Recently, the U.S. Court of Appeals for the Fifth Circuit issued an opinion in Whirlpool Corp. et al. v. Shenzhen Sanlida Electrical Technology Co. et al., No. 22-40376 (August 25, 2023), affirming the district court’s grant of a preliminary injunction enjoining sales of Shenzhen’s allegedly infringing stand mixers.
Whirlpool filed suit against Shenzhen in the Eastern District of Texas alleging that kitchen stand mixers sold by Shenzhen, through primarily online channels, infringe Whirlpool’s trademark and trade dress rights in its iconic KitchenAid stand mixer. Along with its complaint, Whirlpool filed a motion for preliminary injunction to stop the sale of the allegedly infringing mixers. The district court granted the preliminary injunction after a hearing attended by both parties. Shenzhen appealed.
The Fifth Circuit affirmed. On appeal, Shenzhen had raised three main arguments: (1) the district court lacked personal jurisdiction over Shenzhen due to lack of completed service; (2) Whirlpool’s trademarks are functional; and (3) there is no likelihood of confusion.
The Court rejected Shenzhen’s first argument as being inconsistent with both the plain language of Rule 65 and the Circuit’s past precedent holding that Rule 65(a) does not require service of process on, but only notice to, the adverse party. As there was no dispute that Shenzhen received sufficient notice of the motion for preliminary injunction, the Court found no error.
The Court then assessed functionality under the tests laid out in the TrafFix Devices and Smack Apparel cases. Under TrafFix Devices, the Court found there was no showing in the record that the exterior styling of the KitchenAid mixer was “essential to the use or purpose” of or had any effect on the cost, quality, or function of the mixer itself. Under Smack Apparel, the Court found that the presence of competing products with other designs cut against Shenzhen’s argument because those other designs are all “equally usable” if less aesthetically pleasing. Thus, the Court found no clear error in the district court’s finding of no functionality.
Finally, on likelihood of confusion the Court held that the existence of a “debate” regarding the similarities and differences between the KitchenAid and allegedly infringing products was not enough to hold the district court clearly erred in determining the factor went in Whirlpool’s favor.