A lawsuit over the shape of a thermostat — the round-shaped thermostat design with federal trademark registration for Honeywell International Inc. dating back to 1946, and recently used in a new thermostat from Eco Manufacturing LLC — has gone through its first stages.

According to court documentation, in January Honeywell (Morristown, N.J.) sent a cease-and-desist letter to Eco (Lebanon, Ind.). The letter demanded that Eco “immediately and permanently discontinue all use of any round design for any thermostat or thermostat cover, and any product brochures, Web pages, or other promotional materials promoting or displaying such designs,” or risk litigation.

Eco’s thermostat was displayed and sold at the 2003 International AHR Expo the week of Jan. 27 in Chicago.

Eco maintains that the manufacture and sales of its round-shaped thermostat “does not infringe [Honeywell’s] rights.” Eco said that it started accepting orders for the thermostat on Feb. 1.

The case went to the U.S. District Court, Southern District of Indiana, Indianapolis Division, in May. On June 20, Judge David F. Hamilton denied Honeywell’s movement for a preliminary injunction barring Eco from manufacturing and selling a round thermostat.

Preliminary Decision

According to the court’s preliminary decision, “the court denies Honeywell’s motion for a preliminary injunction because Honeywell is unlikely to succeed on the merits of its claims.”

The decision was based upon previous cases, “which taught that a utility patent is ‘strong evidence that the features therein claimed are functional,’ and therefore cannot be protected by a trademark.”

The decision further states that “Honeywell’s round thermostat configuration was the subject of a utility patent that was issued in 1946 and expired in 1963.”

Honeywell states that it “promptly filed a Notice of Appeal and Emergency Motion for Expedited Hearing in the United States Court of Appeals for the Seventh Circuit. The court has granted both requests, and Honeywell is currently pursuing the appeal.”

Honeywell also states, “We disagree strongly with the district court’s decision denying the motion for a preliminary injunction prohibiting Eco from manufacturing and selling round thermostats. Honeywell has used The Round® thermostat design for 50 years, in which time it has become recognized around the world for its high quality and association with Honeywell.

“Over the years, Honeywell has invested significant resources in this distinctive design, and we will continue to vigorously defend our intellectual property against attempts to infringe on our long-established rights.”

Eco Manufacturing was formed in December 2001, according to president William E. Daniels. He and vice president Steve Peabody are the company’s two employees, Daniels said; the company’s line of thermostats is manufactured in China. Daniels said the company anticipates expanding its lines to include digital and programmable thermostats in the future.

Honeywell was formed in 1927, when Minneapolis Heat Regulator Co. and Honeywell Heating Specialty Co. merged to form the Minneapolis-Honeywell Regulator Co. Its current products include those for aerospace, automation-control, airport and aircraft safety and security, car care, specialty materials, and transportation markets.

Publication date: 07/21/2003