Rubbermaid v. Contico Intern.

Decision Date15 September 1993
Docket NumberCiv. A. No. 93-049-H.
Citation836 F. Supp. 1247
CourtU.S. District Court — Western District of Virginia



Gregory Thomas St. Ours, Phillip C. Stone, Daniel Leroy Fitch, Wharton, Aldhizer & Weaver, Harrisonburg, VA, Edward G. Greive, Phillip L. Kenner, Douglas J. Hura, Renner, Kenner, Greive, Bobak, Taylor & Weber, Akron, OH, for plaintiff.

Douglas Tod Stark, Harrison, Thumma & Stark, P.C., Harrisonburg, VA, Brad Winters, Roman P. Wuller, Thompson & Mitchell, St. Louis, MO, for defendant and counter-claimant.


MICHAEL, District Judge.

Plaintiff Rubbermaid Commercial Products, Inc. ("Rubbermaid") is a Delaware corporation with its principal place of business in Winchester, Virginia. Defendant Contico International, Inc. ("Contico") is a Missouri corporation having its principal place of business in St. Louis, Missouri. Rubbermaid's complaint is for patent infringement, trade dress infringement and unfair competition in violation of § 43(a) of the Lanham Act, and common law trademark infringement. The dispute arises out of Contico's production, marketing, and sale of its "Huskee Squares" trash receptacle, which Rubbermaid alleges to be substantially similar to Rubbermaid's "Square Brute" receptacle. This court has jurisdiction of the subject matter of this action by virtue of 28 U.S.C. §§ 1332 and 1338, and venue is proper under 28 U.S.C. §§ 1391(c) and 1400(b).

The matter is now before the court on Rubbermaid's motion for a preliminary injunction that would enjoin Contico from making, using, or soliciting for sale any products —particularly, the Huskee Squares line—that infringe the Square Brute patents, trademark, trade dress, or advertising. A hearing was held on the motion on July 7 and 8, 1993. Pursuant to Fed.R.Civ.P. 52, the court will now undertake to set forth its findings of fact and conclusions of law based on the evidence and argument adduced from the parties on Rubbermaid's motion.

I. Findings of Fact
A. Development and Marketing of the Square Brute

Rubbermaid employs 60 people in the new product development section of its refuse products division, which turns out roughly 12 new products per year. The company employs a four-phase development process, from initial market research to customer input and design, through preliminary engineering and, finally, to capital acquisition, manufacture, and marketing.

The market research phase typically takes from 6-10 months of the 2 years required on average to develop a new product fully. Beginning with Phase I in the mid-to-late 1980's, Rubbermaid identified a need among its customers for a square refuse container. The thought was that a square container would be more space-efficient than the round bins then available.

Rubbermaid set out to do more, however, than merely "square" its round container. For the new product to return Rubbermaid's investment adequately, it needed to be proprietary to Rubbermaid. The pre-manufacture development costs, based on hours devoted to the product over a 14-15 month period, exceeded $95,000. The tooling expense for the molds used to manufacture the new square bin were $1.1 million. The bin is manufactured in 28, 40, and 50 gallon sizes, and in a number of colors. These colors are more or less standard across the industry.

One means by which Rubbermaid sought to make the Square Brute proprietary was to incorporate in it a nesting feature in the side shoulder portion of the bin (on the two sides without handles), so that the handles of adjacent bins would fit inside a kind of pocket in the sides of the first bin. The aim was to allow the Square Brutes to line up more closely together, which was in keeping with the space-saving goals animating the Square Brute project.

The nesting feature became the subject of a utility patent secured by Rubbermaid on February 9, 1993, No. 5,184, 836. Square Brutes manufactured prior to that time, at least by the time Contico came out with the Huskee Square in 1991, bore a "patent pending" imprint regarding the nesting feature. At the preliminary injunction hearing, Contico conceded that its initial Huskee Squares model, manufactured until March, 1993, and sold as late as May or June, 1993, contained a nesting feature similar to the patented feature. Contico's most recent catalog contains pictures of the original Huskee Squares in connection with advertising for a cart to carry the Huskees; the catalog does not suggest that the old Huskee Squares are still available.

Rubbermaid did not warn Contico of the infringement until institution of this action in June, 1993, though Rubbermaid had been aware of the initial Contico Huskee Square since the Summer of 1991. Contico has voluntarily discontinued that product, and modified its current square container to delete the nesting feature.

Contico's discontinuation of its initial Huskee Square product, however, does not resolve this dispute. Indeed, Rubbermaid took a number of other steps to protect its new product from competition. These steps amounted to designing the Square Brute so as to give it an appearance unique enough to merit legal protection, either as trade dress or as a patented design.

The Square Brute design contains a number of elements serving ornamental as well as functional goals. The most general of these are the overall appearance, shape, and proportion of the product, which were intentional design features meant to distinguish the Rubbermaid square bin.

The overall appearance is achieved by combining a number of specific elements. There is a "shoulder," or protruding band, around the top of the bin which extends around all four sides, except where interrupted by single "recesses," or indentations, which also appear on all four sides. These recesses are centrally located and extend the length of the bin's sides. As they extend downward from the lower edge of the shoulder, they expand in width from slightly wider than the width of the handles (which is the same as the width of the nesting pocket on the non-handle sides) to somewhat less than the full width of the bin at its base. The recesses diminish in depth as they go down toward the base. On all sides, the recesses also extend up from the bottom of the shoulder through the shoulder itself to the bin's rim, though along this portion of the sides, they are of uniform width and depth. The width at this portion of the recess on all sides is the same as the width of the handles, and the depth is that of the shoulder itself.

The Square Brute's handles are opposed, and run the length of the shoulder, measured top to bottom. The lid, which can be sold with the bin as a unit, is slightly crowned and features a raised square pedestal in the middle. The color of the lid, at least in the graycolored Square Brute model in evidence, is somewhat darker than the bin itself. The handles on the lid and bin alike contain raised "piping," and the bracket holding the bin handle itself features a kind of hooked design which gives the lower portion of the bracket a barbed appearance. The rim of the bin is slightly thicker at the corners, and at the places corresponding to where the nesting pockets and handles are located on the sides of the bin.

All of these elements are depicted in the drawings of the Rubbermaid product that are the subject of a design patent secured by Rubbermaid on September 29, 1992, No. 329,930. The design patent does not state what the patent examiner took to be sufficiently novel about the design to merit patent protection. Rubbermaid produced drawings, however, of the prior art considered by the examiner. The drawings depict all of the key ornamental features incorporated in the Square Brute, but no one submission combines those elements in the manner of the Square Brute.

Contico placed in evidence a number of other renditions of prior art not before the examiner when Rubbermaid's design patent issued. In the main, these contain features the examiner already considered in the art that was before her, and are thus duplicative. At least two of Contico's examples of prior art, however, are noteworthy. They not only contain some of the Square Brute's design elements, but combine those elements in a way that appears at least superficially similar to the way those elements are combined to present the overall appearance of the Square Brute.

The first is the "Aladdinware" bin, designed in 1971 by the same individual who later designed the Contico Huskee Square. The Aladdinware product is a square bin with detachable lid, opposing handles, and — most importantly — flared recesses on each side. The recesses flare out in width as they approach the bottom, as do the Square Brute's, and, like the Square Brute, the Aladdinware product is designed such that the base of the bin is smaller than the top, giving it a slightly graduated appearance. On the other hand, the lid and handle are entirely different from those of the Square Brute, there is no shoulder around the top of the bin, the recesses terminate abruptly before they reach the bottom of the bin, and the recesses do not appear to diminish in depth along the length of the sides. In short, the Aladdinware piece incorporates a number of features that the examiner considered, but combines them in a way that only partially anticipates the Square Brute. Similar combinations of elements appear in the art considered by the patent examiner.

The same conclusion follows from an analysis of another of Contico's submissions, its own "Tuff Can" square container, which appears in a Contico catalog sometime prior to the development of the Square Brute. Like the Square Brute, this bin has a shoulder and centrally located side recesses that grow somewhat wider toward the bottom and diminish in depth until they actually reach the bottom. In addition, the...

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