Focus Products Group International, LLC v. Kartri Sales Company, Inc.

Background

The plaintiffs moved for clarification and partial reconsideration of the court’s April 16, 2020 summary-judgment decision. The plaintiffs are Focus Products Group International, LLC, Zahner Design Group Ltd., Hookless Systems of North America, Inc., Sure Fit Home Products, LLC, Sure Fite Home Décor Holdings Corp., and SF Home Décor, LLC. The defendants are Kartri Sales Company, Inc., and Marquis Mills, International, Inc.

The earlier decision addressed claims involving three utility patents—the ’248, ’609, and ’88 patents—and a claim under section 43(a) of the Lanham Act, the federal trademark statute, concerning the visual design of shower curtains sold under the Hookless® brand. The plaintiffs described their claimed trade dress as shower curtains without hooks, with a row of rings containing slits or gaps fixed along the upper part of the curtain so that the rings were essentially level with the curtain material. The plaintiffs argued that these features created a neat and orderly appearance.

Utility-patent claims

The court clarified that its earlier rulings established the defendants’ infringement of the three utility patents as a matter of law. It had denied the defendants’ requests for declaratory relief on those patents and denied the defendants’ summary-judgment motion based on patent invalidity. The court stated that no matters remained to be resolved concerning the utility-patent infringement claims and that the plaintiffs were entitled to summary judgment on those claims.

Reconsideration of the trade-dress ruling

The court reconsidered its earlier decision to grant summary judgment against the plaintiffs on the trade-dress infringement claim. The earlier ruling had found the claimed product design generic, meaning that it referred to a general type or category of product rather than a particular source. The defendants had argued that the Hookless® trademark was generic, but they had not argued in their summary-judgment submissions that the plaintiffs’ trade dress was generic. Because the plaintiffs had not received notice and a reasonable opportunity to respond to that ground, the court found reconsideration appropriate and vacated its earlier genericism ruling.

The court then reconsidered the parties’ summary-judgment motions on the trade-dress claim. It concluded that the plaintiffs’ description of the claimed trade dress was sufficiently precise. It also found that the plaintiffs had presented enough evidence for a factfinder to determine that the design was nonfunctional, meaning that the design was not essential to the shower curtain’s use and purpose and that alternative designs could perform the same function.

Secondary meaning

Secondary meaning, also called acquired distinctiveness, exists when consumers primarily view a design as identifying the product’s source rather than merely identifying the product itself. The plaintiffs presented evidence of substantial advertising, industry awards, significant sales, more than twenty years of use, and attempts by others to copy the design. The defendants did not contest the evidence concerning those factors.

The plaintiffs did not present consumer surveys. They instead relied largely on testimony from Patricia Kubus, a vice president and president of sales for Kartri, about buyers seeking “hookless-style shower curtains” and sometimes referring to pictures from the Focus website. The court found this evidence sufficient for a reasonable factfinder to find secondary meaning, but not conclusive. A reasonable juror could view the testimony as isolated and less reliable than a properly conducted survey. The court therefore found a genuine dispute of material fact and denied the plaintiffs’ motion for summary judgment on this aspect of the claim.

Likelihood of confusion

Likelihood of confusion is assessed using several factors, including the strength and similarity of the designs, the relationship between the products, actual confusion, the defendants’ good faith, product quality, and buyer sophistication. The plaintiffs presented evidence of substantial sales, similarity between the products, overlapping distributors and markets, comparable prices, and instances in which Kartri employees recommended Ezy-Hang curtains to customers asking about Hookless® curtains.

The court found that this evidence was sufficient to support a likelihood-of-confusion finding, but not conclusive on summary judgment because the evidence had to be viewed favorably to the defendants. The record lacked survey support and contained limited examples of actual confusion. The court also found material factual disputes about whether the defendants acted in bad faith. It therefore ruled that the likelihood-of-confusion issue required a trial and denied the plaintiffs’ motion for summary judgment on the trade-dress claim.

Genericism

The court also rejected the defendants’ request for summary judgment based on the argument that the plaintiffs’ trade dress was generic. To prevail on that argument, the defendants needed to show that the trade dress had become generic by the time the defendants entered the market. The defendants relied on evidence of unbranded shower curtains with similar attached rings, but the court found that the evidence did not establish that those products were sold before the alleged infringement. The court nevertheless found that a jury could determine that the claimed design protected only a general concept or type of hookless shower curtain rather than a particular concrete design. Neither side had made a sufficient showing for summary judgment, so genericism also remained for trial.

Disposition

The court granted reconsideration of its earlier genericism ruling by vacating that ruling. It denied the plaintiffs’ and defendants’ summary-judgment motions on the trade-dress infringement claim. It clarified that, based on the earlier decision, the plaintiffs were entitled to summary judgment on their claims that the defendants infringed the three utility patents. The remaining claims were to proceed to trial unless the parties settled. The clerk was directed to terminate the motion at docket 303.