The opinion of the court was delivered by: Christopher F. Droney United States District Judge
RULING ON MOTION FOR TEMPORARY RESTRAINING ORDER
The plaintiff, Romag Fasteners, Inc. ("Romag"), brought this action against Fossil, Inc., Fossil Stores I, Inc., Macy's, Inc., and Macy's Retail Holdings, Inc. (collectively, "defendants") alleging patent infringement in violation of 35 U.S.C. § 271, trademark infringement and unfair competition in violation of the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a), and unfair competition and unfair trade practices in violation of state law.*fn1 Romag now seeks a temporary restraining order and preliminary injunction. Specifically, the plaintiff seeks to prevent the defendants from continuing to sell Fossil handbags that contain counterfeit Romag magnetic snap fasteners. For the reasons that follow, the plaintiff's motion for a temporary restraining order is granted.
Romag is a Connecticut-based manufacturer and seller of magnetic snap fasteners. Romag holds the U.S. patent, No. 5,722,126, for these fasteners, which are most commonly found on women's handbags. Romag also owns the trademark "ROMAG," U.S. Trademark Reg. No. 2,095,367, which appears on Romag's fasteners. Romag sells its magnetic snap fasteners to, among others, high-end manufacturers of women's handbags. From 2002--06, Romag sold Fossil its magnetic snaps. However, beginning in 2006, the number of Romag snaps ordered by Fossil substantially decreased.
On November 15, 2010, Howard Reiter, the President of Romag, discovered several Fossil handbags on sale at a Macy's store in Milford, Connecticut that he believed contained counterfeit snaps bearing the "ROMAG" trademark and the patent marking "USA Pat 5722126." Mr. Reiter purchased four Fossil bags from Macy's containing these allegedly counterfeit magnetic snaps. On November 16, 2010, Mr. Reiter purchased an additional twelve Fossil handbags from a Fossil retail store in Clinton, Connecticut.
After further examining the magnetic snaps used on the Fossil bags he purchased at Macy's and the Fossil retail store, Mr. Reiter confirmed that the snaps were counterfeits. Although each of the counterfeit snaps contain the Romag patent number and trademark, there are several slight differences between Romag's snaps and the counterfeit snaps, including the snaps' dimensions and the use of a period (".") after the words "USA Pat." These differences, while noticeable to Mr. Reiter, are not likely to be discovered by customers purchasing the Fossil handbags.
On November 17, 2010, Romag's attorney sent a cease-and-desist letter to Fossil's Counsel. Nonetheless, Fossil and Macy's have not agreed to stop selling Fossil handbags that incorporate the counterfeit Romag snaps. Romag now moves to temporarily restrain the defendants from continuing to sell Fossil handbags that contain the counterfeit snaps.
Temporary Restraining Order ...