Judge Says EOS Lip Balm Case Should Go to Jury

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Jul 16, 2021

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Lip Balm Design Patent DrawingA federal judge in Colorado refused to grant summary judgement for a competitor in a design patent infringement case involving the popular eos Smooth Sphere lip balm.

The defendant in the case, the Kind Group LLC, is the assignee of US Patent No. D644,939, a design patent for the ornamental design for spherically-shaped lip balm, as shown above.

Eos Products LLC is a wholly-owned subsidiary of Kind Group.

In 2009, the Kind Group began selling the eos Smooth Sphere, based on the design of the ‘939 patent.

The Kind Group also registered a trademark for the Smooth Sphere’s trade dress.

Trade Dress

As discussed in this previous blog, “trade dress” is “the totality of elements in which a product or service is packaged or presented.”

For example, “trade dress” can cover things like:

  • The design of a magazine cover
  • The appearance and décor of a Mexican restaurant chain
  • A method for displaying wine bottles in a wine store
  • The design of a lip balm container

According to the Federal Circuit,

The essential purpose of a trade dress is the same as that of a trademarked word: to identify the source of the product.

The same design can be protected both by trade dress law and under patent law.

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Lip Revolution

The plaintiff in the case, OraLabs, Inc., also makes and distributes cosmetic products.

In 2011, OraLabs developed a product similar to the Smooth Sphere and called it the Chap-Ice Lip Revolution (“Lip Revo”).

On the advice of patent lawyers, the Lip Revo design had three differences as compared to the Smooth Spehere:

  • The Lip Revo’s side wall is circular in contrast to the ’939 Patent, which has a small indentation on one portion of its side wall.
  • The top of the Lip Revo container and the top of the lip balm mound inside the container is flattened, whereas the top of the container 2 and mound of lip balm in the ’939 Patent are rounded.
  • The Lip Revo has three vertical, raised “s”-shaped lines protruding from the side wall of the container that are not present in the ’939 Patent’s design.

Also, the Lip Revo has the word “revo” molded into the bottom of the container.

The Lawsuit

In 2013, OraLabs filed suit, seeking a declaration that its Lip Revo didn’t infringe the ‘939 patent, that the ‘939 patent was invalid, and that the Lip Revo’s trade dress didn’t infringe the Smooth Sphere trade dress.

The Kind Group filed counterclaims for patent infringement, trade dress infringement, and other causes of action.

OraLabs moved for summary judgement, claiming that based on the undisputed facts in the case it was entitled to win as a matter of law.

The court denied the motion, finding that there were issues that needed to be left to a jury:

Without reaching a conclusion on the ultimate question of infringement, the Court agrees with Kind Group that the ’939 Patent and the Lip Revo are not so plainly dissimilar as to justify summary judgment at step one. Although OraLabs notes three differences between the designs, the Court cannot conclude, based on those differences alone, that no reasonable jury could find that the designs are not substantially the same.

The judge also found that the patent was not invalid and that the trade dress was decorative (as opposed to functional).

Unless settled, the case will now proceed to trial.

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