Imitation may be the highest form of flattery, but such flattery is unwelcome when it comes to copying products. In the consumer product industry, hot items are quickly adapted by competing companies, resulting in consumer confusion as to the origin of the product; sometimes resulting in lengthy legal battles. We saw this most recently with retractable hoses (X Hose, Pocket Hose, etc.), which has been in litigation since 2013. Right now, the hottest product igniting lawsuits is copper.
Copper pots and pans (or at least copper in color) are the latest sensation in cookware. Big sellers such as Copper Chef (Tristar Products, Inc.), Red Copper (Telebrands Corp.) and Gotham Steel (E Mishan & Sons, Inc (“Emson”)) have spent thousands in marketing dollars to promote these competing products. However, with so many cooks in the kitchen, someone is bound to get burned; and if Keith Mirchandani has it his way, it won’t be Tristar.
On February 21, 2017 Tristar filed lawsuits against Telebrands (and Bulbhead.com LLC) and Emson for patent infringement, trade dress infringement and unfair competition. According to the complaints, Tristar has been marketing its Copper Chef product line since as early as June 2016 and holds three patents for its Copper Chef line, two of which were just issued this month. Tristar has also filed for injunctions to prevent Telebrands and Emson from “making, using, selling [and] offering for sale” the products allegedly infringing on the Copper Chef line. As of today, February 28, 2017, the orders have yet to be granted.
This isn’t the first time these companies have faced off in court, and at least Telebrands has proven time and time again that it has the recipe for stalling litigation so it can continue to sell a product. Telebrands’ secret sauce: the United States Patent Trial and Appeal Board (“PTAB”).
When an action is filed with the PTAB, courts halt litigation until such time that the PTAB makes a ruling on whether the patent in question is valid. In at least two separate lawsuits brought against Telebrands for patent infringement (for its Pocket Hose & Balloon Bonanza products), the company has filed invalidation proceedings with the PTAB challenging the validity of the patents it was accused of infringing. The strategy for invalidation is that if the patent is determined to have been improperly issued then, no infringement could have occurred. Telebrands successfully invalidated some of the patent claims with regard to the balloon product, but the PTAB declined to review the hose patent on the basis that it was determined to be valid. The action is now proceeding in court and could still take years to reach an outcome.
A successful product invites copycats, and Tristar will likely have a long battle on its hands for this one. It will be interesting to see if Telebrands stays true to its methods and attempts to invalidate Tristar’s patents.
It is imperative to have seasoned intellectual property attorneys filing patents and trademarks and diligently monitoring infringing activity as well as advising you on the risks of infringing third party patents. In some instances, it is more cost effective to license a product than to knock it off and face the consequences. A well-planned IP strategy will help product owners to better survive or avoid the messy and lengthy proceedings of IP litigation. Remember, if you can’t stand the heat, get out of the kitchen.
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