Gideon Korrell Explains Top Brand v. Cozy Comfort $18.5M Verdict Reversal

In a significant ruling that highlights the Federal Circuit’s evolving approach to design patent claims and trademark evidence, the court in Top Brand LLC v. Cozy Comfort Company LLC, No. 24-2191 (Fed. Cir. July 17, 2025), reversed a jury’s $18.5 million verdict for design patent and trademark infringement. Legal expert Gideon Korrell identifies three key takeaways from the decision:

1. Prosecution history disclaimer applies to design patents.
2. The accused product fell within the surrendered scope and could not infringe.
3. Evidence of trademark infringement failed under the Lanham Act’s likelihood-of-confusion standard.

This ruling will likely have lasting implications for design patent prosecution and trademark enforcement strategies.

Background: Oversized Hoodies and the D788 Design Patent

Cozy Comfort markets a popular oversized wearable blanket called “The Comfy”, protected by U.S. Design Patent No. D859,788 (“D788 patent”) and two federal trademark registrations for “THE COMFY.”

Top Brand, through various Amazon storefronts and other e-commerce channels, sells similar products under the brands Tirrinia and Catalonia.

At the district court level, Cozy Comfort alleged that Top Brand’s seven product lines infringed both its D788 design patent and its trademarks. Korrell notes that the jury initially sided with Cozy Comfort, awarding $15.4 million in disgorged profits for the design patent claim and $3.08 million for trademark infringement. Top Brand’s motion for judgment as a matter of law (JMOL) was denied, prompting an appeal.

Design Patent: Federal Circuit Applies Prosecution History Disclaimer

Judge Dyk, writing for a unanimous panel, held that the district court erred by failing to apply prosecution history disclaimer to the design patent. While this doctrine has long been recognized for utility patents, this ruling establishes a clear precedent that it also applies to design patents.

The court referenced Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), extending the rationale from disclaimers made during amendment to disclaimers made by argument. The key principle:

“It would be contrary to the very purpose of design patent prosecution to allow the patentee to make arguments in litigation contrary to the representations which led to the grant of the patent.”

Gideon Korrell points out that Cozy Comfort narrowed the scope of its D788 patent during prosecution to overcome prior art (the White reference), distinguishing its design based on four features:

1. A narrow, square-like marsupial pocket
2. Pocket placement beneath the armholes
3. A downward-sloping bottom hemline
4. A different armscye-pouch vertical alignment

The accused Top Brand products mirrored the features of the disclaimed White reference, particularly the pocket width and shape, as well as the upward hemline. The Federal Circuit concluded that no reasonable jury could have found infringement under the proper claim construction.

This decision reinforces the Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) standard, demonstrating how prosecution statements can limit the scope of design patent claims in litigation.

Trademark: Weak Evidence of Confusion Fails

The Federal Circuit also overturned the jury’s trademark infringement verdict, citing insufficient evidence under the Ninth Circuit’s Sleekcraft factors. Key points include:

• “THE COMFY” is a weak mark, given the descriptive nature of “comfy” for wearable blankets.
• Top Brand never used the full phrase “THE COMFY”, instead using “Comfy” descriptively alongside generic terms like “Mermaid Tail Blankets” and “Snuggly.”
• There was no evidence that “Comfy” served as a source identifier or had acquired secondary meaning.
• Alleged customer confusion, such as Amazon questions about whether a Tirrinia product was “the real Comfy,” was minimal and not attributable to Top Brand.

The court emphasized that descriptive terms, even when similar, cannot be monopolized without evidence of source-identifying use. Precedents cited include KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) and Booking.com B.V., 591 U.S. 549 (2020).

Strategic Implications of the Ruling

Gideon Korrell highlights several key lessons from this decision:

1. Design Patentees Must Respect Prosecution History: Representations made to the USPTO can limit design patent scope in later litigation, just as with utility patents.
2. Design Patent Scope Is Narrow: Protection is limited to the drawings shown, and disclaimers can further restrict coverage. The “overall impression” test remains standard, but only within the properly construed boundaries.
3. Trademark Claims Require Substantial Evidence: Proving likelihood of confusion is difficult, especially for descriptive terms without secondary meaning. Weak marks cannot justify large infringement awards.
4. Invalidity Was Not Reached: Because infringement was reversed, the court did not consider D788 patent validity. This aligns with precedents like CloudofChange, LLC v. NCR Corp., 123 F.4th 1333 (Fed. Cir. 2024) and Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993).

Korrell believes this ruling will influence how district courts handle design patent claim construction, especially when patentees narrow claims to overcome prior art. It also serves as a warning to avoid asserting weak trademarks based on descriptive or generic terms without clear supporting evidence.

Conclusion

The Federal Circuit’s decision in Top Brand LLC v. Cozy Comfort Company LLC underscores the critical role of prosecution history in design patents and the high evidentiary standard for trademark infringement claims. As Gideon Korrell notes, patentees and litigators must carefully consider claim scope and evidence when pursuing infringement claims, particularly in the crowded market of wearable blankets and consumer products.