Top Brand LLC v. Cozy Comfort Company LLC decided July 17, 2025

Court: United States Court of Appeals for the Federal Circuit Case Number: 2024-2191 Decided: July 17, 2025 Judge: DYK, Circuit Judge (with REYNA and STARK, Circuit Judges)

I. Executive Summary

This case involves a dispute between Top Brand LLC ("Top Brand") and Cozy Comfort Company LLC ("Cozy Comfort"), competitors in the market for oversized hooded sweatshirts/wearable blankets. Cozy Comfort accused Top Brand of infringing its U.S. Design Patent No. D859,788 (the “D788 patent”) and two trademarks for “THE COMFY.” A jury initially found in favor of Cozy Comfort on both patent and trademark infringement, awarding significant damages. The Federal Circuit reversed the District Court's denial of Judgment as a Matter of Law (JMOL) for Top Brand on both the design patent and trademark infringement claims. The Court held that:

1.    Design Patent Infringement: The principles of prosecution history disclaimer apply to design patents. Cozy Comfort surrendered claim scope during prosecution of the D788 patent by distinguishing its design from prior art based on specific features. The accused Top Brand products fall within the scope of this surrendered subject matter, meaning they do not infringe the properly construed patent.

2.    Trademark Infringement: Cozy Comfort's "THE COMFY" mark is entitled to "weak protection" due to its highly descriptive nature ("comfy" meaning "comfortable"). Furthermore, there was insufficient evidence that Top Brand used "Comfy" as a source identifier rather than a descriptive term. Instances of alleged actual confusion were deemed de minimis and not directly attributable to Top Brand's use of the word.

II. Parties Involved

• Appellants (Plaintiffs/Counter-Defendants-Appellants): Top Brand LLC, Sky Creations LLC, E Star LLC, Flying Star LLC, and John Ngan (sole owner of the companies).

• Business: Sell "hooded sweatshirts and wearable blankets" through Amazon.com and websites like www.tirrinia.net and www.cataloniastore.com under brands like Tirrinia and Catalonia.

• Appellees (Defendant/Counter-Claimant-Appellee): Cozy Comfort Company LLC, Brian Speciale, Michael Speciale (co-founders).

• Business: Sell an oversized "wearable blanket" called "The Comfy."
  

III. Core Legal Issues and Holdings

The appeal centered on two main areas: design patent infringement and trademark infringement.

A. Design Patent Infringement (D859,788 - "Enlarged Over-Garment with an Elevated Marsupial Pocket")

1. Applicability of Prosecution History Disclaimer to Design Patents:  Key Idea: The Court explicitly held that "the principles of prosecution history disclaimer apply to design patents." (p. 2) This means that a patentee can surrender claim scope for a design patent through arguments or amendments made to the Patent and Trademark Office (PTO) during prosecution, just as in utility patents. Quote: "We see no reason to distinguish between disclaimer by amendment and disclaimer by argument and conclude that a patentee may surrender claim scope of a design patent by its representations to the Patent Office during prosecution." (p. 10) * Rationale: To allow a patentee to make arguments in litigation contrary to the representations that secured the patent would be "contrary to the very purpose of design patent prosecution" and would violate the public's right to rely on the inventor's statements. (p. 10)

2. Unambiguous Disavowal of Claim Scope by Cozy Comfort:  Key Idea: Cozy Comfort, to overcome an examiner's rejection based on anticipation by U.S. Patent No. D728,900 ("White"), made specific arguments distinguishing its design. The Court found these arguments constituted an "unambiguous disavowal" of claim scope. (p. 10) Specific Disclaimed Features:  Marsupial Pocket Shape and Placement: Cozy Comfort argued its pocket was "approximately one-third of the width of the torso," unlike White's "roughly 90% of the torso’s width." It also distinguished its "square-like shape" pocket from White's "more angular and trapezoidal pocket." (pp. 14-16) Armscye/Pocket Proportions: Cozy Comfort stated that the "bottoms of the claimed armscyes...were 'actually below the top of the marsupial pocket'," contrasting with White's armscyes which were "well above the top of the marsupial pocket." (p. 16) Bottom Hemline: Cozy Comfort distinguished its "downward[]" sloping bottom hem from White's upward sloping hem. (pp. 17-18) Quote: "In making these arguments, Cozy Comfort surrendered the identified features as supporting a finding of overall similarity." (p. 11)

3. Infringement Analysis under Proper Claim Construction:  Key Idea: Design patents are given "narrow scope." (p. 12) Infringement requires that "to an ordinary observer the accused design and the claimed design are 'substantially the same'," taking into account "any disclaimers during prosecution" and familiar with the prior art. (pp. 12-13) Holding: The Court found that the accused Top Brand products shared the very features that Cozy Comfort had disclaimed during prosecution to distinguish its patent from the White prior art. Quote: "Thus, multiple significant aspects of the accused products are the same ones Cozy Comfort disclaimed during prosecution, and they cannot be relied on to show design similarity between the accused and patented designs." (pp. 18-19) Conclusion: Under the correct construction, "no reasonable jury, viewing the evidence in the light most favorable to Cozy Comfort, could find infringement on the facts of this case." (p. 12) The District Court erred in denying JMOL.

B. Trademark Infringement ("THE COMFY")

1. Standard of Review and Sleekcraft Factors: * Key Idea: The Court applied Ninth Circuit law for trademark infringement, reviewing the jury’s likelihood of confusion determination for "substantial evidence." The "eight-factor test—the so-called Sleekcraft factors" (e.g., strength of mark, similarity of marks, actual confusion) guides this assessment, though not every factor needs to be satisfied. (p. 21)

2. Strength of the Protected Mark:  Key Idea: The Court found "THE COMFY" mark to be "descriptive or highly suggestive" of the goods (blanket throws) and thus "entitled to weak protection." (p. 23) Quote: "Given how descriptive the mark is of the goods at issue (blanket throws), the marks provide weak protection." (p. 24) * Reasoning: The dominant part, "comfy," means "comfortable," making it highly descriptive. Descriptive marks have a narrower scope of protection.

3. Similarity of Marks and Use as a Source Identifier:  Key Idea: Cozy Comfort failed to show Top Brand used "THE COMFY" as a source identifier. Evidence only showed Top Brand used the word "Comfy" in a descriptive context. Evidence: A drop-down menu on a Top Brand-run website (Catalonia) listed "Oversize Hoodie," "Mermaid Tail Blankets," "Comfy," and "Snuggly" under the "Wearable Blanket" heading. (p. 25) Quote: "Mr. Ngan testified that he used “Comfy” in that context to “describe the product, how soft [it is].” Cozy Comfort failed to present evidence to contradict this testimony." (p. 25) Conclusion: The Court found "insufficient evidence from which a reasonable jury could find that the word 'Comfy' was used as a source identifier as opposed to as a descriptor." (p. 26) Removing a descriptive term like "comfy" from the public domain requires showing secondary meaning, which Cozy Comfort did not do. (p. 26)

4. Evidence of Actual Confusion:  Key Idea: Cozy Comfort pointed to Amazon customer comments as evidence of actual confusion (e.g., "is this the real brand ‘comfy’?", with some answers confirming or denying). Holding: The Court found this evidence insufficient to support the jury's verdict. Some answers explicitly stated the product was not "The Comfy" brand. Even if two answers suggested confusion, Cozy Comfort failed to link Top Brand's actions to this confusion, as Top Brand's Amazon listing identified its product as "Tirrinia" and did not use "comfy" to describe it. (p. 27) * Quote: "Even if there were evidence that Top Brand was somehow responsible for the confusion, the question and two answers are not substantial evidence of likelihood of confusion here. See 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:14 (5th ed. May 2025 update) (“Evidence of only a small number of instances of actual confusion can be dismissed as inconsequential or de minimis.”)." (pp. 27-28)

5. Conclusion on Trademark Infringement: * Holding: "No reasonable jury could have found that Cozy Comfort met its burden to prove trademark infringement." (p. 28) The District Court's denial of JMOL was reversed.

IV. Unaddressed Issues

Due to the reversal of the infringement findings, the Court did not reach other issues raised by the parties, including:

• Validity of the D788 patent.

• Alter ego liability of Mr. Ngan for the Top Brand Companies.

• Disgorgement of profits related to both patent and trademark infringement.
  

V. Significance / Impact

• Design Patent Law: This case clarifies that the well-established doctrine of prosecution history disclaimer (both by amendment and argument) applies equally to design patents. This provides important guidance for prosecuting design patents and for litigation, emphasizing that statements made to the PTO can limit the scope of protection.

• Trademark Law: The ruling reinforces the principle that highly descriptive marks receive weaker protection and that merely using a descriptive term related to a product (e.g., "comfy" for a blanket) does not automatically constitute trademark infringement, especially without strong evidence of use as a source identifier or widespread actual confusion attributable to the alleged infringer.

• Burden of Proof: Reaffirms the high bar for upholding jury verdicts on appeal when JMOL is denied, requiring that the evidence, even construed in the light most favorable to the nonmoving party, permits only one reasonable conclusion contrary to the jury's finding.