A lawsuit between passive solar heating products manufacturers Solar Sun Rings and Secard Pools has become somewhat contentious and, with mediation having recently failed, it seems it will continue in that vein. In November 2014, Temecula, Calif.-based Solar Sun Rings filed against fellow manufacturer Secard Pools and at least 10 retailers, saying they breached the trademark and trade dress of its passive heating products and engaged in false advertising.
Several high-profile retailers are included among the defendants, as well as specialty pool and spa companies: Wal-Mart Stores Inc.; The Home Depot Inc.; Sears Holdings Corp., parent company of Sears, Kmart and Lowes Companies; and Overstock.com; Pinch A Penny; Pool Supply Unlimited; In The Swim; Poolcenter.com; Splash-A-Round Pools; and Sun Wholesale Supply and Wayfair, LLC.
The defendants were accused of selling products infringing on the trademark for Solar Sun Rings and Solar Sun Squares, passive solar heating products consisting of numerous vinyl circles and squares placed on the water surface so it can absorb the sun’s rays and convert it to heat.
Of the defendants, so far In the Swim and Poolcenter.com have been dropped.
The lawsuit revolves around a Secard product called NoAir Solar Heat Squares. Solar Sun Rings said the name and design of that product is too similar to the plaintiff’s and could confuse consumers.
The plaintiff also claimed that when NoAir Solar Heat Squares are submerged, a sticker with its name dissolves to reveal the name of the plaintiff’s square-shaped product, and that a Secard disclaimer matches verbatim the language on the plaintiff’s and displays the Solar Sun Squares name.
The remaining defendants were included in the case for selling the allegedly infringing product. Solar Sun Rings has requested an injunction from selling Solar Heat Squares.
Secard denied the allegations and, last year, struck back with a counter suit, accusing Solar Sun Rings of false advertising and unfair competition. The counter claim lists Solar Sun Rings and its officers, CEO Lora Rosene, President Richard Rosene, and General Manager/CFO David Bartoli.
Secard takes issue with a claim on its opponent’s website stating that the six magnets found on Solar Sun Rings improve clarity and decrease hardness. Secard quoted an expert hired by Solar Sun Squares, who allegedly expressed skepticism that the magnets perform as advertised. Secard also said a calculator on Solar Sun Rings’ website tells consumers they can get enough coverage of the water’s surface by purchasing fewer of the flat vinyl circular units than are actually needed. In its claim, Secard mentions one more claim that it says is false — that neither water nor chemicals can evaporate through the Solar Sun Rings.
“Secard Pools has been injured and is likely to continue to be injured by the false statements … because consumers will be induced to buy, and have bought, Solar Sun Rings products based on false statements instead of Secard Pools’ passive solar heating products, causing economic loss to Secard Pools,” the company said in court documents.
Secard has made several requests of the court: dismissal of Solar Sun Rings’ initial lawsuit without injunctive relief; a permanent injunction against Solar Sun Rings from making false or misleading claims; the maximum penalties allowed by law against its opponent; that Solar Sun Rings coordinate what it calls a corrective advertising campaign to counter its current claims and pay Secard Pools to do the same; damages equivalent to profits and goodwill that it estimates it has lost; and that Secard Pools be awarded restitution and disgorgement of profits that Solar Sun Rings gained as a result of the allegedly unfair competition.
Solar Sun Rings maintains the claims being disputed by Secard.
“Solar Sun Rings has always had studies supporting its claims,” said the manufacturer’s Beverly Hills, Calif.-based attorney, Sepehr Daghighian. “Solar Sun Rings invests a lot in its patents and technology … all of which have been tested.”
Testing of Solar Sun Rings and Squares were performed at the National Pool Industry Research Center at California Polytechnic State University, San Luis Obispo.
He said Secard’s countersuit was without merit and that company founder Joe Secard essentially said in a deposition that the counter lawsuit was filed in retaliation.
According to court records, at one point Secard said, “They are suing me. I’m fighting back.”
Daghighian said he and his client expect the case to go their way, with Solar Sun Rings receiving financial compensation while Secard is compelled by the court to change its product’s name.
“[Joe Secard] really picked the name so he could get into this market and try to trick people or try to look like he was us,” the attorney said. “That’s the essence of what trademark infringement is. Other than that, Solar Sun Rings thinks they have a superior product and are happy to compete fairly with other companies … but when it comes to picking a name that’s just like ours, that’s unacceptable.”
Secard Pools filed for summary judgment in the original lawsuit. A hearing for that motion is scheduled for January. Barring that, a trial date was set for Feb. 19.
Secard Pools and its legal counsel declined to comment, citing a policy against discussing pending litigation.