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Introduction
The fourth Graham factor applies to design patents. LKQ v. GM, 102 F.4th 1280, 1296, 1299-1300 (Fed. Cir. 2024) (en banc). The court named commercial success, industry praise, and copying, and said it was not deciding whether long-felt need and failure of others apply to designs. Two years later the factor appears in nearly every design obviousness exchange and is used in almost none. This article examines 113 file wrappers in which the words appear. In 95 the factor is recited and nothing is offered under it. In 14 an applicant or examiner raised it without evidence. In 4 an applicant put evidence in the record. Two examiners credited it. The article describes those files, explains why the factor is not being used, and suggests what a practitioner who wants to use it should do.
1. What the Court Decided and What It Left Open
The en banc court held that the Graham framework governs design patent obviousness, including the fourth factor. It wrote that secondary considerations such as commercial success, industry praise, and copying may be relevant to whether a design would have been obvious. 102 F.4th at 1299-1300. It said the applicability of other factors, such as long-felt but unsolved need and failure of others, was unclear in the design context and left the question open. Id. The May 22, 2024 memorandum repeated the list and the open question. It gave examiners no new instruction on how to evaluate the evidence.
The instruction that exists is older. MPEP 1504.03(III) tells examiners that when evidence of commercial success is submitted, they must determine whether there is objective evidence of success and whether the success is attributable to the ornamental design, citing Litton Systems v. Whirlpool, 728 F.2d 1423 (Fed. Cir. 1984), and In re Nalbandian, 661 F.2d 1214 (CCPA 1981). It says that more than the fact of copying is needed, citing Cable Electric Products v. Genmark, 770 F.2d 1015 (Fed. Cir. 1985). MPEP 716.01(c) says that attorney argument is not evidence and that assertions of success or copying must be supported by a declaration or other proof. None of that changed with LKQ.
2. The Record
The corpus is 113 file wrappers of design applications that issued between August 1, 2024 and September 20, 2026, retrieved with the ProSearch query “obvious to a designer of ordinary skill” AND (“secondary considerations” OR “objective indicia” OR “objective evidence” OR “commercial success” OR “industry praise” OR “long-felt” OR “long felt” OR “nexus”). The first phrase is examiner form language for a design obviousness rejection. The others are the words either side uses when the fourth factor is in play. Adding “copying,” “copied,” and “Rule 132” to the query raises the count to 190, but the additional files are mostly declarations filed for other purposes, and copying arguments made as a secondary consideration almost always use one of the primary terms. The 113 were read and classified. Fifty-three are also in the 171-file corpus used in the companion article on the reason to combine, and 20 are in the 84-file corpus on analogous art.
The corpus is drawn from issued patents. Applications abandoned after the argument failed are not in it. For this topic the limit matters less than for the others, because the argument was rarely made and, where made, rarely decided anything.
Figure 1. What the 113 files contain.
3. The Recital
In 95 of the 113 files the fourth factor appears only in boilerplate. On the examiner’s side it is the recital of the Graham factors, ending with “secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc.” On the applicant’s side it is the four-factor LKQ framework copied into the statement of the law, with factor four listed as “commercial success, industry praise, and copying.” Thirty files cite LKQ for the proposition that secondary considerations apply to designs. Almost all of those citations are in the recital. The response then argues factors one through three and stops.
Several applicants said in terms that they were stopping. In 29/866,534 the applicant wrote that secondary considerations “are not required, as Factors one through three establish the non-obviousness.” In 29/950,635 and 29/981,824, companion applications for a nasal strip, the applicant began to describe its commercial products under factor four and then stated that “in view of the strength of its other arguments set forth here, Applicant is not presently advancing and relying upon any secondary indicia/secondary considerations evidence.” In 29/973,160 a heading reading “Secondary Considerations Support Patentability” was followed by the sentence that the design “represents a distinctive and appealing aesthetic that merits design patent protection,” and nothing else.
Two applicants turned the factor into a complaint about the rejection. In 29/872,437 the applicant argued that the Office had not carried its burden because the action contained no consideration of secondary considerations. In 29/895,792 the applicant faulted the rejection for not addressing potential industry praise or commercial adoption while stating it was “not submitting affirmative evidence at this time.” The examiner answered: “Secondary considerations of evidence of nonobviousness may be present at the time a prima facie case of obviousness is evaluated or it may be presented in rebuttal of a prior obviousness rejection. There is no mandate that requires secondary considerations when issuing a Non-Final Office Action,” citing MRC Innovations v. Hunter Manufacturing, 747 F.3d 1326, 1335-36 (Fed. Cir. 2014), and Crocs v. ITC, 598 F.3d 1294, 1310 (Fed. Cir. 2010). That answer is correct. The factor is the applicant’s to prove.
Three applicants asserted a consideration without evidence. In 29/870,778 the applicant stated that a pillow had achieved “significant commercial success” attributable to its inwardly sloped upper surface. In 29/992,406 the applicant argued that the two references had “coexisted in the prior art for over twenty-five years” without any designer combining them, citing Graham and Leo Pharmaceutical v. Rea, 726 F.3d 1346 (Fed. Cir. 2013). In 29/956,279 the applicant described market welcome, consumer feedback, and imitation of a pet bed. No examiner addressed any of the three. The pillow and the pet bed were allowed on other grounds and the toy ball on visual differences.
4. The Four Files With Evidence
Figure 2. The four files in which an applicant submitted evidence under the fourth factor.
The first is 29/783,708, an adhesive mouth tape. The applicant filed a Rule 132 declaration of the company’s founder with exhibits: a Goop.com screenshot showing the product as a “Bestseller,” People and Cosmopolitan articles naming it “Best Overall” among mouth tapes, a screenshot of a later product said to copy the design together with the copier’s email inquiry, and a survey of other mouth tape designs on the market. The declaration argued nexus: “There is a clear nexus between the evidence of success, praise, and copying and the ornamental features of the design, particularly the versatility in being able to place the product either horizontally or vertically on the face per the user’s preference.” The examiner withdrew the rejection after LKQ on two grounds. The first was that the references were not analogous. The second: “The Examiner finds the additional evidence (accompanying declaration and exhibits most notably outlining commercial success and copying of the claimed design) to be supportive of the overall position of nonobviousness.” No unit or revenue figures were in the record. The examiner did not analyze nexus or ask whether the success was commensurate with the claim.
The second is 29/945,139, a collapsible bin. The applicant embedded in its remarks images of its own Amazon listing and of a “copycat” product from a Chinese supplier that appeared six months later, and asserted commercial success without figures, adding that “[f]urther details can be provided in the formal reply.” No declaration was filed. The examiner’s final action of September 2025 answered from the MPEP: “When evidence of commercial success is submitted, examiners must evaluate it to determine whether there is objective evidence of success, and whether the success can be attributed to the ornamental design,” and “With regard to evidence submitted showing that competitors in the marketplace are copying the design, more than the mere fact of copying is necessary to make that action significant because copying may be attributable to other factors such as lack of concern for patent property or indifference with regard to the patentee’s ability to enforce the patent.” Seven months later the reasons for allowance found that the references did not admit of a primary reference and added: “In the remarks filed on 04/14/2026, the applicant states that they have had commercial success with their product, and as a result, copycat products have emerged. This suggests that such a design did not exist prior to this particular collapsible bin.” The same unsworn statements were held insufficient under factor four in one action and credited on the primary-reference question in the next.
The third is 29/995,893, a tote bag. The inventor, a company vice president, declared that the product reached #1 on Amazon Best Sellers in its category in July 2024, was featured by Good Housekeeping, TODAY, E! News, and others, and was copied by two sellers whose Amazon listings first appeared the same month and who also used the applicant’s “Soap Bubble” name. The declaration tied the success to “the unique ornamental aesthetic appeal of the design, including the iridescent appearance and the three-segmented visual division of the front and back created by the full-height handle straps,” and noted that cheaper functionally equivalent totes without the design were available. The examiner allowed after a July 2025 amendment, stated no reason, and did not mention the declaration.
The fourth is 29/866,979, a magnetic fastener. After an interview at which, in the examiner’s words, “[e]vidence for examples of secondary considerations were discussed,” the applicant filed a Rule 132 declaration of an industrial designer stating that the design satisfied a long-felt need for sleek, brandable, self-aligning exposed magnetic clasps, that it would be used two to four times more often than existing clasps, and that it would produce sales increases of 200 percent or more. The success was projected, not reported. The examiner withdrew the rejection because the references did not show the claimed double shoulder and did not mention the declaration. This is the only long-felt need declaration in the corpus, and it was not ruled on.
Two files outside the corpus belong with these four. In 29/889,118, a clear coffee press, a Rule 132 declaration reported that the clear version outsold the tinted original at a higher price and framed years of consumer complaints about the look of the plastic original as a long-felt need. The application was allowed on other grounds without a ruling on the indicia. In 29/705,672, a camera battery allowed in March 2024, a declaration gave unit sales for three years. The examiner first refused it because “there is no direct evidence tying the blue color and the blue/black patterning to the units sold,” and after a supplemental declaration agreed that “the specific blue color of the cap of the battery, the commercial success, and copying provide a nexus for a unique design.” That file predates LKQ and shows the analysis the MPEP calls for.
5. What Examiners Did
Across the 18 files in which the factor was raised, the examiner never addressed it in 11. In three the examiner acknowledged the argument and gave it no weight or said it was not required. In one the examiner found the evidence insufficient with reasons and then credited it in the allowance. In one the examiner credited it. In two the examiner withdrew on other grounds without reaching it. No Board decision in the corpus discusses secondary considerations. The three reversals, Ex parte Thornburg, Appeal No. 2023-002969, Appeal No. 2023-001416, and Ex parte Dascola, Appeal No. 2025-003515, all rest on the missing reason to combine.
Two examiners raised the topic on their own. In 29/885,371 and 29/885,374, companion guide wire applications, the interview summary records that the examiner “[d]iscussed the use of affidavit evidence in establishing secondary considerations.” The applicant submitted none and prevailed on the twist angle of the wire. Two other examiners cited Ace Fastener Corp. v. United States, 125 USPQ 143 (Ct. Cl. 1960), in the rejection itself, before any success had been asserted, for the proposition that a difference in materials “together with resulting great commercial success, is not sufficient to show patented design to be inventive” (29/919,931, 29/993,412). That is an answer to an argument nobody had made.
6. Why the Factor Is Not Being Used
The record suggests four reasons.
First, the visual argument usually works, and it is cheaper. In the companion corpus of 171 reason-to-combine files, 106 of the last rejections were withdrawn on argument, most on a visual difference the examiner named. An applicant who can win on factors one through three has no reason to assemble sales data, and the applicants in 29/866,534, 29/950,635, and 29/981,824 said so.
Second, the evidence that exists is the wrong kind. The four submissions in the corpus consisted of press coverage, marketplace rankings, and screenshots of copies. None contained unit sales, revenue, market share, or a comparison with the applicant’s or competitors’ prior designs. The MPEP asks for objective evidence of success and for attribution to the ornamental design. A bestseller badge and a magazine mention are evidence that the product sold and was noticed. They are not evidence of how much, compared with what, or why. The one examiner who applied the MPEP test to such material found it insufficient.
Third, nexus for a design is undeveloped. The utility cases ask whether the success is attributable to the claimed features rather than to unclaimed features, price, marketing, or the functional merits of the product. For a design the claimed feature is the appearance. Every applicant in the corpus asserted nexus by naming the feature the success was attributable to. No applicant offered evidence that buyers chose the product for that feature, such as a survey, reviews that mention it, or sales of the same product before and after the design change. The camera battery file outside the corpus shows an examiner demanding exactly that and an applicant supplying it. Nothing in the corpus shows it after LKQ.
Fourth, timing. Commercial success and copying take time to accumulate. A design application is examined within a year or two of filing, often before the product has been on sale long enough to generate the evidence. The tote bag and mouth tape applicants had the evidence because their products had been on the market during prosecution. Most applicants do not.
The result is that the fourth factor, which the court named as a check on hindsight, is doing no work in examination. Applicants recite it because the court listed it. Examiners recite it because the MPEP lists it. The rejections are being won and lost on the first three factors, and mostly on the second.
7. What Practitioners Might Consider
Do not recite factor four unless something will be offered under it. A recital followed by nothing, or followed by a sentence saying the applicant is not relying on it, tells the examiner that the applicant looked for evidence and found none. Argue factors one through three and leave factor four out of the response.
Where the product is on the market and selling, the evidence exists and can be put in a declaration. The declaration should come from someone with knowledge of the sales, should give units or revenue over a stated period, and should compare them with something: the applicant’s prior design, a competitor’s product, or the category. It should say what else might explain the sales and why the design is the better explanation. Press coverage and awards belong in the declaration as industry praise, with the articles attached and the passages that describe the appearance identified.
Copying requires more than a screenshot. The MPEP says so, and the examiner in 29/945,139 quoted it. A copying submission should show that the copier had access to the applicant’s product, that the copy reproduces the claimed appearance rather than the article’s function, that the copier had other designs available and chose this one, and, where possible, that the copying followed the product’s success. The tote bag declaration, with dated listings, the copier’s use of the applicant’s product name, and the point that cheaper functionally equivalent totes existed, is the closest the corpus comes.
Nexus should be argued with evidence, not by assertion. Reviews that mention the appearance, a survey, or sales before and after a design change are the kinds of proof an examiner can evaluate. A sentence stating that the success is attributable to the claimed features is what every applicant in the corpus wrote, and it persuaded one examiner without analysis and did not persuade another.
Long-felt need and failure of others remain open. The court did not say they apply, and no examiner has ruled on either for a design. The two declarations on record frame the need as a need for an appearance, such as a fastener that does not look generic or a coffee press that looks like glass, and tie its satisfaction to sales. That is the right structure if the argument is to be made. The coexistence of two references without combination is not failure of others and was rejected for want of evidence in a 2022 file (29/683,901) and ignored in 2026.
Finally, expect the evidence to be credited, if at all, as support for a result reached on other grounds. In both files where the examiner credited it, the allowance rested first on something else, a non-analogous reference in one and the absence of a primary reference in the other. The fourth factor was the second reason. An applicant should treat it the same way.
Conclusion
The court gave design applicants the fourth Graham factor. In the two years since, applicants have written it into their responses and left it there. In 113 files that mention it, four contain evidence, and in only one of those was the evidence sworn, tied to a feature, and credited. The reasons are practical. The visual argument wins more often and costs less. The evidence that would satisfy the MPEP is rarely available during prosecution and was not offered when it was. Nexus for a design has not been developed beyond assertion. Until an applicant with real sales data, a competitor’s copy, and proof of why buyers chose the design puts that record before an examiner or the Board, the factor will remain a recital.
Limits of the Record
The corpus is 113 issued design patents. Applications abandoned after the argument failed are not in it. Classification was done from the text of the wrappers and reviewed against the wrappers where the first reading was unclear. Quotations are from the wrappers. Two files discussed in Part 4 are outside the corpus and are identified as such. Rule 130 declarations on attribution and Rule 132 declarations on a reference’s publication date, which some applicants described as objective evidence, were set aside. Page citations to LKQ are to 102 F.4th 1280. Application numbers are given so that any file can be checked.
