Laws Of .com

US-Court-of-Appeals-Dismisses-Honeywells-Attempt-to-Utilize-Trademark-Protection-in-Expired-Patent-Case

On December 31, 2003, the U.S. Court of Appeals (7th Circuit) upheld the decision of the U.S. District Court (S.D. Ind.) which dismissed Honeywell's motion for a preliminary injunction to restrain Eco Manufacturing Inc. from manufacturing and distributing its EcoStat round thermostat pending trial of the main action.

Honeywell has been marketing a round thermostat (called "The Round") for over 50 years. Although its utility patents relating to the thermostat expired long ago, Honeywell had since obtained trademark protection for the shape of its thermostat.

Last year, Eco Manufacturing Inc., a start-up manufacturing company based in Lebanon, Indiana, began marketing a round thermostat (the "EcoStat"). Honeywell demanded that Eco stop manufacturing and distributing the EcoStat thermostat in violation of Honeywell's trademark rights. In response, Eco filed a complaint against Honeywell in the U.S. District Court (S.D. Ind.) seeking a declaratory judgment that its product would not infringe or dilute Honeywell's trademark rights, and the cancellation of Honeywell's federal trademark registration. Honeywell filed a counterclaim seeking equitable relief, and a motion for a preliminary injunction.

Judge David Hamilton of the U.S. District Court (S.D. Ind.) declined to issue a preliminary injunction against Eco. In his decision of June 20, 2003, he held that:

The shape of Honeywell's round thermostats cannot be protected by a valid trademark. That round shape was the subject of a long-expired utility patent. Eco and the other competitors are entitled to copy that useful and functional shape so long as they do not take other steps to create the impression that their round thermostats are made by or associated with Honeywell. Accordingly, Honeywell is unlikely to prevail on the merits of its trademark claims, and its motion for a preliminary injunction is hereby denied.

 

For a copy of the decision, visit:
http://www.ca7.uscourts.gov/op3.fwx?submit1=showop&caseno=03-2704.PDF