IP Law Daily, TRADEMARK—D.N.J.: Injunction denied in square-pan patent and trade dress dispute, (Apr 20, 2017)

By Jody Coultas, J.D.

The federal district court in Camden, New Jersey, declined to grant Tristar Products, Inc., an injunction that would bar competitor E. Mishan & Sons, Inc., from selling a square cooking pan that allegedly infringed Tristar’s patented designs. The court found that Tristar was unlikely to succeed on its patent infringement and trade dress infringement claims based on the differences of the parties’ products (Tristar Products, Inc. v. E. Mishan & Sons, Inc., April 19, 2017, Bumb, R.).

U.S. Patent Nos. D778,103 (the ’103 patent) and D778,664 (the ’664 patent), both entitled "Pan" and protecting the design of a pan used for cooking, were assigned to Tristar Products. Tristar used the patented designs in its successful Copper Chef square pan. In a suit against E. Mishan & Sons, Tristar alleged that E. Mishan & Sons’ Gotham Steel square pan was substantially and confusingly similar to the Copper Chef product and patented design and infringed Tristar’s Copper Chef trade dress, including the shape and depth of the pan as well as the pan’s retail packaging.

Patent infringement. Tristar failed to show a likelihood of success on its infringement claims, according to the court. A design patent is infringed if it embodies the patented design or "any colorable imitation thereof." The test for design patent infringement is whether the two designs appear "substantially the same" to the "ordinary observer." The ’664 patent depicts a pan with a plain bottom, while the Gotham Steel pan has an induction plate on its bottom. The ’103 patent design shows an induction plate on the bottom of the pan with a plain circle in the center, surrounded by six rows of small circles, totaling 234, and the circles are not diagonally aligned. The Gotham Steel product, however, has no plain center circle, and instead has eight rows of small circles, totaling 217, which are diagonally aligned.

Validity. The design of Chinese Design Patent 303401337 and the design of the ’664 patent were substantially the same with, at most, minor variations, according to the court. Thus, E. Mishan & Sons raised a substantial question as to whether the ’664 patent was invalid as anticipated.

E. Mishan & Sons argued that the design characteristics of prior art references created the same visual impression as the ’664 and ‘103 patents’ design. The court found that it would have been obvious to an ordinary designer of pans to modify any one of the primary reference pans to create a design that has the same overall visual appearance as the patents’ designs. Although the references had a slight lip at top, in light of two secondary prior art references it would have been obvious to an ordinary designer of pans to substitute a lipless, straight edge as the patents teach.

Trade dress infringement. To state a claim for the infringement of an unregistered trade dress, a product’s design is protectable only on a showing of secondary meaning. Secondary meaning is assessed based on: (1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and (11) actual confusion.

Tristar failed to establish a likelihood of success on the merits of its trade dress claims because it had not adequately articulated the specific elements that compose its trade dress, according to the court. The complaint did not articulate any of the specific elements composing the trade dress. Even if the complaint was sufficient, Tristar would be unable to show that E. Mishan & Sons infringed its trade dress. Tristar’s advertising spending was not probative given the lack of evidence as to whether the advertising created actual consumer recognition of the pan design. The length of use of the trade dress was relatively limited, especially given that E. Mishan & Sons’ pan entered the market at most only nine months later. This factor indicated that Tristar’s trade dress had not acquired secondary meaning. In addition, because Tristar’ use was not exclusive, this factor also militated against a finding of secondary meaning. There was no evidence that E. Mishan & Sons intentionally copied the trade dress. Tristar also failed to identify what it believed was inherently distinctive about its retail packaging; nor did Tristar establish that any feature of its retail packaging was inherently distinctive or had acquired secondary meaning.

Because the court also found that Tristar failed to establish a likelihood of consumer confusion, Tristar could not establish that it was likely to succeed on the merits of its trade dress claims. A plaintiff may prevail in a trade dress infringement action only if it shows that most reasonable consumers were likely to be confused as the source of the goods. The most important factor in determining a likelihood of confusion is trade dress similarity. The exteriors, handles, and bottoms of the Copper Chef pan and the Gotham Steel pan are different colors. Also, the E. Mishan & Sons pan had the Gotham Steel brand name on the handles and on each side of the retail box, greatly diminishing any potential confusion. The product packaging at issue were markedly different. Further, the price of the goods suggested that consumers would take at least some care when making a purchase. Thus, consumer confusion was unlikely.

The case is No. 17-1204 (RMB/JS).

Attorneys: Edward Paul Bakos (Bakos & Kritzer, LLP) for Tristar Products Inc. Dennis Francis Gleason (Jardim, Meisner & Susser, PC) and Angelo Notaro, John Zaccaria, and Peter Bucci (Notaro, Michalos & Zaccaria P.C.) for E. Mishan & Sons Inc.

Companies: Tristar Products Inc.; E. Mishan & Sons Inc.

Cases: Patent Trademark NewJerseyNews