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 Standard
In the Second Circuit, the standard for obtaining a temporary restraining order pursuant to Federal Rule of Civil Procedure 65(b) and obtaining a preliminary injunction are the same. Allied Office Supplies, Inc. v. Lewandowski, 261 F. Supp. 2d 107, 108 n.2 (D. Conn. 2005). The moving party must demonstrate "a threat of irreparable injury and either (1) a probability of success on the merits or (2) sufficiently serious questions going to the merits of the claims to make them a fair ground of litigation, and a balance of hardships tipping decidedly in favor of the moving party." Motorola Credit Corp. v. Uzan, 322 F.3d 130, 135 (2d Cir. 2003). The burden on the moving party to obtain a temporary restraining order is even higher where the preliminary relief will "alter, rather than maintain, the status quo." Jolly v. Coughlin, 76 F.3d 468, 473 (2d Cir. 1996). In such a circumstance, the moving party must make a "clear" or "substantial showing" of the likelihood of success. Doninger v. Niehoff, 527 F.3d 41, 47 (2d Cir. 2008).
Threat of Irreparable Injury
The threat of irreparable harm to Romag is great if the defendants are permitted to continue selling the Fossil bags containing counterfeit Romag snaps. Romag has built a significant reputation in the handbag industry for designing and manufacturing snaps for high-end makers of handbags. Given the substantial similarity between Romag snaps and the counterfeit snaps, it is likely that a consumer will not be able to distinguish between the two. As a result, any defect with the counterfeit snaps will likely be unfairly attributed to Romag and, consequently, hurt Romag's business reputation. Such customer confusion has been held to create a presumption of irreparable injury. See Zino Davidoff SA v. CVS Corp., 571 F.3d 238, 243, 246 (2d Cir. 2009); see also Romag Fasteners, Inc. v. J.C. Penney, Inc., No. 07-cv-1667, 2007 WL 4225792, at *4 (D. Conn. Nov. 28, 2007) (finding that likely customer confusion as to the source of snaps on handbags is sufficient proof of irreparable harm in the absence of preliminary relief). Defendants claim that monetary relief is sufficient to compensate for any injury Romag may suffer but this Court disagrees. Romag has no control over a customer's dissatisfaction with the counterfeit snaps and a company's reputation and goodwill is not easily compensable. See Power Test Petroleum Distribs., Inc. v. Calcu Gas, Inc., 754 F.2d 91, 95 (2d Cir. 1985). Finally, given the high volume of shopping during the holiday season, Romag stands to suffer an even more significant injury to its reputation as it is likely that many Fossil handbags, which include the counterfeit snap fasteners, will be purchased in the coming weeks. Accordingly, the Court concludes that the plaintiff has met its burden in proving a threat of irreparable injury.
Probability of Success on the Merits "The Lanham Act prohibits the use in commerce, without consent, of any 'registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods,' in a way that is likely to cause confusion." Time, Inc. v. Petersen Publ'g Co., 173 F.3d 113, 117 (2d Cir. 1999) (quoting 15 U.S.C. § 1114(1)(a)). In addition, the Act forbids the use in commerce of "any word, term, name symbol, or device, or any combination thereof . . . which is likely to cause confusion, or to cause mistake . . . by another person." 15 U.S.C. § 1125(a). The plaintiff has the burden to prove that "it has a valid mark entitled to protection and that the defendant's use of it is likely to cause confusion." Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 390 (2d Cir. 1995) (internal quotations omitted). To succeed on an infringement claim, the possessor of a valid mark "must prove that numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant's mark." Time, Inc., 173 F.3d at 117 (internal quotations omitted).
In the Second Circuit, district courts apply what has become known as "the Polaroid factors" when deciding whether a possessor of a valid mark has established that the use of a similar mark is likely to cause confusion.*fn2 Time, Inc., 173 F.3d at 117. The Polaroid factors are: (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion; (6) the defendant's good faith in adopting its mark; (7) the quality of the ...