A New York federal district court case highlights the importance of having a unified patent strategy, and coordination between the marketing department and the legal department. This case involved alleged infringement of U.S. Design Patent D596,802, entitled “Foot Micro File.”

Telebrands manufactures and sells the Ped Egg, an oval-shaped foot file used to remove dry skin.

The alleged infringer, Coty, sells a three-piece pedicure set called the Sally Hansen Pedi-Perfect, which includes an oval-shaped foot file.

Coty defended the claim of infringement on the basis that the claimed design was functional and therefore, the design patent was invalid. It provided evidence from a utility patent application for the Ped Egg that contained repeated references to the functionality of the ovoid design. Additionally, Coty pointed to the product packaging  that calls out the ergonomic and convenient shape of the file.

“The Ped Egg is safe and painless – anyone can use it! Its comfortable ergonomic design fits perfectly in the palm of your hand too! Ped Egg is designed to hold all of the filings until you empty it, so you can remove rough, Callused skin absolutely anywhere.”

This case exemplifies the pitfalls of not having a strong and comprehensive protection strategy. Different attorneys probably did not review the files of other patents being filed on the product, or the marketing used to sell the product. Inadvertent phraseology of product advantages can be the death knell of patent protection. Attorneys can offer the best advice when they are familiar with your entire portfolio of patents, and your business goals for the product.

Working with an experienced patent attorney can help your team acquire the strongest possible protection of your products and branding.