Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc.
730 F.3d 494
6th Cir.2013Background
- Groeneveld sued Lubecore alleging trade-dress infringement under 15 U.S.C. §1125(a) for Lubecore’s allegedly copycat EP0 grease pump.
- The products are automated lubrication system grease pumps used in commercial trucks; Groeneveld’s pump is designated EP0 and Lubecore introduced a similar design.
- The trial centered on three elements of product-design trade dress: nonfunctionality, acquired secondary meaning, and likelihood of confusion.
- The jury found in Groeneveld’s favor on all three elements and awarded damages; the district court later entered judgment for Groeneveld and issued a permanent injunction.
- The district court’s Rule 50 ruling was later reversed by the Sixth Circuit which remanded for judgment as a matter of law in Lubecore’s favor on all trade-dress claims and dissolved the injunction.
- A dissent criticizes the majority for discarding evidence of nonfunctionality and consumer confusion and would affirm the district court’s verdict on the trade-dress claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Groeneveld’s pump design nonfunctional so as to be protectable as trade dress? | Groeneveld’s design is nonfunctional due to its distinctive, nonessential ornamental features. | The overall pump design is functional; TrafFix/Inwood standards require functional assessment of the whole trade dress. | No; the design is functional, so unable to support trade-dress protection. |
| Is there a likelihood of confusion between Groeneveld and Lubecore pumps given the branding differences? | Strong secondary meaning and mark strength support confusion; copying signals source affiliation. | Distinct logos/colors and sophisticated buyers negate confusion; labeling differentiates brands. | No; no reasonable jury could find likelihood of confusion given the evidence. |
| Has Groeneveld proven acquired secondary meaning in its trade dress? | Groeneveld’s pump has long-standing recognition and advertising establishing secondary meaning. | Secondary meaning is insufficient where confusion is lacking and branding differences are clear. | Yes, Groeneveld showed secondary meaning, but it does not cure lack of nonfunctionality and confusion. |
| Do Groeneveld’s additional theories (initial-interest confusion, dilution) survive? | Initial-interest confusion and dilution are cognizable under Lanham Act. | These theories are not supported by the record or were not properly pled. | Initial-interest and dilution claims are not viable on this record. In the majority’s view, dilution is not properly before the court. |
Key Cases Cited
- In re TrafFix Devices, Inc., 532 U.S. 23 (U.S. 2001) (functional analysis for product design under Inwood/Qualitex framework; competitive-necessity not required for utilitarian features)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (U.S. 1982) (framework for determining functionality of a product feature)
- Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002) (balance of factors; similarity and strength of mark; catalog designs context)
- Frisch’s Restaurant, Inc. v. Shoney’s, Inc., 759 F.2d 1261 (6th Cir. 1985) (8-factor test for likelihood of confusion; emphasis on consumer perception)
- Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (three elements of product-design trade dress: nonfunctionality, secondary meaning, likelihood of confusion)
- Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410 (6th Cir. 2012) (weight of Frisch factors; strong mark can prevail despite care or labeling)
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (U.S. 2001) (functional vs. esthetic functionality; role of alternative designs)
- Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (U.S. 1995) (definition of functionality and trademark protection scope)