Romag Fasteners, Inc., a Connecticut based company that manufactures and sells magnetic based snap enclosures, sued Fossil, Inc. and Macy’s, Inc. yesterday alleging patent and trademark infringement and unfair competition in violation of the Lanham Act, and unfair trade practices in violation of state law. Romag seeks a temporary restraining order and preliminary injunction. Specifically, the Romag wants to prevent the Macy’s from continuing to sell the Fossil handbags that contain counterfeit Romag magnetic snap fasteners. (Romag Fasteners v. Fossil, 2010 U.S. Dist. LEXIS 125647 (D. Conn. 2010))
On November 15, 2010, Howard Reiter, the President of Romag was shopping at a Macy’s store in Connecticut when he noticed a familiar magnetic snap enclosure on some Fossil brand handbags. Shocked to see his company’s design, he purchased several of the Fossil handbags, which he claims contained counterfeit snaps. After examining them closer, Reiter noticed that each of the snaps contained the Romag patent number and trademark, but there were slight differences. For example, the snaps’ dimensions and the use of a period after the words “USA Pat.”. Romag’s attorney sent a cease-and-desist letter to Fossil’s Counsel on November 17, 2010, but, Fossil and Macy’s did not agreed to stop selling the Fossil handbags that contain the counterfeit Romag snaps. Therefore, Romag took the matter to Connecticut State Court. Romag sought to temporarily restrain Macy’s from continuing to sell Fossil handbags that contain the counterfeit snaps.
The judge noted that the differences which Reiter pointed out are not likely to be noticeable by the average customer. The opinion states:
In sum, the evidence overwhelmingly suggests that consumer confusion will be caused by the continued sale of Fossil bags with counterfeit snaps. The counterfeit snaps are substantially similar to Romag’s snaps and a customer is unlikely to notice the small differences between the two products. Therefore, Romag has met its burden that it is likely to succeed on the merits of its Lanham Act claim and that irreparable harm will result if preliminary relief is not granted. (id. at 125647)
Thus, the judge found in favor of Romag, and ordered that Macy’s is temporarily restrained from selling and offering for sale Fossil Handbags containing the counterfeit Romag fasteners.