Split Sixth Circuit Finds Grease Pump Design Functional, Rejects $1.2M Trade Dress Award

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By Tamlin H. Bason  

Sept. 16 --A manufacturer of a grease pump cannot prevail on its trade dress infringement claim against a competitor because the design of the pump is functional and there is no likelihood of confusion between the parties' goods, the U.S. Court of Appeals for the Sixth Circuit held Sept. 12 in a 2-1 ruling (Groeneveld Transp. Efficiency, Inc. v. Lubecore Int'l, Inc., 6th Cir., No. 12-3545, 9/12/13).

The majority relied heavily on the Supreme Court's decision in TrafFix to find the design of the plaintiff's pump functional despite the fact that there are numerous alternative designs that the defendant could have chosen. TrafFix, the court said, “makes clear that [the plaintiff]'s argument about the availability of alternative grease-pump designs is misguided.” The focus instead is on whether the plaintiff's design “was substantially influenced by functional imperatives or preferences,” the court said. Finding the design in this case influenced by functional preferences, the appeals court reversed the district court's denial of the defendant's motion for judgment as a matter of law.

Writing in dissent, Judge Helene N. White said that she would affirm the lower court's $1.2 million dollar trade dress infringement award and the injunction barring the defendant from selling its competing grease pump. The court fundamentally misconstrued TrafFix, White argued.

Pump Design Used Since the 1980s

Ohio-based Groeneveld Transport Efficiency, Inc. has made automated lubrication services (ALS) devices for commercial trucks for over 40 years. In the 1980s, Groeneveld began marketing its EPO pump, which is a grease pump used in ALS devices.

Lubecore International, Inc. is a Canadian company that was founded in 2007 by a former Groeneveld employee. It began selling a pump that looked similar to Groeneveld's EPO pump in Canada in 2007, and its first sales of the pump in the United States occurred the following year.

Groeneveld alleged that Lubecore was trying to confuse consumers by selling a grease pump that was “virtually identical” to Groeneveld's EPO pump. Groeneveld filed a lawsuit in the U.S. District Court for the Northern District of Ohio. The complaint asserted six causes of action against Lubecore, including Lanham Act claims of trade dress infringement, false advertising and unfair competition. The complaint also asserted a number of state law claims. Groeneveld sought monetary damages and an injunction barring Lubecore from selling its grease pump in either Canada or the United States.

The district court denied both parties' motions for summary judgement and a seven-day jury trial was held in October 2011. After the presentation of Groeneveld's proof, Lubecore moved for JMOL. The court granted Lubecore's motion with respect to all claims except for the trade dress infringement action.

The trade dress claim was then submitted to the jury and a verdict was returned in favor of Groeneveld. Finding Lubecore's infringement willful, the jury awarded Groeneveld $1,225,000 in damages.

Lubecore then renewed its pending JMOL motion and also moved in the alternative for a new trial pursuant to Fed. R. Civ. P. 59. Both motions were denied and the district court entered judgment in Groeneveld's favor. The district court also issued an injunction barring Lubecore from selling its pump within the United States.

Lubecore appealed and Groeneveld cross-appealed, seeking an extension of the injunction to bar sales in Canada as well as the United States.

Standard for Trade Dress Protection

“To prevail on a claim for the infringement of a product-design trade dress, a plaintiff must prove that its allegedly infringed product design (1) is nonfunctional, (2) has acquired secondary meaning, and (3) is confusingly similar to the allegedly infringing product design,” the court said, citing Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 414, 80 U.S.P.Q.2d 1608 (6th Cir. 2006).

The court noted that these three elements are not affirmative defenses, but rather are criteria that a plaintiff asserting trade dress protection must prove in order to prevail on its trade dress infringement claim under 15 U.S.C. § 1125(a)(3). In this case, the parties dispute only elements one and three, and therefore the court confined its review to only whether the design of the EPO pump is functional, and to whether there is a likelihood of confusion between the EPO pump and Lubecore's pump.

TrafFix Narrowed Competitive Necessity Test

The court noted that Groeneveld's own evidence, including the testimony of two of its witnesses, “makes clear that not only the basic manufacture of the grease pump's components, but also their size and shape, are closely linked to the grease pumping function.”

Groeneveld argued, however, that the fact that none of its competitors copied its design--prior to Lubecore--demonstrates that the design is not necessary to compete in the ALS market. This argument, the court said, is foreclosed by TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 U.S.P.Q.2d 1001 (2001).

In TrafFix, a unanimous Supreme Court reversed a ruling by the Sixth Circuit that had allowed trade dress protection for a sign stand configuration that was disclosed in an expired patent. The Sixth Circuit's decision had been premised in part on its determination that “[i]t takes little imagination” to develop alternative designs for the traffic sign stand. As a result, the Sixth Circuit had determined that the design was not a “competitive necessity” and it therefore reversed the district court's dismissal of the plaintiff's trade dress infringement claim.

The Supreme Court, however, determined that the Sixth Circuit's invocation of the competitive necessity doctrine was in error. According to the court in this case, TrafFix stands for the proposition that competitive necessity is an appropriate consideration only in cases of aesthetic functionality and not in cases of utilitarian functionality.

TrafFix Devices makes clear that Groeneveld's argument about the availability of alternative grease-pump designs is misguided,” Judge Ronald Lee Gilman said. “The issue is not whether Lubecore could have designed a grease pump with a different appearance; the issue is whether Groeneveld's design 'is essential to the use or purpose of the article or if it affects the cost or quality of the article,' ” the court said, quoting the functionality standard that was originally set forth inInwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 U.S.P.Q. 1 (1982).

Here, “the question is whether the overall shape of Groeneveld's grease pump was substantially influenced by functional imperatives or preferences,” the court said.

“We accordingly reject Groeneveld's invitation to drift back into the error of inquiring about possible alternative designs,” the court said.

Because the existence of alternative designs is not a relevant inquiry, Groeneveld cannot establish that the design of its grease pump is not functional, the court said. As a result, the district court erred by not granting Lubecore JMOL with respect to the trade dress infringement claim, the court said.

By terminating the injunction, the court rendered Groeneveld's request to extend the injunction to Canada moot.

Branding Makes Confusion Unlikely

“In the present case, Groeneveld's and Lubecore's logos and trademarks appearing on their respective product designs are unmistakably different,” the court said. “And the evidence is undisputed that the same logos appear on the parties' sales and marketing literature. In light of such a stark visual difference in branding, no reasonable consumer would think that the two grease pumps belong to the same company,” the court said.

Additionally, purchasers of grease pumps are knowledgeable and sophisticated mechanics who are likely to exercise due care when making a purchasing decision, the court said.

On the basis of these factors alone, Groeneveld has failed as a matter of law to establish a likelihood of confusion, the court said. The court nonetheless applied the eight-factor likelihood of confusion analysis that was set forth in Frisch's Restaurant, Inc. v. Shoney's, Inc., 759 F.2d 1261, 225 U.S.P.Q. 1169 (6th Cir. 1985).

Groeneveld arguably demonstrated that its mark was strong, that the parties were related and that the pumps are sold in similar channels of commerce, the court said.

“But these latter factors standing alone do not raise a triable issue of fact regarding the likelihood of confusion in the absence of any evidence showing that a potential consumer exercising ordinary care would confuse the grease pumps in question,” the court said.

The Sixth Circuit reversed the district court's denial of Lubecore's motion for JMOL and remanded with instructions that judgment be entered in Lubecore's favor on the trade dress infringement claim.

Judge Richard Allen Griffin joined the court's opinion.

Dissent: Court Misconstrued TrafFix

As an initial matter, “Whether a product feature is functional is a question of fact reviewed for clear error,” White said in dissent. “We must view the evidence in the light most favorable to Groeneveld, cannot reweigh the evidence, and owe substantial deference to the jury verdict,” she said.

In addition to failing to give adequate deference to the jury's verdict, the court also misinterpreted precedent, White said.

“Under TrafFix, the possibility of alternative designs cannot render a trade dress non-functional where it is otherwise functional under Inwood,” the dissent noted. White added:

The majority has morphed this simple principle into a holding that evidence regarding the possibility of alternative designs is irrelevant to the determination whether a design is functional. TrafFix does not so hold.  


Rather than standing for the broad proposition that the competitive necessity test is inapplicable when a design is alleged to contain utilitarian functionality, TrafFix instead counsels that if a design is otherwise found functional then a court need not consider the existence of alternative designs, White said.

In this case, White was satisfied that Groeneveld had introduced evidence that its design was not functional. Indeed, “The evidence supports a finding that the pump's overall configuration was designed to look distinctive in the industry rather than due to functional concerns,” White said. She would have affirmed the district court's denial of Lubecore's motion for JMOL.

White said Groeneveld's motion to extend the injunction to bar sales in Canada was not moot. “Nevertheless, it is without merit,” she said. Groeneveld did not introduce evidence that would justify extraterritorial application of the Lanham Act, White said, and therefore a federal district court has no jurisdiction to extend the injunction to bar Canadian sales of Lubecore's grease pump.

Groeneveld was represented by Deborah J. Michelson of Miller Goler Faeges, Cleveland. Lubecore was represented by Thomas Leo Anastos of Ulmer & Berne, Cleveland.


To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www.bloomberglaw.com/public/document/Groeneveld_Transport_Efficienc_v_Lubecore_International_Inc_Docke.

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