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September 1, 1998


The opinion of the court was delivered by: LEVIN


 Plaintiff Moen International moves for a preliminary injunction against Defendant Foremost International Trading Incorporated based on: (1) design patent infringement, and (2) unfair competition and trademark infringement. For the reasons set forth below, the court grants the preliminary injunction.


 Plaintiff Moen International is one of the world's largest producers of faucets and related plumbing products. At present, Moen's share of all faucets sold in the United States is approximately 25%, essentially the same as its major competitor Delta Faucet. In 1997, Moen's total U.S. sales of faucets and related plumbing parts was $ 625 million.

 In 1993, Moen introduced its Monticello line of bath products, including the two handle 4" centerset faucet at issue in this litigation. The faucet at issue is the number one selling retail lavatory faucet for Moen (it is carried nationwide by 21 retail home center chains). Moen alleges that $ 124 million of a $ 217 million increase in sales for Moen between 1992 and 1997 was provided by the Monticello line (and of the $ 124 million, $ 29 million was produced solely by the two handle 4" centerset faucet at issue here). Moen estimates that the product at issue here accounts for almost 5% of Moen's total 1997 sales of faucets and related plumbing products. Moen has spent more than $ 9 million in advertising and promoting the faucet at issue.

 Defendant Foremost International Trading, Inc. sells faucets under the heading "Connoisseur Series." Moen asserts that Foremost's faucet infringes on Moen's. Foremost's brand share of faucets is apparently .1% or less of the U.S. market. Foremost states that Moen sells 430,000 faucets a year but that Foremost is currently selling less than 700 of the faucets in suit per year.

 On December 17, 1997, Moen filed its complaint alleging: (1) design patent infringement, (2) unfair competition and trademark infringement under ยง 43(a) of the Lanham Act, and (3) violation of certain designated Illinois statutes related to deceptive business practices, deceptive trade practices and anti-dilution. Moen now moves for a preliminary injunction on: (1) design patent infringement, and (2) unfair competition and trademark infringement.


 To determine whether a preliminary injunction should issue in a case of design patent infringement, a district court must consider: (1) whether the movant has sufficiently established a likelihood of success on the merits; (2) whether the movant would suffer irreparable harm if an injunction were not granted; (3) whether the balance of hardships tips in the movant's favor; and (4) the impact, if any of an injunction on the public interest. Payless Shoesource, Inc. v. Reebok Int'l Ltd., 998 F.2d 985, 988 (Fed. Cir. 1993).


 To prove likelihood of success on the merits in a patent controversy, the plaintiff must demonstrate patent validity and infringement. Foremost does not contest the validity of Moen's patent (called the '466 design patent). Instead, with respect to the likelihood of success on the merits, Foremost argues that there are serious questions as to whether the design is infringed.

 The standard for design patent infringement was articulated by the United States Supreme Court in 1871 in Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L. Ed. 731 (1871):


"if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, including him to purchase one supposing it to be the other, the first one patented is infringed by the other." See also, Payless, supra, 998 F.2d at 990-991.

 1. Moen's Infringement Argument.

 To infringe, an accused design must appropriate the "point of novelty" of the claimed design, i.e., have the same features that set the patented design apart from prior designs. Moen contends that the point of novelty that Foremost infringes is the specific shape, contour, proportion, relationship and integration of the spout and escutcheon (the base supporting the handles and spout) in its '466 patent, i.e., the product less its handles and drain pull.

 Moen contends that, under the law (see cases cited in Pl. Mem. at 5-6), this court need merely compare the faucet spout and escutcheon in its '466 design patent with the spout and escutcheon of the Foremost faucet. Moen asserts that such a comparison shows, without a doubt, that Foremost's product design is substantially the same as the patented design.

 2. Foremost's Non-Infringement Argument.

 Foremost asserts that there are significant differences between the two designs at issue (especially looking at its faucet design from different angles than the drawings presented by Moen), including that: (1) the base of the Foremost faucet is angular while the base in the Moen design is fluid; and (2) the spout of the Foremost faucet has flattened sides joined by a curved top, while the spout in the Moen drawings has perfectly rounded sides and top (in addition, the Foremost spout is wider than the spout in the Moen design). (See Def. Resp. at 5.)

 Foremost further asserts that there is no difference between the Foremost design and the faucet designs of other competitors of Moen. Foremost provides pictures of a Delta faucet and a Price Pfister faucet. (See Def. Resp. at 8.) Foremost claims that the fact that Moen does not object to the Delta faucet is a tacit admission that Foremost's faucet does not copy any point of novelty of the Moen drawings.

 Foremost further asserts that the significance of the differences in the spouts and bases is signified by the fact that the U.S. Patent and Trademark Office concluded that the design of the Foremost base and spout is a patentably distinct design, entitled to its own design patent. Foremost's patent is dated February 10, 1998. (See Def. Resp. Ex. 3.) Foremost asserts -- without citation to authority -- that the presumption of validity of Foremost's patent raises significant doubts about Moen's chances of proving that the Foremost design is the same one shown in the Moen drawings. *fn1"

 3. Finding.

 Based on the evidence and arguments presented, the court finds that movant has: (1) requisitely established under the Gorham (and Payless) standard(s)that Foremost's faucet design is substantially the same as Moen's '466 design patent *fn2" , and (2) sufficiently established a strong likelihood of success on the merits.


 1. Moen's Irreparable Harm Argument.

 "Where validity and continuing infringement has been clearly established . . . immediate irreparable harm is presumed." Smith Int'l Inc. v. Hughes Tool Co., 718 F.2d 1573, 1581 (Fed. Cir. 1983). See also Nutrition 21 v. United States, 930 F.2d 867, 871 (Fed. Cir. 1991). Moen argues that it has demonstrated such a showing. In particular, Moen's position, essentially, is that if Foremost is allowed to continue and, inevitably, expand its previous course of conduct -- e.g., it has sold its accused product to Home Depot and Wal-Mart -- there could well be a substantial erosion of Moen's $ 29 million per year market share.

 2. Foremost's Non-Irreparable Harm Argument.

 Foremost argues that Moen has not demonstrate a clear showing of infringement to entitle it to a presumption of irreparable harm. Foremost argues that it is tiny and cannot harm Moen.

 Foremost further argues that Moen cannot demonstrate irreparable harm because Moen has allowed other competitors to sell similar products. Foremost states that "since Moen has not complained about harm caused by the sale of the Delta faucets, it cannot seriously be heard to complain that it would be irreparably harmed by the sale of a much smaller number of the Foremost faucets." (Def. Resp. at 11.) *fn3"

 3. Finding.

 The court determines that movant's position is well-founded. The court, accordingly, finds that movant has established that it would suffer irreparable harm if a preliminary injunction were not granted.


 The court agrees with movant's position; namely, that the faucet business is highly competitive, and Moen has a right to the exclusivity provided by the patent laws and to the market for the patented product it has developed via considerable expense and effort. To enjoin Foremost only affects one of its many faucet products. On the other hand, to deny Moen's request for injunctive relief puts at risk a $ 29 million faucet market created by movant.


 With respect to public interest, the court concurs with movant that there is a strong public policy favoring the enforcement of patent rights. See PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1567 (Fed. Cir. 1996).


 In view of the foregoing, Plaintiff/movant has met the requirements for the grant of a preliminary injunction. It is hereby ordered that a preliminary injunction as requested is entered in favor of the Plaintiff and against the Defendant. *fn4"



 United States Magistrate Judge

 Dated: September 1, 1998


 Decision by Court. This action came to hearing before the Court. The issues have been heard and a decision has been rendered.

 IT IS HEREBY ORDERED AND ADJUDGED that Plaintiff's motion for preliminary injunction is granted. Pursuant to Rule 65(a) F.R.Civ.P., a preliminary injunction is entered in favor of the plaintiff Moen, Incorporated and against the defendant Foremost International Trading Inc, prohibiting the defendant from making, using, selling or importing FC 1032 Series lavatory faucets or any other faucets which infringe Moen's Inc United States Letters Patent Design No. D347, 466.

 Date: 9/1/1998

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