[PROPOSED] PERMANENT INJUNCTION ORDER
ROBERT C. JONES, District Judge.
This Court, having duly considered Penn Engineering and Manufacturing Corp.'s ("PEM") Motion for Default Judgment and Permanent Injunction against Defendant Dongguan Fenggang Pinconn Hardware Factory ("Pinconn") (ECF No. 12), hereby enters an order of permanent injunction against Pinconn pursuant to Rule 55(b) of the Federal Rules of Civil Procedure.
Background
PEM manufactures and sells fasteners, fastener components, and fastener installation equipment using the "PEM Trademarks" identified in Schedule A to this Order, and PEM is the owner of valid rights in and to the PEM Trademarks for use in connection with all goods and services recited in Schedule A. (See ECF No. 1 at Exs. 2 and 3).
In addition, PEM also possesses substantial United States patent rights including the two design patents at issue in this case (the "PEM Patents") (see ECF No. 1 at Ex. 4):
• U. S. D768,468 (the "'468 Patent") Metal Pin Fastener; and
• U. S. D656,392 (the "'392 Patent") Panel Fastener.
1. Pinconn's Infringing Conduct
a. Pinconn's Prior Infringement
In November 2015, PEM initiated a trademark and patent infringement action in the Eastern District of Pennsylvania against three Chinese entities: Pemco Hardware, Inc., Dongguan FenggangPemco Hardware Factory, and Shenzhen Pemco Fastening Systems Co., Ltd. (the "Pennsylvania Action") see Penn Eng'g & Mfg. Corp. v. Pemco Hardware, Inc., No. 2:15-cv-6277-GJP (E.D. Pa. filed Nov. 23, 2015). On March 9, 2016, the Court in the Pennsylvania Action granted a preliminary injunction against Defendants. (ECF No. 1, Ex. 1).
b. Pinconn's Infringement in this Case
On or around October 13, 2017, PEM discovered the Defendants had re-surfaced and resumed their infringing activities under a new tradename and new trademarks. Then, on October 18, 2017, Pinconn participated as an exhibiting vendor at the Las Vegas International Fasteners Expo. Pinconn was advertising, displaying, offering for sale, and selling infringing products including those identified in Schedule B to this Order (the "Infringing Products").
On October 18, 2017, PEM initiated the instant action by filing a Complaint for (1) Trademark Infringement; (2) False Designation of Origin/Unfair Competition; (3) Common Law Trademark Infringement & Unfair Competition; and (4) Design Patent Infringement. (ECF No. 1). Default was entered against Pinconn on November 14, 2017 (ECF No. 10). On April 6, 2018, PEM Filed a Motion for Default Judgment and Permanent Injunction. (ECF No. 12). On June 15, 2018, this Court entered an Order granting PEM's Motion for Default Judgment and Permanent Injunction. (ECF No. 14).
Trademark Infringement & False Designation of Origin/Unfair Competition
IT IS HEREBY ORDERED that Defendant, its respective officers, agents, servants, employees, attorneys, and any of their successors and assigns, and all persons, firms and corporations, including subsidiaries of related companies, acting in concert with Defendant are permanently enjoined from:
1. Using the PEM Trademarks in any manner in connection with the Protected Goods and Services and/or related goods and services;
2. Using any mark or tradename that is a colorable imitation of or confusingly similar to the PEM Trademarks in connection with the Protected Goods and Services, and/or related goods and services;
3. Publishing, circulating, distributing, selling, merchandising, or using in any manner (including digital form) any labels, signs, prints, boxes, packages, wrappers, receptacles, advertisements, posters, brochures, handbills, catalogs, publicity releases, magazines, stationary, newspapers, booklets, books, pamphlets, photographs, films, audio recordings, video recordings, T-shirts, and any other items in the possession and/or control of Defendants containing the PEM Trademarks, or any other mark or tradename that is a colorable imitation of the PEM Trademarks; and
4. Using the PEM Trademarks as a metatag, hyperlink, portal keyword, searchable text, or other item associated with any Website including: (1) www.pinconn.com; (2) www.pemcohardware.com; (3) www.pemcomfg.com; (4) www.pemku.com; (5) www.pemcofastening.en.china.cn, or in any manner in connection with any of Defendant's websites.
Patent Infringement
AND IT IS HEREBY FURTHER ORDERED that Defendant and its officers, agents, servants, employees and attorneys, and all other persons acting in active concert or participation with any of them, are hereby permanently enjoined from infringing PEM's United States Patent Nos. U.S.D768,468 Metal Pin Fastener and U.S. D656,392 Panel Fastener (the "PEM Patents") including, but not limited to, making, using, selling, offering to sell, and importing into the United States products covered by the PEM Patents and colorable imitations thereof pursuant to 15 U.S.C. § 283 and Rule 65(d) of the Federal Rules of Civil Procedure.
IT IS FURTHER ORDERED that Defendant destroy any products which infringe upon the PEM Patents.
IT IS FURTHER ORDERED that Defendant destroy or surrender all tooling.
IT IS FURTHER ORDERED that the United States Customs and Border Protection seize all of Defendant's products which infringe on the PEM Patents which are coming into the United States.
IT IS FURTHER ORDERED that Plaintiff PEM be awarded judgment against Defendant Pinconnon for PEM's Complaint for Statutory damages in the amount of fourteen million dollars ($14,000,000).
IT IS FURTHER ORDERED that this Court retains jurisdiction over the parties to the extent necessary to enforce the terms of this Order and the injunctive relief provided herein.
Schedule A
PEM Trademarks
Mark Registration Registration Incontestability Goods & Services
Number Date Date
PEM 732,947 6/19/1962 10/25/1984 Drill bushings and self-clinching
nuts, fasteners, studs and stand-offs
PEM 1,177,822 11/17/1981 8/3/1987 Broaching-type captive fasteners-namely,
broaching-type captive
fasteners with internal threads,
broaching-type captive standoffs
with and without internal threads,
broaching-type captive solder
terminals, broaching-type captive
studs, broaching-type captive panel
fasteners and metallic inserts.
PEM 1,403,759 8/5/1986 8/12/1991 Metal fasteners
PEM 2,758,505 9/2/2003 9/2/2009 Panel fasteners, namely self-clinching,
snap-in floating and
hybrid panel fasteners
889,244 4/14/1970 4/14/2010 Self-clinching fasteners, self-locating
weld fasteners, and self-clinching
drill bushings
1,043,967 7/20/1976 11/9/1981 Presses for installing fasteners or
the like and also for parts of said
presses
1,092,108 7/25/1983 5/30/2015 Panel fastener assemblies and
spring loaded plunger assemblies
1,113,034 2/13/1979 4/23/1984 Electrical terminals and electrical
grounding stand-offs
4,331,371 5/7/2013 n/a Fasteners made of metal, namely,
nuts, weld nuts, studs, pins,
standoffs, rivets and inserts, cable-tie
mounts and hooks for sheet
metal; self-clinching panel fasteners
made of metal or mostly of metal;
panel fasteners and panel fastener
assemblies made of metal or mostly
of metal; sheet-metal fasteners
made of metal; fasteners made of
metal or mostly of metal for
mounting into printed circuit
boards; micro fasteners made of
metal for use in the consumer
electronics industry
PEMEX 937,397 7/11/1972 7/11/2012 Fasteners, i. e., nuts
PEMHEX 781,236 12/8/1964 12/8/2004 Fasteners
PEMSERT 883,650 1/6/1970 1/6/2010 Inserts
PEMSERTER 1,365,248 10/15/1985 6/3/1991 Power-operated presses for
unstalling fastener
PEMSERTER 1,433,571 3/24/1987 7/2/1992 Non-powered hand presses for
MICRO-MATE punching holes and installing
fasteners for use in sheet metal
PEMSERTER and 3,567,528 1/27/2009 2/9/2015 Power-operated presses for
triangle composite installing fasteners
PEM SP 3,270,807 7/31/2007 8/5/2013 Metal fasteners
PEM300 1,444,862 6/30/1987 10/20/1992 Sheet Metal Fasteners
AUTOPEM 4,296,186 2/26/2013 n/a Metal fasteners, namely, nuts, bolts,
screws, rivets, standoffs, clinching
fasteners; metal threaded fasteners
MICROPEM 4,250,883 11/27/2012 n/a Metal fasteners, namely, nuts, bolts,
screws, rivets, standoffs, clinching
fasteners; metal threaded fasteners
AEROPEM 4,298,838 3/5/2013 n/a Metal fasteners, namely, nuts, bolts,
screws, rivets, standoffs, clinching
fasteners; metal threaded fasteners
The "Blue Locking 1,449,260 7/28/1987 10/30/1992 Self-clinching locking nuts
Element Mark"
The "Shoulder Flare 4,037,181 10/11/2011 n/a Metal threaded fasteners, namely,
Mark" panel fasteners with heads of metal
and panel fasteners with heads of
metal and plastic
The "Pedestal Mark" 4,293,597 2/19/2013 n/a Metal fasteners, namely, clinch
fastener for mounting two sheets or
panels in perpendicular orientation
SNAPTOP 1,418,142 11/25/1986 4/2/1992 Metal fasteners used to separate and
hold printed circuit boards
SPOTFAST 3,341,727 11/20/2007 9/30/2013 Metal fasteners, namely, a clinch-attached
stud for joining two metal
sheets
REELFAST 3,002,446 9/27/2005 11/8/2011 Metal fasteners supplied on tape
reels for surface mounting to circuit
boards
Schedule B
Defendant's Infringing Products
PEM's Registered Marks Image of Defendant's Infringing Details of Infringing Usage
Usage
PEM PEMCO Use as a header and a watermark on
numerous web pages — (ECF No. 1,
732,947 Ex. 5).
1,177,822
PEMCO HARDWARE Use on "Company News" of website
— (Id. at Ex. 6).
PEM Family of Marks
PEMCO FASTENING SYSTEMS Use as a header on numerous web
1,403,759 pages (Id. at Ex. 5).
2,758,505
781,236 PEMKU Use on home page with link to
883,650 "Pemku Home" — (Id. at Ex. 6).
889,244
1,043,967 SHENZHEN PEMCO FASTENING Use as a header and watermark on
1,092,108 SYSTEM CO, LTD. numerous web pages — (Id. at Ex. 5).
1,113,034
4,331,371 DONGGUAN Use as the owner of ISO
937,397 FENGGANGPEMCO certification shown on website — (Id.
1,365,248 HARDWARE FACTORY at Ex. 2).
1,433,571
1,444,862 Use as a watermark on numerous
3,270,807 www.pemcomfg.com web pages — (Id. at Ex. 5).
3,567,528
4,296,186 Use as a watermark on numerous
4,250,883 www.pemku.com web pages — (Id. at Ex. 5).
4,298,838 Use as footer on multiple web pages
PENN ENGINEERING PENNENGINEERING (Id. at Ex. 7).
928,124 Use in multiple web pages
PEM (Id. at Ex. s 7 and 8).
Use as footer on multiple web pages
www.pemnet.com (Id. at Ex. 7).
Use as a header and a watermark on
PINCONN numerous web pages — (Id. at Ex. 5).
Use as a footer, header and a
DONGGUAN FENGGANG watermark on numerous web pages —
PINCONN HARDWARE (Id. at Ex. 5).
FACTORY
Use as a domain same and on
multiple web pages — (Id. at Ex. 6).
www.pinconn.com
(Id. at Ex. 9).
U. S. 4,037,181 http://www.pinconn.com/Category/B03/
Shoulder Flare product configuration
1) Assembly Parts/Panel Fastener
Assembly/Flare-in with Flange —
www.pinconn.com/category/B0301/
2) Assembly Parts/Panel Fastener
Assembly/Panel Fastener Assembly
http://www.pinconn.com/Product/List/B0316/
(also covered by US
Patent D656,392)
3) Assembly Parts/Panel Fastener
Assembly/Self-Clinching with
Plastic Head
http://www.pinconn.com/Product/List/B0332/
The "Pedestal Mark" (Id. at Ex. 10).
http://www.pinconn.com/Category/A01/
Turning Parts/Nuts/Threaded Right
Angle Nuts
http://www.pinconn.com/Product/List/A0121/
Reg. No. 1,418,142 (Id. at Ex. 11).
SNAPTOP
http://www.pinconn.com/Category/A03/
Reg. No. 3,404,061 (Id. at Ex. 12).
Square in Square product
configuration http://www.pinconn.com/Category/A01/
Reg. No. 1,089,546 (Id. at Ex. 13).
Dimpled Recess product http://www.pinconn.com/Category/D/
configuration
Penn Engineering's U. S. Exemplary Photograph of Patented Pinconn's Infringing Product
Patent Product
Title: Metal Pin Fastener Ex. 15
D768,468
Turning Parts/Pins and Others
http://www.pinconn.com/Category/A/
Title: Panel Fastener Ex. 17
U. S. D656,392
http://www.pinconn.com/Category/B03/
Assembly parts/Panel Fastener
Assembly/Flare-in with Flange
http://www.pinconn.com/Product/List/B0316/
Schedule C
Search Engines
1. 20SEARCH
2. ACCLAIM SEARCH
3. ALIWEB
4. ALL THE WEB
5. ALTAVISTA
6. AMNESI
7. AOL
8. ASK
9. DOGPILE
10. EBAY
11. EXCITE
12. GIGABLAST
13. GOOGLE
14. GO
15. HOTBOT
16. INFO HIWAY
17. IWON
18. LINK CENTRE
19. LINKS2GO
20. LYCOS
21. MAMMA
22. MSN
23. NETSCAPE
24. SCRUB THE WEB
25. SEARCH.COM
26. SNAP
27. WEBCRAWLER
28. WHAT-U-SEEK
29. YAHOO
30. Any other search engine known by Defendants
