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HEALTH O METER, INC. v. TERRAILLON CORP.

January 30, 1995

HEALTH O METER, INC., Plaintiff Counterdefendant,
v.
TERRAILLON CORPORATION, Defendant Counterclaimant.



The opinion of the court was delivered by: JAMES F. HOLDERMAN

 JAMES F. HOLDERMAN, District Judge:

 On September 12, 1994 Plaintiff Health O Meter, Inc., an Illinois corporation with its principal place of business in Bridgeview, Illinois, filed a complaint against Defendant Terraillon Corporation, which is a Connecticut corporation with its principal place of business in Stamford, Connecticut. Plaintiff's complaint contains three counts. Count I alleges trade dress infringement in violation of Title 15 U.S.C. § 1125(a), the Lanham Act. Count II alleges unfair competition for alleged palming off and false designation of origin in violation of the Lanham Act as well as Illinois law. Count III alleges patent infringement in violation of Title 35 U.S.C. § 271.

 Defendant filed its amended answer and counterclaim on November 16, 1994. Plaintiff filed its answer to Defendant's amended counterclaim on November 21, 1994. Plaintiff Health O Meter, Inc. has moved for a preliminary injunction.

 Jurisdiction and venue are not disputed. Since this court's jurisdiction is based in part on 28 U.S.C. § 1338, any appeal of this court's decision will come within the appellate jurisdiction of the United States Court of Appeals for the Federal Circuit pursuant to 28 U.S.C. § 1295.

 Both Plaintiff Health O Meter, Inc. and Defendant Terraillon Corp. *fn1" are in the business of marketing floor model weighing scales. Plaintiff's motion for preliminary injunction alleges that Defendant's Model T PRO 1000 scale infringes the trade dress of Plaintiff's scales. Plaintiff seeks to enjoin Defendant from employing in Defendant's scales the following trade dress described by Plaintiff in its reply brief as:

 (Plaintiff's Reply, p. 5.)

 For the reasons stated herein, Plaintiff's motion for preliminary injunction is granted as to the trade dress consisting of the narrow (less than two centimeters), longitudinal center division white stripe which separates the mats of contrasting color on the scale platform. The motion is denied as to the hood or cowl of the overhanging dial which is flush with the top of the scale platform housing forming a reclining "J" shaped profile.

 I. BACKGROUND

 Since as early as 1919, Plaintiff has been in the business of designing, manufacturing, and marketing professional weighing scales for use in consumers' homes, doctors' offices, hospitals, and health clinics. In 1932, Plaintiff was selling floor model scales with big dials elevated above the platform. In 1935, Plaintiff began to decoratively "split" the platform of some of its floor model scales.

 Early in 1989, Plaintiff introduced a big dial, professional quality doctor's floor model scale called "Bigfoot 1" for the consumer market with black or dark-colored mats on either side of a longitudinal center white stripe forming the split-mat platform design called "Bigfoot 1." (Figure 1.)

 Plaintiff's 1989 "Bigfoot 1" Split-Mat Platform Scale

 [SEE FIGURE 1 IN ORIGINAL]

 This product's split-mat appearance not only distinguished Plaintiff's scale from its competition, but was also an extension of the visual features of Plaintiff's own earlier split-mat platform weighing scales. The design with the split-mat feature has been widely used in Plaintiff's line of professional big-dial weighing scales since 1989.

 In March 1992, Defendant was created as a subsidiary of Terraillon S.A., a French corporation which for over 40 years has been a manufacturer of bathroom and kitchen scales. Defendant was to distribute Terraillon S.A.'s foreign-made scales in the United States. Terraillon S.A.'s previous arrangement for distribution in the United States had been unsatisfactory. When first formed, in 1992, Defendant did not market a scale which competed directly with Plaintiff's floor model professional scales.

 In the last half decade, Plaintiff has sold approximately one and three-quarter million of its big-dial floor model professional quality doctor's scales with the split-mat platform trade dress. The sales of these scales by the Plaintiff generated more than sixty million dollars in gross. Plaintiff's scales during the last half decade were sold and continue to be sold through catalogs, catalog showroom stores, discount stores and department stores. Advertising and promotion of both the big-dial and overhanging big-dial scales have prominently featured the split-mat trade dress. The raised, overhanging big-dial scales have also featured the reclining "J" profile in its promotional material. Plaintiff has advertised and promoted its scales at trade shows, on television, and in national consumer magazines of wide circulation. Plaintiff has advertised in Better Homes and Gardens, Cooking Lite, Cosmopolitan, Health, People, Redbook, Shape, Weight Watchers, and Woman's Day. Plaintiff has also promoted its scales through other advertising, trade promotional materials, customer co-op advertising and in store retail display fixtures.

 None of Plaintiff's competitors which have sold big-dial floor model professional scales, except the Defendant, have ever used a split-mat platform with contrasting white longitudinal center stripe format on any of their scales. As shown by the likeness of the various competitors' scales taken from the photographed display in Defendant's Exhibit 45 (and arranged alphabetically in Figure 2 below), only the Defendant has attempted to employ a split-mat appearance similar to Plaintiff's split-mat trade dress.

 Defendant introduced its Model T PRO 1000 overhanging dial scale with the split-mat format (pictured above in Figure 2) at trade shows and in the trade press in May 1994. In August 1994, Defendant began to distribute its Model T PRO 1000 professional overhanging dial weighing scale in interstate commerce. This scale has been marketed by Defendant to retail consumers through Sharper Image stores, catalogs, and department stores. Defendant's Model T PRO 1000 scale incorporates, and Defendant's promotional material and packaging emphasize, a split-mat which can be described as the narrow, longitudinal white center stripe division of the platform along the entire length of the scale's platform.

 Defendant's Model T PRO 1000 professional scale also has a profile which consists of the elevated dial housing which angles down toward the lower part and overhangs the platform. The resultant profile of Defendant's Model T PRO 1000 scale resembles the letter "J" reclining on its side with the hood or cowl of the dial flush with the top portion of the platform housing and extending from the platform to the top of the overhanging dial. This profile resembles the profile of Plaintiff's "Ultra Pro" professional scale. The reclining "J" profiles of both Plaintiff's and Defendant's overhanging dial scales are pictured below in Figure 3.

 II. ANALYSIS

 A. Requisite Proof for Injunctive Relief

 In order to establish that a movant is entitled to a preliminary injunction, a movant must show four factors: (1) the movant's reasonable likelihood of success on the merits; (2) the irreparable harm the movant will suffer if preliminary relief is not granted; (3) the balance of hardships tipping in movant's favor; and (4) a non-adverse impact on the public interest. See Reebok International Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555 (Fed. Cir. 1994); Indiana Hi-Rail Corp. v. Decatur Junction Railway Co., 37 F.3d 363, 366 (7th Cir. 1994) (citing Storck USA, L.P. v. Farley Candy Co., 14 F.3d 311, 313-14 (7th Cir. 1994)).

 It should be noted that Plaintiff seeks a preliminary injunction only on the basis of Defendant's alleged Lanham Act violations. In reviewing Lanham Act claims, the United States Court of Appeals for the Federal Circuit has held that it is to look to the law of the circuit where the district court sits. See Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200 (Fed. Cir. 1994). This court, consequently, will evaluate the Lanham Act claims upon which Plaintiff seeks preliminary injunctive relief pursuant to the law of the Seventh Circuit.

 In the Seventh Circuit if the initial elements for preliminary injunctive relief are met, the balancing of harms involves a "sliding scale" analysis: the greater the movant's chance of success on the merits, the less strong a showing a movant must make that the balance of harms is in movant's favor. Storck, 14 F.3d at 314. A district court has "considerable discretion in deciding whether to issue a preliminary injunction." Id. (citing Computer Care v. Service Systems Enterprises, 982 F.2d 1063, 1067 (7th Cir. 1992)).

 B. Likelihood of Success on the Merits

 The first threshold element Plaintiff must prove to establish the grounds for entry of a preliminary injunction is a likelihood of success on the merits. See Retired Chicago Police Assoc. v. City of Chicago, 7 F.3d 584, 608 (7th Cir. 1993). To demonstrate a reasonable likelihood of success on the merits, Plaintiff must show at a minimum that its chance of prevailing is "better than ...


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