Federal Circuit Clarifies Prosecution History Disclaimer in Design Patents and Reverses Finding of Design Patent and Trademark Infringement

In Top Brand LLC v. Cozy Comfort Co., No. 2024-2191 (Fed. Cir. July 17, 2025), the Federal Circuit reversed denial of motions for judgment as a matter of law (JMOL) and reversed findings of design patent and trademark infringement.

The parties compete in the oversized hooded sweatshirt and blanket markets. A jury found Top Brand infringed Cozy Comfort’s D859,788 design patent and “THE COMFY” trademark. The jury awarded $15.4 million in disgorged profits for patent infringement and $3.08 million in disgorged profits for trademark infringement.

Top Brand moved for JMOL on both issues, arguing prosecution history disclaimer precluded design patent infringement and no substantial evidence supported trademark infringement. The district court denied those motions, and Top Brand appealed.

First, the Federal Circuit held the “principles of prosecution history disclaimer apply to design patents.” The Court found Cozy Comfort surrendered claim scope by arguing certain features of the claimed hoodie design differed from the prior art. Under this construction, the Court applied the ordinary observer test, i.e., whether an ordinary observer familiar with the prior art would find the overall visual impression of the patented and accused designs substantially similar. The Court found the accused products to be within the disclaimed scope because they contained features similar to the prior art. The Court accordingly reversed denial of JMOL and found no design patent infringement.

Next, the Federal Circuit reversed denial of JMOL on trademark infringement, finding that “THE COMFY” is only entitled to weak protection because it is descriptive or highly suggestive of the goods (blanket throws). The Court also noted that Top Brand did not use the full mark “THE COMFY” but instead used “Comfy” in connection with the accused products.  And the Court found insufficient evidence of actual consumer confusion, finding the proffered evidence—Amazon customer questions and answers—either demonstrated no actual confusion or demonstrated insubstantial evidence of confusion and failed to connect any confusion to Top Brand.

The Federal Circuit accordingly found no trademark infringement.