The opinion of the court was delivered by: LEVIN
MEMORANDUM OPINION AND ORDER
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 § 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.
II. THE DESIGN PATENT INFRINGEMENT CLAIM.
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).
A. LIKELIHOOD OF SUCCESS ON THE MERITS -- INFRINGEMENT.
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 ...