IP Law Daily, PATENT—W.D. Pa.: Preliminary injunction denied in handbag hook design patent dispute, (Jan 29, 2024)

By Kevin M. Finson, J.D.

There was insufficient evidence that competitors’ handbag hanger hook products were likely to be confused with the patented design.

A manufacturer of hooks used to organize handbags on a hanger rod was not entitled to a preliminary injunction against competitors accused of infringing a design patent because the patent owner failed to show that the competitor’s products were likely to be confused with its own or that it would be irreparably harmed, the federal district court in Pittsburgh has held. There was not sufficient evidence to show a likelihood of success on the merits or irreparable harm (Jacki Easlick LLC v. Emerald, January 26, 2024, Stickman, W.).

Jacki Easlick, LLC and JE Corporate, LLC (collectively, Easlick) were the owners of U.S. Patent No. D695,526 S (the ’526 patent), a design patent claiming elements of their “Tote Hanger” brand handbag hangar hook. Easlick brought suit for design patent infringement against several defendants, alleging that each defendant sold knock-off handbag hanger hooks on a variety of websites. Easlick specifically sought a preliminary injunction against AccEncyc US (AE) to prevent it from “promoting, advertising, offering for sale, and selling” knock off handbag hanger hooks. The court considered the traditional injunction factors.

Likelihood of success on the merits. The parties disputed how much of the claimed design was functional and how much was ornamental. The court found that because the product was hook that was intended to hang of a closet bar and hold handbags large parts of its overall shape and size were functional.

The primary ornamental elements were the corkscrew-like twist placed in the middle of Easlick’s product, which appeared quite different from the laterally bent center of AE’s product, and the fact that AE’s product’s bottom hook was bent in a somewhat more open-face manner than Easlick’s. The court held that once the functional elements were filtered out, the products appeared quite distinct in terms of their ornamental features, so Easlick was not likely to show that AE’s infringed its design patent.

Irreparable harm. Easlick argued that AE’s inferior product diminished its profits, brand value, market share, reputation, and relationships with both existing and new customers. The court held that all of these allegations were conclusory and theoretical, lacking any concrete evidence. While the court found it plausible that the sales of AE’s products would have some impact on the sales of Easlick’s products, there was no evidence in the record from which the court could determine the extent of this competition and, therefore, whether harm was irreparable or if monetary damages would be adequate.

Because Easlick failed to show a likelihood of success on the merits or of irreparable harm the court denied the injunction without extensive discussion of the remaining factors, remarking in a footnote that even if the balance of equities and public interest weighed in favor of an injunction, they did not overcome the weight of the likelihood of success on the merits and irreparable harm.

The Case is No. 2:23-cv-02000-WSS.

Attorneys: Brian Samuel Malkin (Ference & Associates LLC) for Jacki Easlick, LLC and JE Corporate LLC. Adam Edward Urbanczyk (AU LLC) for CJ Emerald, Atriss, Bestoyard, Bonnie Child, Colored Flag, Entertainment First and Abel Tang. Timothy A Duffy (Law Office of Timothy A. Duffy, P.C.) for AccEncyc US.

Companies: Jacki Easlick, LLC; JE Corporate LLC; CJ Emerald; Atriss, Bestoyard; Colored Flag; Entertainment First; AccEncyc US

Cases: Patent PennsylvaniaNews