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The two styles shown are standard skateboard shapes that have been around for decades (surfboard-shaped and "fishtail"). There's lots of varieties of both these shapes in production everywhere. The routed-out wells shown above the wheels on the underside of the boards are standard for many skateboards, too (for "wheel-bite", to give the wheels more room when the board flexes side to side). The long vertical routed lines may be novel, but aren't in question (please read on).

An attorney for the company associated with these two skateboard design patents seems to be sending cease and desist letters to anyone trying to sell wheels attached to an oblong wooden board. He's essentially going after any small, vulnerable manufacturer making skateboards shaped like skateboards, regardless of any embellishment. The skateboard makers accused of infringing do not carve vertical lines or wells under their boards; they do, however, shape their boards like skateboards. That's the only similarity to these drawings...the shape of the boards, which the patent holder did not, of course, create. What specific aspects of this design patent could this attorney be calling infringed?

This attorney seems to be claiming for his client a design patent for a novel decoration on a common item, and is claiming the exclusive rights to make this common item (with or without the decoration). How does the patent office (or who will) handle patent misapplication/abuse?

Google links to the patents as well...sometimes these are quicker to read:

US Patent - D564613 Skateboard

US Patent - D556283 Longboard

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2 Answers 2

If others do not have the grooves on the sides and these designs do have them, might not that be the most novel part of it? What is patented is the overall look. For a design patent, the groves being functionally pointless is perfect! You have essentially agreed that it is a novel look. Design patents are all about the look.

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"Most novel part of it"... sounds like the test in Egyptian Goddess v. Swisa, 543 F. 3d 665 (Fed. Cir. 2008)? –  Yorick Jan 24 '13 at 3:41
    
The actual proper test is now the overall look, of course. Sorry for the short-hand mention of a "most novel part". I thought it would be a help to the questioner to put it that simplified way. –  George White Jan 24 '13 at 4:03
    
The routed vertical lines might be novel, but that's irrelevant, as there are no carved areas on any of the infringing boards. Overall, they all look like skateboards, but one would mistake any of the infringing boards for those in the patent pictures anymore than you'd mistake Keds for Nikes because they're both foot-shaped. –  Rachel B Jan 24 '13 at 4:53
    
I hope that if the boards that are subject to the letters do not look anything like the drawings in the design patent that this blows over as it apparently should. –  George White Jan 24 '13 at 4:58
    
Thanks, George! The boards are completely different structurally and aesthetically. I honestly think all the companies should just make boards, and the best board will win over the consumers. –  Rachel B Jan 24 '13 at 5:17

In responding to an allegation of infringement, you should probably consult an attorney who works with design patents rather than relying on legal advice from an internet forum.

Applying the wrong test for design patent infringement can lead to trouble. Pacific Coast Marine Windshields Limited v. Malibu Boats, LLC, 6-12-cv-00033 (MDFL January 4, 2013).

An attorney will also advise you at what point you are on notice of the asserted patent, whether the product is marked or not.

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Good answer for someone who themselves gets a letter. –  George White Jan 24 '13 at 3:18
    
A very respected attorney actually looked through the paperwork, and talked to us all for several hours. He pretty much said it was ridiculous...but how to stop the certified letters and Fed Ex packages and harassment!? Getting tired of driving out to sign for a package and find the copies of the very same documents over and over! And the emails! I will never accept a package from Delaware again. –  Rachel B Jan 24 '13 at 5:01
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It should be a striaghtforward matter to resolve this for a "very respected" attorney. Opposing counsel should not be communicating with you directly if you are represented. –  Yorick Jan 24 '13 at 17:03

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