IP Litigation

Aggressive Prosecution for Food Waste Product Industry Leader Results in ITC Action Settled After One Day of Trial

Challenge

Fortune 500 corporation Emerson Electric Company manufactures products and provides engineering services for a wide range of industrial, commercial and consumer markets. The industry leader in the food waste products market, Emerson Electric Company, on behalf of its InSinkErator business unit (Emerson), believed that Anaheim Manufacturing Company (Anaheim) was unlawfully selling food waste product disposers, components and packaging manufactured abroad, as well as intentionally copying the unique, well-known and distinctive look of Emerson’s Evolution and Badger series food waste disposers. Emerson was concerned about the damage this could do to its market share, as well as the damage that could be caused to its reputation because the competitive products were inferior.

Anaheim’s products not only looked like Emerson’s food waste disposers, but were also designed to attach to authentic Emerson sink mount assemblies bearing Emerson’s famous InSinkErator trademarks. Emerson believed that Anaheim was intentionally capitalizing on the hard-earned good will of its famous marks and creating great confusion in the marketplace. At the time, Emerson had sold approximately 45 million food waste disposers with the unique look of its Badger series food waste disposers, and more recently, more than 4 million food waste disposers with the unique look of its Evolution series food waste disposers.

In addition, this was a very high profile and critical matter for Emerson because it involved the InSinkErator division, representing hundreds of millions of dollars of revenue to its bottom line. Notably, InSinkErator has been a market leader for decades — their products are that good. Emerson also provides “private label” food waste products, so Anaheim was creating even that much more confusion at the point of selection and sale. As a result, Emerson sought immediate action against Anaheim.

Because Harness Dickey is known for litigators that have actually tried, and won, important cases similar to Emerson’s matter, the Firm was selected as litigation counsel.

Solution

Harness Dickey’s litigation team sprinted into action by filing a complaint with the International Trade Commission (ITC) on behalf of Emerson for design patent infringement, trade dress infringement and inducement of trademark infringement (including dilution and passing off) against Anaheim. Very few law firms offer a truly deep bench of experience in prosecuting and defending ITC related claims, and Harness Dickey is one of them. We understand, from practical experience, that ITC proceedings are far more intensive and specific, and require a much more detailed complaint assembled at an accelerated pace.

The first day of trial was, as expected, intense. Our team, working out of the Firm’s Washington D.C. office, arrived for trial thoroughly researched and fully prepared, as well as ready to vigorously advocate Emerson’s position. Rudy Telscher, lead counsel for Emerson, served as lead trial counsel, ably arguing the facts of Emerson’s position against Anaheim to the judge. As a result of the Firm’s effort and immediately following the first day of trial, the parties agreed to terminate the proceedings, ultimately settling the case on terms favorable to Emerson, thereby protecting its business reputation and market share.

Emerson Electric Co. v Anaheim Technology, Ltd. – In the Matter of Certain Food Waste Disposers and Components and Packaging Thereof, No. 337-TA-838 (U.S. ITC)