New products require a product designer to address a number of intellectual property concerns. Many people know to seek trademark protection and patent protection, if applicable. However, most remain unaware of the intricacies within patent law and trademark law that can strengthen a portfolio. Larger companies, likely not by chance, tend to turn over every stone when seeking IP protection. One such company, Apple, protected one of its flagship products, the AirPods, in a number of creative ways. For example, Apple obtained trade dress protection for its AirPods product. As a result, U.S. Customs and Border Protection recently seized a competitor’s products at JFK Airport. However, was this the right decision by CBP? Or was this an overstep? Let’s take a look.

A New Challenger Approaches

Chinese company OnePlus has become one of the biggest electronics manufacturers in the world. OnePlus smartphones rival Apple, Samsung, and Google in terms of sales and users, showing that OnePlus successfully broke into a very crowded field. Given the success of the Apple AirPods product, OnePlus decided to make its own wireless earbud product. The OnePlus Buds released earlier this year, and, truthfully, the product closely resembles the AirPods. Even further, the charger case resembles Apple’s charger case designed for use with the AirPods. The question here is whether Apple can do anything about it from an intellectual property standpoint.

IP Protection – Broader = Better

Apple religiously protects its IP, usually from multiple angles. Broader and more widespread IP protection leads to more robust enforcement strategies. As such, looking at the AirPods product, Apple obtained protection via a utility patent, design patents, and trademarks. The trademark portfolio includes trade dress protection, which led to CBP’s seizure of the OnePlus Buds products last week.

Apple AirPods Trade Dress – Functional or Aesthetic?

Setting aside the patent protection for now, trade dress protection is extremely difficult to obtain. According to the Trademark Office, trade dress protects “’the total image and overall appearance’ of a product.”. To obtain trade dress protection, an applicant must prove that its design is purely non-functional and inherently distinctive. Virtually every design includes some sort of functionality; as such, these bars can be difficult to overcome, even for the most popular products.

In 2019, Apple filed for trade dress protection for both its AirPods, as well as the AirPods charger case. As expected, Apple received office actions on both filings, with the Trademark Office seeking further information about the functionality of the designs. The main question posed by the Trademark Office related to utility patent protection sought by Apple.

Apple responded to the office actions by filing a whopping 1,800+ page response in each file. The crux of Apple’s filings related to the non-functionality of its designs. Apple argued that, while a utility patent issued on the AirPods technology, nothing about the design matched the trade dress application. However, is that true?

Apple’s Utility Patent vs. Apple’s AirPods Trade Dress

The AirPods utility patent states that the main body is designed to rest within a user’s ear, typical to any ear bud. However, what makes the AirPods potentially distinctive is the stem, a feature shared by the OnePlus Buds. Interestingly, Apple described at length the benefits of the stem’s shape and orientation in the patent application. First, the stem is elongated such that a user can grasp the stem. In addition, the stem is designed to be oriented in a vertical gravity vector when used. The gravity vector is used within the AirPods to calculate user motion metrics and determine a “state” of the AirPods; the “state” ranges from “static” to “in ear” based on the direction of the stem.

However, the Trademark Office seemingly ignored the functional descriptions of the AirPods product within Apple’s utility patent. Instead, the Trademark Office withdrew its functionality rejections of the AirPods trade dress, and allowed both trademarks to issue. Apple registered its trade dress with CBP, and CBP seized OnePlus’s similar product at JFK Airport. Apple successfully quelled competition in at least this instance.

Did CBP Make the Right Call?

I would argue that Apple’s trade dress is likely too functional to exist; but, Apple swung for the fences and hit a home run. I’d also note that, had OnePlus not included a similar-looking charger case, CBP likely doesn’t seize the products. We’ll have to see how the feud between Apple and its Chinese competitors plays out moving forward. In a different political landscape, this issue might not come up again.