L]ike a word asserted to be a trademark, the
`elements making up the alleged trade dress must have
`been used in such a manner as to denote product
`source.”). In this respect, “protection for trade dress
`exists to promote competition.” TrafFix Devices, Inc. v.
`Mktg. Displays, Inc., 532 U.S. 23, 28 (2001).
`
`The protection for source identification, however,
`must be balanced against “a fundamental right to compete
`through imitation of a competitor’s product . . . .” Leath-
`erman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d
`1009, 1011-12 (9th Cir. 1999). This “right can only be
`temporarily denied by the patent or copyright laws.” Id.
`In contrast, trademark law allows for a perpetual monop-
`oly and its use in the protection of “physical details and
`design of a product” must be limited to those that are
`“nonfunctional.” Id. at 1011-12; see also Qualitex Co. v.
`Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995) (“If a
`product’s functional features could be used as trademarks,
`however, a monopoly over such features could be obtained
`without regard to whether they qualify as patents and
`could be extended forever (because trademarks may be
`renewed in perpetuity).”). Thus, it is necessary for us to
`determine first whether Apple’s asserted trade dresses,
`claiming elements from its iPhone product, are non-
`functional and therefore protectable.
`
`“In general terms, a product feature is functional if it
`is essential to the use or purpose of the article or if it
`affects the cost or quality of the article.” Inwood Labs.,
`Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). “A
`product feature need only have some utilitarian ad-
`vantage to be considered functional.” Disc Golf Ass’n v.
`Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir.
`1998). A trade dress, taken as a whole, is functional if it
`
`

`

`Case: 14-1335 Document: 158-2 Page: 8 Filed: 05/18/2015
`
`
`
` 8
`
` APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`is “in its particular shape because it works better in this
`shape.” Leatherman, 199 F.3d at 1013.
`
`“[C]ourts have noted that it is, and should be, more
`difficult to claim product configuration trade dress than
`other forms of trade dress.” Id. at 1012-13 (discussing
`cases). Accordingly, the Supreme Court and the Ninth
`Circuit have repeatedly found product configuration trade
`dresses functional and therefore non-protectable. See,
`e.g., TrafFix, 532 U.S. at 26-27, 35 (reversing the Sixth
`Circuit’s reversal of the district court’s grant of summary
`judgment that a trade dress on a dual-spring design for
`temporary road sign stands was functional); Secalt S.A. v.
`Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 687 (9th Cir.
`2012) (affirming summary judgment that a trade dress on
`a hoist design was functional); Disc Golf, 158 F.3d at 1006
`(affirming summary judgment that a trade dress on a disc
`entrapment design was functional).
`
`Moreover, federal trademark registrations have been
`found insufficient to save product configuration trade
`dresses from conclusions of functionality. See, e.g., Talk-
`ing Rain Beverage Co. v. S. Beach Beverage, 349 F.3d 601,
`602 (9th Cir. 2003) (affirming summary judgment that
`registered trade dress covering a bottle design with a grip
`handle was functional); Tie Tech, Inc. v. Kinedyne Corp.,
`296 F.3d 778, 782-83 (9th Cir. 2002) (affirming summary
`judgment that registered trade dress covering a handheld
`cutter design was functional). The Ninth Circuit has even
`reversed a jury verdict of non-functionality of a product
`configuration trade dress. See Leatherman, 199 F.3d at
`1013 (reversing jury verdict that a trade dress on the
`overall appearance of a pocket tool was non-functional).
`Apple conceded during oral argument that it had not cited
`a single Ninth Circuit case that found a product configu-
`ration trade dress to be non-functional. Oral Arg. 49:06-
`30,
`http://www.cafc.uscourts.gov/oral-
`at
`available
`argument-recordings/14-1335/all.
`
`

`

`Case: 14-1335 Document: 158-2 Page: 9 Filed: 05/18/2015
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`APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`9
`
`The Ninth Circuit’s high bar for non-functionality
`frames our review of the two iPhone trade dresses on
`appeal. While the parties argue without distinguishing
`the two trade dresses, the unregistered trade dress and
`the registered ’983 trade dress claim different details and
`are afforded different evidentiary presumptions under the
`Lanham Act. We analyze the two trade dresses separate-
`ly below.
`
`A. Unregistered Trade Dress
`
`Apple claims elements from its iPhone 3G and 3GS
`products to define the asserted unregistered trade dress:
`
`a rectangular product with four evenly rounded
`corners;
`
`a flat, clear surface covering the front of the prod-
`uct;
`
`a display screen under the clear surface;
`
`substantial black borders above and below the
`display screen and narrower black borders on ei-
`ther side of the screen; and
`
`when the device is on, a row of small dots on the
`display screen, a matrix of colorful square icons
`with evenly rounded corners within the display
`screen, and an unchanging bottom dock of colorful
`square icons with evenly rounded corners set off
`from the display’s other icons.
`
`Appellee’s Br. 10-11. As this trade dress is not registered
`on the principal federal trademark register, Apple “has
`the burden of proving that the claimed trade dress, taken
`as a whole, is not functional . . . .” See 15 U.S.C.
`§ 1125(c)(4)(A).
`
`Apple argues that the unregistered trade dress is non-
`functional under each of the Disc Golf factors that the
`Ninth Circuit uses to analyze functionality: “(1) whether
`
`

`

`Case: 14-1335 Document: 158-2 Page: 10 Filed: 05/18/2015
`
`
`
` 10
`
` APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`the design yields a utilitarian advantage, (2) whether
`alternative designs are available, (3) whether advertising
`touts the utilitarian advantages of the design, and
`(4) whether the particular design results from a compara-
`tively simple or inexpensive method of manufacture.” See
`Disc Golf, 158 F.3d at 1006. However, the Supreme Court
`has more recently held that “a feature is also functional
`. . . when it affects the cost or quality of the device.” See
`TrafFix, 532 U.S. at 33. The Supreme Court’s holding
`was recognized by the Ninth Circuit as “short circuiting
`some of the Disc Golf factors.” Secalt, 668 F.3d at 686-87.
`Nevertheless, we explore Apple’s contentions on each of
`the Disc Golf factors and conclude that there was insuffi-
`cient evidence to support a jury finding in favor of non-
`functionality on any factor.
`
`1. Utilitarian Advantage
`
`Apple argues that “the iPhone’s physical design did
`not ‘contribute unusually . . . to the usability’ of the de-
`vice.” Appellee’s Br. 61 (quoting J.A. 41095:11-12) (alter-
`ation in original). Apple further contends that the
`unregistered trade dress was “developed . . . not for ‘supe-
`rior performance.’” Id. at 62 n.18. Neither “unusual
`usability” nor “superior performance,” however, is the
`standard used by the Ninth Circuit to determine whether
`there is any utilitarian advantage. The Ninth Circuit
`“has never held, as [plaintiff] suggests, that the product
`feature must provide superior utilitarian advantages. To
`the contrary, [the Ninth Circuit] has suggested that in
`order to establish nonfunctionality the party with the
`burden must demonstrate that the product feature serves
`no purpose other than identification.” Disc Golf, 158 F.3d
`at 1007 (internal quotation marks omitted).
`
`The requirement that the unregistered trade dress
`“serves no purpose other than identification” cannot be
`reasonably inferred from the evidence. Apple emphasizes
`a single aspect of its design, beauty, to imply the lack of
`
`

`

`Case: 14-1335 Document: 158-2 Page: 11 Filed: 05/18/2015
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`APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
`
`11
`
`other advantages. But the evidence showed that the
`iPhone’s design pursued more than just beauty. Specifi-
`cally, Apple’s executive testified that the theme for the
`design of the iPhone was:
`
`to create a new breakthrough design for a phone
`that was beautiful and simple and easy to use and
`created a beautiful, smooth surface that had a
`touchscreen and went right to the rim with the
`bezel around it and looking for a look that we
`found was beautiful and easy to use and appeal-
`ing.
`
`J.A. 40722-23 (emphases added).
`
`Moreover, Samsung cites extensive evidence in the
`record that showed the usability function of every single
`element in the unregistered trade dress. For example,
`rounded corners improve “pocketability” and “durability”
`and rectangular shape maximizes the display that can be
`accommodated. J.A. 40869-70; J.A. 42612-13. A flat clear
`surface on the front of the phone facilitates touch opera-
`tion by fingers over a large display. J.A. 42616-17. The
`bezel protects the glass from impact when the phone is
`dropped. J.A. 40495. The borders around the display are
`sized to accommodate other components while minimizing
`the overall product dimensions. J.A. 40872. The row of
`dots in the user interface indicates multiple pages of
`application screens that are available. J.A. 41452-53.
`The icons allow users to differentiate the applications
`available to the users and the bottom dock of unchanging
`icons allows for quick access to the most commonly used
`applications. J.A. 42560-61; J.A. 40869-70. Apple rebuts
`none of this evidence.
`
`Apple conceded during oral argument that its trade
`dress “improved the quality [of the iPhone] in some re-
`spects.” Oral Arg. 56:09-17. It is thus clear that the
`unregistered trade dress has a utilitarian advantage. See
`Disc Golf, 158 F.3d at 1007.
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`2. Alternative Designs
`
`The next factor requires that purported alternative
`designs “offer exactly the same features” as the asserted
`trade dress in order to show non-functionality. Tie Tech,
`296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-
`14). A manufacturer “does not have rights under trade
`dress law to compel its competitors to resort to alternative
`designs which have a different set of advantages and
`disadvantages.” Id.
`
`Apple, while asserting that there were “numerous al-
`ternative designs,” fails to show that any of these alterna-
`tives offered exactly the same features as the asserted
`trade dress. Appellee’s Br. 62. Apple simply catalogs the
`mere existence of other design possibilities embodied in
`rejected iPhone prototypes and other manufacturers’
`smartphones. The “mere existence” of other designs,
`however, does not prove that the unregistered trade dress
`is non-functional. See Talking Rain, 349 F.3d at 604.
`
`3. Advertising of Utilitarian Advantages
`
`“If a seller advertises the utilitarian advantages of a
`particular feature, this constitutes strong evidence of
`functionality.” Disc Golf, 158 F.3d at 1009. An “infer-
`ence” of a product feature’s utility in the plaintiff’s adver-
`tisement is enough to weigh in favor of functionality of a
`trade dress encompassing that feature. Id.
`
`Apple argues that its advertising was “[f]ar from tout-
`ing any utilitarian advantage of the iPhone design . . . .”
`Appellee’s Br. 60. Apple relies on its executive’s testimo-
`ny that an iPhone advertisement, portraying “the distinc-
`tive design very clearly,” was based on Apple’s “product as
`hero” approach. Id. (quoting J.A. 40641-42; 40644:22).
`The “product as hero” approach refers to Apple’s stylistic
`choice of making “the product the biggest, clearest, most
`obvious thing in [its] advertisements, often at the expense
`of anything else around it, to remove all the other ele-
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`13
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`ments of communication so [the viewer] see[s] the product
`most predominantly in the marketing.” J.A. 40641-42.
`
`Apple’s arguments focusing on its stylistic choice,
`however, fail to address the substance of its advertise-
`ments. The substance of the iPhone advertisement relied
`upon by Apple gave viewers “the ability to see a bit about
`how it might work,” for example, “how flicking and scroll-
`ing and tapping and all these multitouch ideas simply
`[sic].” J.A. 40644:23-40645:2. Another advertisement
`cited by Apple similarly displayed
`the message,
`“[t]ouching is believing,” under a picture showing a user’s
`hand interacting with the graphical user interface of an
`iPhone. J.A. 24896. Apple fails to show that, on the
`substance, these demonstrations of the user interface on
`iPhone’s touch screen involved the elements claimed in
`Apple’s unregistered trade dress and why they were not
`touting the utilitarian advantage of the unregistered
`trade dress.
`
`4. Method of Manufacture
`
`The fourth factor considers whether a functional bene-
`fit in the asserted trade dress arises from “economies in
`manufacture or use,” such as being “relatively simple or
`inexpensive to manufacture.” Disc Golf, 158 F.3d at 1009.
`
`Apple contends that “[t]he iPhone design did not re-
`sult from a ‘comparatively simple or inexpensive method
`of manufacture’” because Apple experienced manufactur-
`ing challenges. Appellee’s Br. 61 (quoting Talking Rain,
`349 F.3d at 603). Apple’s manufacturing challenges,
`however, resulted from the durability considerations for
`the iPhone and not from the design of the unregistered
`trade dress. According to Apple’s witnesses, difficulties
`resulted from its choices of materials in using “hardened
`steel”; “very high, high grade of steel”; and, “glass that
`was not breakable enough, scratch resistant enough.” Id.
`(quoting J.A. 40495-96, 41097). These materials were
`chosen, for example, for the iPhone to survive a drop:
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`If you drop this, you don't have to worry about the
`ground hitting the glass. You have to worry about
`the band of steel surrounding the glass hitting the
`glass. . . . In order to, to make it work, we had to
`use very high, high grade of steel because we
`couldn’t have it sort of deflecting into the glass.
`
`J.A. 40495-96. The durability advantages that resulted
`from the manufacturing challenges, however, are outside
`the scope of what Apple defines as its unregistered trade
`dress. For the design elements that comprise Apple’s
`unregistered trade dress, Apple points to no evidence in
`the record to show they were not relatively simple or
`inexpensive to manufacture. See Disc Golf, 158 F.3d at
`1009 (“[Plaintiff], which has the burden of proof, offered
`no evidence that the [asserted] design was not relatively
`simple or inexpensive to manufacture.”).
`
`In sum, Apple has failed to show that there was sub-
`stantial evidence in the record to support a jury finding in
`favor of non-functionality for the unregistered trade dress
`on any of the Disc Golf factors. Apple fails to rebut the
`evidence that the elements in the unregistered trade
`dress serve the functional purpose of improving usability.
`Rather, Apple focuses on the “beauty” of its design, even
`though Apple pursued both “beauty” and functionality in
`the design of the iPhone. We therefore reverse the dis-
`trict court’s denial of Samsung’s motion for judgment as a
`matter of law that the unregistered trade dress is func-
`tional and therefore not protectable.
`
`B. The Registered ’983 Trade Dress
`
`In contrast to the unregistered trade dress, the ’983
`trade dress is a federally registered trademark. The
`federal trademark registration provides “prima facie
`evidence” of non-functionality. Tie Tech, 296 F.3d at 782-
`83. This presumption “shift[s] the burden of production to
`the defendant . . . to provide evidence of functionality.”
`Id. at 783. Once this presumption is overcome, the regis-
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`tration loses its legal significance on the issue of function-
`ality. Id. (“In the face of sufficient and undisputed facts
`demonstrating functionality, . . . the registration loses its
`evidentiary significance.”).
`
`The ’983 trade dress claims the design details in each
`of the sixteen icons on the iPhone’s home screen framed
`by the iPhone’s rounded-rectangular shape with silver
`edges and a black background:
`
`The first icon depicts the letters “SMS” in green
`inside a white speech bubble on a green back-
`ground;
`
`. . .
`
`the seventh icon depicts a map with yellow and
`orange roads, a pin with a red head, and a red-
`and-blue road sign with the numeral “280” in
`white;
`
`. . .
`
`the sixteenth icon depicts the distinctive configu-
`ration of applicant’s media player device in white
`over an orange background.
`
`’983 trade dress (omitting thirteen other icon design
`details for brevity).
`
`It is clear that individual elements claimed by the
`’983 trade dress are functional. For example, there is no
`dispute that the claimed details such as “the seventh icon
`depicts a map with yellow and orange roads, a pin with a
`red head, and a red-and-blue road sign with the numeral
`‘280’ in white” are functional. See id. Apple’s user inter-
`face expert testified on how icon designs promote usabil-
`ity. This expert agreed that “the who