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Romag Fasteners, Inc. v. Fossil, Inc.

United States District Court for the District of Connecticut

October 23, 2013, Decided; October 24, 2013, Filed

CONSOLIDATED CIVIL ACTION NO. 10-01827-WGY

Opinion

 [*266]  MEMORANDUM & ORDER

YOUNG, D.J.

I. INTRODUCTION

The  [**3] instant case raises patent and trademark issues involving magnetic snap fasteners on handbags and other leather accessories.

The plaintiff Romag Fasteners, Inc. ("Romag") designs, causes to be manufactured, and sells magnetic snap fasteners used in handbags and other accessories. Compl. ¶ 8, ECF No. 1. Romag holds U.S. Patent No. 5,722,126 (the "'126 patent"). Compl., Ex. A, U.S. Patent, ECF No. 1. The '126 patent was issued on March 3, 1998 for an invention by Howard J. Reiter entitled "Magnetic Snap Fasteners." Id.; Compl. ¶ 7. Romag also owns a U.S. Trademark Registration No. 2,095,367 (the "'367 registration"). Compl., Ex. B, Trademark Principal Register, ECF No. 1. The '367 registration covers the mark "ROMAG" in connection with magnetic snap fasteners. Compl. ¶ 10.

Romag sued Fossil, Inc. and Fossil Stores I, Inc. (collectively "Fossil"), and Macy's, Inc. and Macy's Retail Holdings, Inc. (collectively "Macy's"). In a separate action, Romag sued Dillard's, Inc., Nordstrom, Inc., The Bon-Ton Stores, Inc., The Bon-Ton Department Stores, Inc., Belk, Inc., Zappos.com, Inc., and Zappos Retail, Inc. (altogether "the defendants"). See Mot. Consolidate Enter Consol. Case Mgm't Plan, ECF  [**4] No. 81. The Court consolidated these two actions for patent infringement, trademark infringement, false designation of origin, and unfair competition. Order, ECF No. 82. Romag alleges inter alia that the defendants infringe the '126 patent "by making, using, importing, selling[,] and offering for sale handbags, . . . containing magnetic snap fasteners which come within the claims of the '126 Patent," Compl. ¶ 26, and that the "defendants knowingly adopted and used the name and mark of ROMAG," id. ¶ 30, when selling certain handbags (the "Fossil Handbags") with snap fasteners, "bearing a reproduction, counterfeit, copy, or colorable imitation of the trademark ROMAG," id. ¶ 32.

The defendants move for partial summary judgment, declaring that Romag is not entitled to any of the defendants' profits as a remedy for the alleged trademark infringement. Fossil and Macy's, the original defendants to this action, seek to have the Court declare the '126 patent invalid due to the alleged indefiniteness of the term "rotatable," the sole object of claim construction at a previous Markman Hearing. This Court denied both motions on April 18, 2013. Minute Entry, ECF No. 243. This memorandum explains  [**5] the reasoning behind that order.

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979 F. Supp. 2d 264 *; 2013 U.S. Dist. LEXIS 155841 **; 2013 WL 5782522

ROMAG FASTENERS, INC., Plaintiff, v. FOSSIL, INC., FOSSIL STORES I, INC., MACY'S, INC., and MACY'S RETAIL HOLDINGS, INC., Defendants,ROMAG FASTENERS, INC., v. DILLARD'S, INC., NORDSTROM, INC., THE BON-TON STORES, INC., THE BON-TON DEPARTMENT STORES, INC., BELK, INC., ZAPPOS.COM, INC., and ZAPPOS RETAIL, INC., Defendants.

Subsequent History: Motion granted by, in part, Motion denied by, in part Romag Fasteners, Inc. v. Fossil, Inc., 2014 U.S. Dist. LEXIS 38201 (D. Conn., Mar. 24, 2014)

Prior History: Romag Fasteners, Inc. v. Fossil Inc., 2012 U.S. Dist. LEXIS 14571 (D. Conn., Feb. 8, 2012)

CORE TERMS

profits, infringement, patent, handbags, accounting, fasteners, snap, rotatable, defendants', Invalidity, sales, trademark, washer, cases, magnetic, damages, consumer confusion, unjust enrichment, legs, counterfeit, indirect, burden of proof, diversion, indefiniteness, attachment, summary judgment, Declaring, marks, direct competitor, deterrence

Civil Procedure, Summary Judgment, Entitlement as Matter of Law, General Overview, Genuine Disputes, Judgments, Evidentiary Considerations, Trademark Law, Remedies, Damages, Types of Damages, Profits, Evidence, Burdens of Proof, Allocation, Patent Law, Infringement Actions, Burdens of Proof, Defenses, Patent Invalidity, Fact & Law Issues, Presumption of Validity, Specifications, Definiteness, Precision Standards, Movant Persuasion & Proof, Motions for Summary Judgment, Notice Requirement