Sure Fit Home Products, LLC v. Maytex Mills Inc.

Background

Plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC, Zahner Design Group, Ltd. (ZDG), and Hookless Systems of North America, Inc. (HSNA) claimed that Defendant Maytex Mills, Inc.’s Glacier Bay shower curtains infringed Design Patent No. 668,091 (the D091 Patent) and the plaintiffs’ asserted trade dress. The plaintiffs sought a preliminary injunction barring Maytex from selling the allegedly infringing products.

The D091 Patent covers a shower curtain with reinforcing rings containing slits. The opinion also discusses two earlier utility patents issued to David Zahner: the ’232 Patent and the ’248 Patent. Those patents described functional features that allowed a curtain to be attached to a fixed rod without removing the rod, including rings, slits, regular spacing, and reinforcement around the openings. Both utility patents had expired by July 17, 2020.

The asserted trade dress was described as a shower curtain with no hooks protruding above the curtain, a row of attached rings, a slit or gap in each ring, and an organized, symmetrical repeating pattern. The plaintiffs sold shower curtains under the Hookless label. Maytex began selling its Glacier Bay shower-curtain line in July 2020.

Preliminary-injunction standard

For the patent claim, the plaintiffs had to show a likelihood of success on the merits, likely irreparable harm without an injunction, that the balance of equities favored them, and that an injunction served the public interest. The court stated that a preliminary injunction could not issue unless the plaintiffs established both likely success and irreparable harm.

For the trade-dress claim, because the requested injunction would change the existing situation by requiring Maytex to stop selling competing products, the plaintiffs had to show a clear or substantial likelihood of success, a strong showing of irreparable harm, favorable equities, and a public interest supporting the injunction.

Patent claim

The court held that Maytex had raised a substantial question about infringement. Under the ordinary-observer test, the issue was whether an ordinary purchaser would view the patented and accused designs as substantially the same.

The court found that the products shared only high-level features, such as embedded rings and slits. It identified several apparent differences: Maytex’s rings had rounded, beveled edges rather than the flat rings shown in the D091 Patent; Maytex’s rings extended closer to the curtain’s upper edge; the backs of Maytex’s rings had small hooks, beveled inner and outer rims, and post holes. Because these differences were plainly visible, the plaintiffs had not shown that they were more likely than not to prove infringement. The court therefore did not address the parties’ arguments about the D091 Patent’s validity.

Trade-dress claim

The court held that the plaintiffs had not made the required clear and substantial showing of likely success because the key trade-dress features appeared to be functional. Trade dress is product appearance that may receive protection under trademark law, but functional features generally cannot be protected as trade dress.

The court focused on the plaintiffs’ own expired utility patents, which described rings and slits that allowed a curtain to be attached to a fixed rod without external hooks or clips. The patents also described regular spacing and reinforcement as improving support, preventing tearing, improving movement on the rod, and affecting how the curtain folded and hung. The court found that the asserted trade dress largely tracked these functional features.

The court rejected the plaintiffs’ argument that alternative designs showed the asserted trade dress was nonfunctional. It also rejected the argument that the neat and orderly appearance was merely ornamental, finding that the patents themselves connected the appearance-related features to functional benefits. Because the plaintiffs had not shown that the asserted trade dress was nonfunctional, the court did not address whether it was distinctive or had acquired secondary meaning.

Irreparable harm

The court also found that the plaintiffs had not shown irreparable harm. The plaintiffs identified lost business, possible loss of a major retail customer, possible future private-label products, possible goodwill erosion, possible lost follow-on opportunities, and a possible threat to their entire business. The court found these concerns speculative or compensable through money damages rather than actual and imminent harm that justified extraordinary relief.

Balance of equities and public interest

The balance of equities tipped slightly in the plaintiffs’ favor because the plaintiffs identified shower curtains as central to their business, while Maytex did not dispute that the accused products represented only a small portion of its business. Nevertheless, the public interest did not favor an injunction. The court reasoned that Maytex’s products appeared plainly different from the D091 Patent and that an injunction could improperly extend protection for the expired utility patents’ functional features beyond their patent terms.

Disposition

Judge Lorna G. Schofield denied the plaintiffs’ motion for a preliminary injunction and directed the Clerk of Court to close the motion at Docket No. 24. The opinion states that all preliminary-injunction factors except the balance of equities weighed against issuing the injunction.