General Motors Corporation and Am General, LLC v. Lanard Toys, Inc. And Lanard Toys Limited

GENERAL MOTORS CORPORATION General, LLC,

and AM Plaintiffs-

Appellees, TOYS, Toys

LANARD INC.

Limited, Defendants-Appellants.

No. 05-2085. Appeals,

United States Court of

Sixth Circuit.

Argued: July 2006.

Decided Filed: Oct. RYAN,

Before: MARTIN Circuit MARBLEY, Judges; Judge.* District RYAN, 422), (p. separate J. delivered concurring opinion.

OPINION MARTIN, JR., F. Circuit BOYCE Judge. court, district in a trademark suit infringement against filed Toys by Corpora-

Lanard tion, summary judgment granted for Gen- denying Motors on claims while eral summary judgment Lanard’s motion for laches based on affirmative defenses of estoppel. appeals Lanard now those is over dispute decisions. The a series produced by vehicles called toy “THE ATK” which CORPS! resemble produced Hummer vehicle General Mo- discussion, following tors. Based on the affirm the district court’s decisions. I. Development

A Hummer 1980s, govern- In the the United States West, A. AM pro- ARGUED: Greenebaum ment commissioned General to John McDonald, Cincinnati, OH, military Ap- high mobility Doll & for a The duce vehicle. Cantor, High Brooks & pellants. Mobility A. result called the Multi- Mark Pruitt, HMMWV, Kushman, Southfield, MI, R. or which was David Wheeled Vehicle IN, Daniels, Bend, commonly & for to as the “Humvee.” Baker South referred West, Appellees. garnering recognition through BRIEF: A. After its ON John Cincinnati, War, McDonald, use in the first Gulf AM General Greenebaum Doll & OH, III, Anne to a civilian William T. Robinson Carrie decided introduce version 1992, Shufflebarger, Doll & Mc- Humvee in known the Hum- Greenebaum as Donald, KY, Covington, Appellants. design for mer. of both Humvee Cantor, Lorelli, A. & grille Mark Marc Brooks Hummer included a front with seven Kushman, Southfield, MI, Pruitt, slots, pill-capsule shaped David R. vertical bookend- Sullivan, A. Gallagher, by headlights approximately Edward T. ed round Gerard IN, Daniels, Bend, to AM equal Baker & South size the slots. General re- registered Appellees. ceived a trademark for * Ohio, sitting Algenon Marbley, by designation. The Honorable L. United Judge States for the District District Southern 5, using all on March 1996. AM Gen- of AM General’s design trademarks. grille Lanard responded stating 900 Hummers in that never more than did eral sold 1999, not use- or any year from to Hummer Humvee calendar either $100,000. packaging. names on . tag to a of over its price due part 1999, AM trans- December of General In 1998, In AM November General sent a to the Hummer brand General Mo- ferred demand letter to regarding Lanard property as well as all intellectual tors ATK design.” vehicle’s “nose Lanard re- rights in the civilian while main- vehicle sponded by comply refusing with the taining rights all Humvee name and demand to stop producing toy. In transfer, military After the vehicle. 2000, November General Motors contacted H2, Motors created smaller General Lanard to inform it that military Lanard’s of the Hummer. version toy vehicles on the infringed Hummer ve- produced by hicle General Motors. La- Lanard’s Interactions with the Hum- B. again rejected nard that contention and brands vee/Hummer toys. produce continued .On March 20, 2001, filed Toys, began selling In Inc. General. Motors suit claim- ing toys toy infringed vehicle called the “MUDSLINGER.” Lanard’s on its rights to the military grille was modeled after the Humvee Hummer vehicle and It vehicle, grille design. including a similar The box for the Humvee. History C. Procedural toy “Hy- as a MUDSLINGER labeled sales records Humvee.” Lanard’s

per complaint alleged General Motors’s had limited that the MUDSLINGER infringed show toys on its Hummer 1996, including no between 1992 and sales grille design, resulting vehicle and years for the of 1994 and 1996. sales trademark trade in- infringement, July AM General contacted Lanard fringement, dilution, and common law regarding the use of their trademarked trademark infringement. July On toys. of “Humvee” on its After cor- 2003, name complaint against Lanard filed a AM respondence parties, the two La- between declaratory seeking judgment agreed using the stop nard to “Humvee” to rights AM General’s the Humvee to toys, on its but continued manu- General, name grille design. vehicle and AM on toy. facture the There is 29, 2003, MUDSLINGER September filed a counterclaim dispute parties between the as to whether against infringement Lanard on for its agreed with AM General that La- 2004, In April Humvee trade all dress. could continue manufacture nard to MUD- parties summary judgment moved for toys. SLINGER granted summary judg- the district court ment for AM and General General Motors 1997, February In AM Lanard contacted on their and trademark in- regarding putting the “Humvee” General (cid:127) The district court fringement claims. dis- Lanard, on at the toys. name back its except missed all of defenses time, producing military a number of estoppel. laches and toys, the “THE CORPS! including vehicle 10, 2005, jury a in this The From March 8 to trial ATK” vehicle at issue case. and the issue of damages vehicle has a to that of was held on ATK similar jury In laches awarded response estoppel. the MUDSLINGER vehicle. letter, a damages eight to as to Lanard’s AM General sent a ($340,- of the ATK stop percent royalty to Lanard to on sales cease-and-desist letter 412 allegedly the

330), $900,000 infringing from Lanard’s the use of trade plus over advisory in an Acting capacity, profits. likely among mark to “is cause confusion estop- jury laches denied Lanard’s origin regarding consumers of the timely appeal Lanard filed a pel defenses. goods parties.” Daddy’s offered 10, August to this on Court Stores, Junky Big Daddy’s Music Inc. v. Center, 275, F.3d Family Music 109 280 II. (6th Cir.1997) 1114). § 15 U.S.C. (citing Judgment Summary A. Standard confusion, to order determine the eight Court examines so-called Frisch a district This Court reviews “(1) grant summary judg plaintiffs to strength court’s decision of the factors: City v. East ment novo. Bennett (2) de mark, goods relatedness of the or ser Cir.2005). (6th 810, F.3d 817 pointe, 410 (4) vices, (3) marks, similarity of the evi only appropriate is “if Summary judgment (5) confusion, dence marketing of actual in depositions, answers-to pleadings, (6) used, likely degree of purchas channels file, terrogatories, and admissions to (7) care, intent er the defendant’s in select affidavits, any, if gether show with mark, (8) ing expan likelihood of any there is as to materi genuine no issue product sion of the lines.” Gibson Guitar moving party al fact and that is enti Guitars, LP, Corp. v. Paul Reed Smith a matter of law.” judgment tled Cir.2005) (6th 539, (citing 423 548 F.3d 56(c). is gener “The burden Fed.R.Civ.P. Rests., Inc. Elby’s Big Boy v. Frisch’s moving to show no ally party on the Steubenville, Inc., (6th 642, 670 F.2d 648 exists, fact genuine issue material but Cir.1982), denied, 916, cert. 459 U.S. 103 may discharged by be ‘show burden (1982)). 231, S.Ct. 74 “These L.Ed.2d 182 is, ing pointing out to district —that imply precision, no factors mathematical court—that there is an absence evidence ” simply guide help but are determine support nonmoving party’s case.’ likely.” (citing confusion Id. whether Bennett, (quoting at 410 F.3d 817 Celotex Group, Mktg. Inc. v. Homeowners Home Catrett, 317, 325, 477 Corp. v. U.S. 106 Inc., (6th (1986)). Specialists, 931 F.2d “In 91 L.Ed.2d Cir.1991)). motion, judgment As we reviewing summary have noted: weighing credibility judgments question This Circuit considers Rather, evi prohibited. evidence are there is a likelihood of whether confu- light in the most dence should be viewed question sion fact a mixed and law. party.” non-moving to the Id. favorable findings Factual must be made re- Lobby, (citing Liberty Anderson spect to the likelihood of fac- confusion 242, 255, 106 S.Ct. U.S. However, tors set out the fur- above. (1986)). “Thus, the L.Ed.2d 202 facts and given ther determination of whether a any drawn from inferences can be set of foundational facts establishes a facts, light those must be viewed legal likelihood of is a conclu- confusion non-moving party.” to the most favorable presented sion. Because this is case Elec. Indus. (citing Id. Matsushita Co. summary us grant judgment, after a 574, Corp., Zenith 475 106 Radio U.S. our task is whether determine (1986)). 1348, L.Ed.2d 538 correctly

District held Court that no B. Claim Infringement Trademark genuine fact pre- issues material were regarding sented the likelihood of confu-

To demonstrate trademark in fringement, plaintiff must show that sion factors. 11 (citing quires

Id. at 548 n. Homeowners that the district court express make 1107). Group, 931 F.2d at findings factual toas the Frisch likelihood- of-confusion factors. 109 F.3d at 280. 1. The District Court’s Treatment of said, With that the district court erred in the Frisch Factors not conducting proper discussion of the The district court held that La However, Frisch factors. because we re- grille design nard’s ATK vehicle infringed view a summary judgment novo, motion de Design on the Hummer Nose trademark not, district court’s silence is standing (Trademark 1,959,544). pri No. alone, a reversible error and we must now mary objection summary judgment to the conduct a de novo review the likelihood- against infringement them on the of of-confusion factors. the ’544 trademark was the failure any district court to discuss of the Frisch 2. Likelihood of Confusion judgment. factors all of “[N]ot these supra, As discussed there are may particularly helpful factors be in any eight likelihood-of-confusion factors which given case. But a thorough analytical and weigh and, we must to determine confusion treatment must attempt nevertheless be therefore, trademark infringement. Upon Stores, ed.” Daddy’s Junky Music record, review the we find there to be argues F.3d at 280. Lanard that no such sufficient grant evidence to summary judg “thorough analytical and2 treatment” was ment in favor of General Motors on the given infringement to the trademark claim issue of a likelihood-of-confusion. The in this case. responds by General Motors “strength of the mark” heavily factor fa “[tjhis noting judg Court reviews Motors, vors General as the trademark in ments, opinions,” Big In re Rivers question federally has registered been (6th

Elec. Corp., 355 F.3d Cir. places General Motors grille of a Hum 2004), argues that “there is no need prominently mer within a number of its for a analysis detailed because all factors advertisements the vehicle. The “simi favor a likelihood of confusion.” Despite larity of the marks” and the “defendant’s contention, General Motors’s Lanard’s ar selecting intent in the mark” heavily both gument appears to be a correct one. Motors, favor General as there is undisput Daddy’s Junky Music Stores ed evidence that the of the front advises a “thorough court to conduct a grille toys of Lanard’s copied directly was analytical treatment” of Also, the Frisch factors. from the Hummer vehicle. the “like may district court have ly degree purchaser conducted care” favors Gener treatment, such a given Motors, but it has no al product question indi as the is a analysis cation of its reasoning toys. what highly unlikely series of It is that a adult, used to arrive at its conclusion in either its child or toy, the selection of a will order, or transcript summary carefully evaluate whether the Hummer- judgment hearing. This leaves a actually review like vehicle from the maker of ing court determining little to work with in Hummer or another source of goods. infringement whether the trademark They merely recognize claim grille will deserving of judgment as a matter of shape, recognize general shape, law. Daddy’s Junky Music Stores purchase recognition. re- based on that The present 2. General Motors and AM General a Plaintiffs in this case as General Motors. responding ap- necessary, unified front in distinguish to Lanard’s Where will between Therefore, peal. we will refer to both of the AM General and General Motors. 414 (“Due Stores, the diffi- 109 F.3d at 284 goods the and services” of

“relatedness Motors, of culty securing of evidence actual confu- weighs in favor of General also sion, closely rarely to the lack is related a of such evidence toy quite the car is sum, the trade- the registered significant.”). weight actual car on which factors of finding of is found. The a a likelihood of grille mark the factors favor of summary judg- used” “likelihood “marketing channels and convinces us that confusion case, do not expansion product despite of lines” in this appropriate of ment was case. strongly party adequately either in this failure to favor the district court’s how appears to be no There evidence discuss the Frisch factors. might product for either marketing

the Trade Dress Claim C. overlap, General states and while Motors toys, making Hummer has considered and trade dress Trademarks is proof company there is no the real separate causes of action are and distinct seriously considering possibility. this Act, § under the Lanham U.S.C. Guitar, 423 at 547. seq. et Gibson F.3d only is that remaining factor by the Trade dress has been described actual of “evidence of confusion.” “ ‘design Supreme packag Court as the or argues survey by used Mo that a General has ing product’ acquired of a which actual tors demonstrate confusion ‘secondary identify meaning’ sufficient ‘to actually the vehicle’s focused on overall or product the with its manufacturer dress, trade the in the not trademark ” Devices, Id. (quoting source.’ TrafFix grille, an which assertion General Mktg. Displays, Inc. v. 532 U.S. only con proof concedes. The of actual (2001)). 1255, 149 L.Ed.2d 164 Mo presented by sumer confusion image to the Trade dress refers purchase tors is K-Mart order form appearance product. of a It em- overall Toys a screen-shot from Amazon.com’s arrangement identifying bodies section, “R” Us both which list characteristics or decorations connected toys as “Humvees.” What General Motors product, by packaging or whether acknowledge fails to is mere use that the otherwise, make[s] the source [that] by does of the Humvee name retail stores product distinguishable the from anoth- in inherently not mean that Lanard has ... its sale. Trade promote[s] er fringed grille trademark of the image prod- the total of a dress involves design grille or is the itself may uct and include such as features reason for the confusion. Mo As General size, combinations, shape, color or color acknowledge, tors must the confusion texture, even graphics, particular or or “R” from Toys K-Mart Us could stem techniques. sales toys and not overall exterior omitted). (internal n. Id. at 547 citation necessarily grille In or design. from confusion, prove party seeking der to actual the confu A recover by a ques infringement prove sion must from the must stem mark (1) case, grille design. tion—in Given of the evidence that preponderance (2) functional; evidence, is trade uncertainty in this we hold trade dress fac in the marketplace that the of actual confusion” dress is distinctive “evidence although acquired “secondary meaning,” tor does either has there party, not favor by indicating goods; neither factor the source of would this be determinative (3) product on the the trade of the accused overall issue the likelihood-of- Stores, Daddy’s Junky confusingly confusion. Music similar. Wal-Mart See Bros., Inc., 205, 529 U.S. focus on the overall look Inc. v. Samara of a product permit 146 L.Ed.2d 182 does not a plaintiff dispense to (2000). Lanard is the issue of with an silent on articulation of the specific ele- toys the trade comprise whether dress of its is ments which its distinct dress. confusingly similar a precise to the trade dress as- Without such of expression the by scope General Motors and AM Gener- character and of serted the trade claimed dress, difficult, litigation al. silence is taken as a concession of will This be infringement. of trade dress courts be this element will unable to how evaluate unique therefore review wheth- unexpected We must de novo the ele- design was material of fact as to er there issue ments are the relevant market. the remaining each of two elements. The Forms, Landscape Inc. v. Cas- Columbia that district court held Lanard’s “CORPS! Co., (2d Cir.1997). cade 113 F.3d ATK” vehicle violated the Hummer/Hum- General argues Motors it met vee trade dress as a matter of law. burden its summary judgment brief

when it identified the trade dress elements Ownership 1. Elements and Trade as “the appearance exterior styling Dress the vehicle which includes the hood, grille, slanted and split raised wind- addressing application Before the shield, doors, rectangular squared edges, elements, infringement trade dress we etc.” the district While court did not re- challenge first address must Lanard’s peat this list as the specific dress trade ownership both the of the Hummer and which infringed upon, we hold trade Humvee dress and what that trade is to fulfill sufficient the ele- “discrete comprised argu- dress is of. Lanard’s ments” requirement of a claim. trade dress be up ment can summed in two state- only Lanard’s dispute that this First, court, ments. neither the district description by General Motors not an is General, AM nor General listed acceptable list of “discrete elements” in appropriate constituting elements “etc.” at descrip volves the the end of the protected Second, trade dress. dis- requiring tion. In a list of ele “discrete inappropriately togeth- trict court lumped ments,” looking are “vague avoid er the trade dress of the Hummer civilian indeterminate references to ‘overall (owned Motors) by vehicle General or ‘look’ appearance’ plaintiffs packag (owned military Humvee vehicle McCarthy ing.” § 8:3. General), thereby many AM on Trademarks prejudicing end, question is or whether not arguments against coherently “the parties court and the de infringement. what exactly fine the trade consists solely “[I]t will not do to iden of and determine whether that trade dress litigation tify in ‘the if doing combination as trade is valid what the accused is Rather, dress.’ elements an infringement.” discrete Id. Based on list of Motors, up which make should presented by combination be elements separated out and exactly they identified in list.” can be are understood what (4th McCarthy § 8:3 looking protect. marking The “etc.” Trademarks ed.2001). argues General Motors that the ignored listing must be such a as it does properly any trade dress was identified as the in define further element to be appearance “exterior styling” cluded in the trade dress. See William question. However, vehicles E.B. Jr. & Strunk, White, Elements 416 (“In

Style 2001) (4th the prising writ- common elements between 46 formal ed. misfit.”). listing permissible. the those vehicles is ing, etc. is a Because as vague provides exact details is not and Functionality Trade Dress 2. protect, to to what General Motors seeks by General find elements listed the challenges also wheth exactly to Motors to sufficient define be case is protected the trade dress er Humvee the nonfunctional, what constitutes a actually claiming Hummer/ that as dress. trade feature, protected functional it cannot be Devices, under trade dress law. TrafFix is that argument Lanard’s second Marketing Displays, Inc. v. 532 U.S. dress treated the trade the district court 1255, 23, 29, 121 149 L.Ed.2d 164 S.Ct. from Mo claims AM General and General (2001). A na trade dress’s nonfunctional the court re tors as same. district by be the assert proven party ture must summary order judgment ferred its protection. the trade 15 U.S.C. ing dress as Trade Dress” the “Hummer/Humvee 29, 1125(a)(3); 121 TrafFix, § 532 at U.S. the trade on which the ATK vehicle dress S.Ct. com infringed. plaintiffs The two also functional, product feature is [A] Hum bined trade dress claims of the trademark, a if it is cannot serve as their throughout mer and the Humvee purpose essential to the use or summary subsequent judgment brief and quality article or if it affects the cost or However, design brief. elements reply is, article, if of the exclusive use identical, by of each are as admitted to not a put competitors the feature at would representative: an AM “The General significant non-reputation-related disad- certain ele- HUMVEE contains vantage. Hummer, present ments not on the includ- Co., Qualitex Co. 514 v. Jacobson Products ing, shaped but not limited to: cross ‘X’— 1300, 131 L.Ed.2d U.S. doors, no bars on the a slant back (1995) (internal quotation marks omit- windows, weapons weapons mounted or ted). If a to be found turret, and in the left headlight a blackout functional, fact are the mere there front hood distinc- recess.” While these designs would non-infringing other which appear significant changes tions to be purpose functional is no serve same they appearance styling,” the “exterior functionality. defense to Antioch Co. as change do basic trade dress Corp., Trimming 347 F.3d Western by defined the discrete listed elements (6th Cir.2003). military above. Both the Humvee and objection to the appear- civilian Hummer share common Lanard’s first trade ruling ance elements which constitute a district court’s on this issue is grille, role (specifically, misunderstanding dress slanted court’s clear of the hood, windshield, trade claim. split rectangular functionality raised doors, court, order, squared edges). The elements The district stated ‘functionality’ is dis part listed which were not a of the civilian “Lanard’s defense of inappro Hummer’s also in the an design are not listed missed.” This demonstrates shifting discrete the trade of the burden on the issue up priate elements which make alleged by functionality dress as from General Motors Motors/AM Therefore, court’s court in its General. district Lanard. The district erred combining labeling functionality Hummer Humvee issue of Lanard, com- to be instead of proven trade dresses into one trade dress defense requiring General Motors to prove the ab- We conclude that General Motors functionality sence of as an element of prevail must on the issue of functionality. infringement. However, this The trade in question has been de reversible, error is not and we must con- fined as “the appearance exterior and styl tinue our de novo review of the in issue ing of the vehicle design which includes the order to if determine General Motors has grille, hood, slanted and raised split wind proven its trade dress to be non-functional. shield, doors, rectangular squared edges, etc.” We fail to see what function these Motors, in proving non- perform. elements While we understand functionality, heavily relies on the declara that General Motors bears the burden of Gula, tion of Mr. Robert Senior Vice Presi proof of non-functionality, plain ap dent of Engineering Develop and Product pearance of the vehicle shows that ment for AM General. Gula testified that elements which comprise its trade dress the appearance of the Humvee was unre inherently are non-functional. The state function, stating lated to its that “AM Gen by ment Gula regarding “performance prototype eral’s [of the Humvee] could specifications,” which was relied upon by have had a appearance different and still Lanard, does not contribute to what makes functioned way” the same and that up the trade dress. In Hummer/Humvee appearance was “not to essential the use fact, General Motors managed has to sig or purpose However, of the vehicle.” nificantly alter height, width, and Gula’s first statement is insufficient evi length of the Humvee in creating its newer dence for non-functionality as the mere models of the Hummer while maintaining existence of potential designs other is no the same trade dress as the original mili design’s defense functionality. Anti tary vehicle. military undoubtedly och, 347 F.3d at 155. What remains is had function mind designing when Gula’s statement appearance and However, Humvee. does neces- styling was “not essential to the use or sarily mean that the appearance exterior purpose of the vehicle.” style function; rather, was based on Lanard proof counters General Motors’s likely was more an unrelated afterthought. on this issue quoting depo- from Gula’s repeatedly Lanard dramatically testimony sition in which he stated “[t]he during stated oral argument that it stakes shape [of was basically Humvee] its entire claim in this case on the issue of byproduct of a designed vehicle that was functionality. Unfortunately, this was like performance to meet a specification.” picking pony a show thoroughbred Gula continued to testify part of those race. The district court was correct performance specifications were “dimen- holding that the Humvee trade Hummer/ limitations, width, sional maximum maxi- dress is non-functional. height, mum maximum overall length. Army] approach [The dictated depar- Secondary 3. Meaning angle ture I think angle.” breakover performance-based These specifications Finally, all argues that an directly seem to ap- affect the “exterior issue of material fact remains as to wheth pearance styling” of the Humvee. allegedly protected er the trade dress has However, Gula later stated his declara- acquired secondary meaning. Again, Gen tion that “The Government’s technical eral Motors bears the proof burden of specification did not address the exterior secondary meaning. the issue of Wal appearance Stores, or the styling the vehicle.” Mart at U.S. sufficiently proven has secondary meaning, General Motors To demonstrate 1339. acquired that “in the minds show that the trade dress has second- the evidence must significance public, primary meaning. ary identify the source the trade dress is product than the itself.” product secondary rather prove order Labs., at U.S. 102 S.Ct.

Inwood on a num meaning, General Motors relies a seven- applies Court 2182 n. This First, of sources. it draws this Court’s ber whether second test factor to determine to attention a General Motors business (1) meaning in a trade dress: ary exists 96% report which states that Hummer has (2) testimony, consumer direct consumer report, De recognition. The dated brand (3) man exclusivity, length, and surveys, 1, 1999, that of the 228 cember states 96% use, (4) manner of of amount and ner identify correctly able to respondents were (5) num advertising, of sales and amount being as in a picture a of the Hummer fact (6) customers, place established ber survey to be appears Hummer.3 This (7) market, proof intentional essentially that evidence in it powerful Displays, Inc. v. Marketing copying. at forced consumers to look the “exterior Inc., Devices, 937 200 F.3d TrafFix identify appearance styling” to (6th Cir.1999), grounds, rev’d on other product. source that Devices, Marketing Inc. v. Dis TrafFix on conduct survey also relies from 1255, 149 23, 121 plays, 532 U.S. S.Ct. anticipation litigation. of this This ed (2001). 164 L.Ed.2d Hum “Marylander survey” concluded that that argues Lanard first meaning secondary trade had mer’s in not applying district court erred respondents, to almost 77% of the but any of the referring test or to seven-factor 77% slightly misleading. conclusion is at factors in either its decision or who, represents people the number hearing. Additionally, summary judgment they Hum pictures were showed when appears have incor the district court to vehicles, make specific mer that stated by on issue rectly shifted the burden this (54%), mind, including: comes to Hummer that of ‘second stating “Lanard’s defense (2%), (14%), Humvee General Motors Secondary meaning’ dismissed.” ary is (1 (1 %), %), Hummer truck Mili Hoomer in meaning is an element (1 %), tary Hummer and those who could must be fringement proven which they name the knew were all not make but plaintiffs, not the defendants. Wal-Mart (15%).4 Nevertheless, one company from Stores, 210, 120 at 1339. On U.S. from a knowledge product comes issue, ruling district court erred source, naming without single even against such a “defense” because Lanard source, secondary sufficient to establish is on required present not to evidence is § meaning. See 15 U.S.C. That to secondary meaning. burden falls However, argues that General Motors’s this is de General Motors. as review, enough survey evidence is not to establish apply novo must continue to all, secondary argues if First of meaning. in order seven-factor test to determine looking up add survey respondents at a 4. These numbers do not 77% 3. The were than respondents allowed to name more were ve- picture of General’s AM civilian Hummer named one of one make. The either hicle, 77% military vehicle or AM General’s survey makes which the deemed "Hum- those General Motors's civilian Hummer vehicles. did not a make but Brands" or name mer/GM they company. all one said came from secondary meaning proven must be tion in 1999 and recognition 2002), 77% allegedly infringing before the first use of we hold that General Motors’s survey evi- the trade dress. See dence sufficient support secondary was. McCarthy Trade- 15:4; Oil, § Burke-Parsons-Bowlby meaning. See Ashland 1995 WL marks Homes, Inc., 499466, at Corp. Appalachian Log U.S.App. LEXIS 24652 at (6th Cir.1989) (“Second- (holding *9-13 871 F.2d that 50% generally is ac- ary ceptable secondary meaning prior meaning must be established 38% marginal recognition). other’s first use of a similar [design].”). Survey evidence from either 1999 or 2002 Finally, there dispute is a be given

is therefore not relevant that Lanard tween parties over whether the inten developed the MUDSLINGER in 1992 and copying tional of a trade dress constitutes allegedly infringing ATK in 1997. secondary inherent meaning in that trade General Motors retorts that such a blanket e Suprem dress. The Court has stated rule surveys would invalidate all of trade that “product-design trade dress can never in anticipation dress conducted litiga- of be inherently distinctive.” Wal-Mart tion. Stores, 214, 529 U.S. at 120 S.Ct. 1339. Therefore, secondary meaning any for This historically Court has fa product design trade dress not be can vored the use of surveys consumer inherent through of copying. evidence proof secondary of meaning. See Tumble While Lanard believes the Wal-Mart bus, Cranmer, 754, Inc. v. 399 F.3d 761 n. court completely eliminated consideration (6th Cir.2005); Decker, see also Black & of copying product intentional in Inc. v. Pro-Tech Power 26 F.Supp.2d cases, that is not the case. Intentional (E.D.Va.1998) (holding that a 1998 sur copjdng may be used to show secondary vey showing 85% brand recognition was meaning as the seventh factor in this strong enough secondary to establish test, Court’s seven-factor only but it is one 1992). However, meaning in question of many considerations test and remains whether ignore we should all sur does not alone secondary establish mean vey evidence post-infringement conducted Therefore, ing. Lanard’s intentional copy or accept the evidence with the under ing relevant, of the Humvee trade dress is standing that survey not does reflect tq determinative, but not the issue of sec pre-infringement A may world. court eas ondary meaning. ily strength take into consideration the recognition at the time of survey have now We discussed two fac light of the amount passed of time surveys between tors —consumer proof of in that date and the of infringement. date copying tentional test seven-factor —of previously We have taken required by the latter course Devices. 200 F.3d at TrafFix in an unpublished decision. Ashland Oil 937. secondary Because we must focus on Olymco, **3-5, 1995 1995 WL at meaning developed infringement, before (6th U.S.App. LEXIS 24652 August Cir. General very Motors has little evidence as 1995). appropri This seems to be the remaining to the five Direct con factors. choice, given ate the relatively unlikely testimony sumer pre-1992. unavailable scenario that a company has “exclusivity, conducted There was little length, and pre-infringement survey and this Court’s manner of use” of pre the trade dress strong support survey for evidence eval 1992. advertising, There was no with the uating secondary meaning. light exception presence of the Humvee (96% strong statistical recogni- evidence Finally, the Gulf no War. there was claims, mar- we both defenses to- place in the will address no established sales and gether. at that time. Howev- for vehicles ket er, exceptionally presents Motors General Judgment Summary Appeal Post- recognition of its survey evidence of strong Jury Verdict along the intentional

trade dress Before we can reach the mer unsuc- copying by Lanard. was defenses, estoppel of the laches and we attempt proof cessful in its to discredit the summary an of a appeal must be sure that by General Motors. Given offered denying After judgment can be heard. strong evidence summary judgment on Lanard’s motion inability present evidence laches, the district court submitted factors, contrary any of the seven question estoppel of the laches and defens summary judgment ap- was hold rejected jury jury to the and the La es secondary to the issue propriate as generally We nard’s defenses. will meaning. summary an if appeal judgment rule on estab- General Motors therefore has the issue went to trial. Garrison v. Cas there are no material issues lished that (6th Co., Transport sens 334 F.3d any fact as to of the three elements Cir.2003). However, exception to that an Therefore, infringement. trade judgment summary rule exists if the was judgment appropriate as to summary question on a of law rather pure based this issue. facts, a than on material issue of in which may summary this the case Court review Estoppel D. The Laches and Defenses v. judgment Flagstar motion. Paschal (6th Cir.2002). Bank, 295 F.3d final chal appeal Although provide the district court did not denying lenges the district court’s decision explanation why an for it denied Lanard’s summary judgment Lanard based on lach summary judgment motion for on laches the estoppel es and defenses.5 Laches is it estoppel, subsequently submitted “negligent pro failure to unintentional question jury, thereby the the insinuat rights.” Corp. Nartron tect one’s that ing questions there were fact STMicroelectronics, 305 F.3d jury from to answer. We thus reason (6th Cir.2002). To demonstrate a valid its ruling the district court’s denial of claim, estoppel Lanard “must show that summary not a judgment was based on had misled [General been Motors/AM law, question of pure but factual dis through misrepresenta actual General] over laches. putes the elements of tions, misconduct, affirmative inten acts silence, misleading argues tional or conduct Lanard the submission of jury amounting question to virtual abandonment of the of laches to a irrele- is In estoppel Id. at 412. its vant because the district court did so “in trademark.”. defense, advisory jury’s Lanard relies on the an sense.” Because the “silence” Be this requirements. only “virtual abandonment” determination on issue was advi- sory, argues, jury cause these de was application related Lanard there no fenses turns on AM on the issue of laches and this here General’s silence verdict its potential may appeal. and the abandonment of Court therefore hear court, moving party It be noted that the here was the at the district should burden previous appeals shifts from two because while General was non-movant. appeal summary judgment, in this Lanard “advisory” jury subject Based on this determina- matter of the case before us is tion, jury agree. may While be used Lanard’s use of the trademarked grille dress, disputes to consider factual in a laches the trade not its use defense, the term jury the fact that the “Humvee.” was used advisory an suggests manner that our re- AM General was first aware of summary judgment view of the denial of is Lanard’s toy MUDSLINGER in 1993 appropriate. when AM General contacted Lanard about “Hyper the use of Humvee” on packag its 2. Elements Laches ing. After Lanard agreed to discontinue This Court has held that: “Hyper use of Humvee” on its packag party asserting [a] laches must show: ing, AM representative General’s wrote to (1) diligence by lack of party against Lanard on August 1993: ‘You state in (2) asserted, whom the defense is your telefax Toys that Lanard redoing prejudice to the party asserting it. In its packaging. If that means that Lanard Circuit, this strong presump- there is a Toys intends to selling toy continue vehi tion that a plaintiffs delay asserting replicate cles that AM General’s HUM rights is reasonable as long as an vehicle, MER we believe that Toys analogous state statute of limitations has may violating still be rights.” our client’s elapsed. evaluating whether letter, Based on appears there to be a party diligent has been in protecting its material issue of fact as to whether AM trademark, we look to the state-law stat- General was aware Toys that Lanard ute of for injury personal limitations going to continue making its Humvee- Here, property. law, Michigan under styled toys without the “Humvee” name. period years. is three In other A reasonable fact-finder could interpret words, delay beyond three-year Lanard’s silence to agreement constitute statutory period is presumptively preju- with AM General that the company would dicial and unreasonable. The period of or, making toys cease actually its as hap delay begins to run when plaintiff had pened, the ignored letter could have been actual or knowledge constructive of the Considering Lanard. the language in alleged infringing activity. AM General’s letter and the failure of NaHron, (internal Lanard to respond, jury could 305 F.3d at believe quota- 408 omitted). AM General tion was unaware that La marks and citations The making nard continued applicable Humvee-styled its state statute of limitations toys. years. case is three M.C.L.A. 600.5805(10). § parties again contacted each other 1997,

Lanard believes the facts demonstrate and this time Lanard initiated the that AM General was negligent pro- in the dialogue to make a deal with AM General rights tection its and that AM General’s to add the name “Humvee” back to the silence misled Lanard into continuing toys, with pictures and included toys production toys. letter, La- question. Because Based on this there is nard was the moving party in the sum- still a material issue of fact as to whether mary judgment motion on the issue of the AM General took this letter to mean La- defenses, we must view the facts in already nard was producing the Humvee- light most favorable to styled toys General Motors and wanted to use the “Hum- and AM Additionally, name, General. in review- produc- vee” or whether the entire facts, ing the we must keep mind that tion toys rested on whether AM 422 to use allow Lanard

General would America, UNITED STATES question there remains name. Because Plaintiff-Appellee, delayed in the AM General fact whether the district court exercising rights, of its v. deny summary judgment correct to HAYNES, Defendant-Appellant. Keeda estoppel defenses to the laches 05-5889. No. to a jury. questions those submit of Appeals, United States Court Circuit. Sixth III. 20, 2006. Oct. above, we af- discussion

Based court. district firm the decisions

RYAN, concurring. Judge, Circuit entirely my col- I concur

While that the district court’s

leagues’ conclusion affirmed, sepa- I write

judgment must be I to affirm

rately emphasize vote is no

only I’m satisfied that there because fact,” under of material

“genuine issue 56, judg- that can preclude

Fed.R.Civ.P. law, aas matter of plaintiff,

ment for the “genuine term of art

particularly as the interpreted by the Su-

issue” has been trilogy. in the See

preme Court Celotex Catrett, 317, 106 Corp. 477

Celotex v. U.S. (1986), L.Ed.2d 265

S.Ct. Lobby, Liberty U.S.

Anderson (1986), 91 L.Ed.2d Co., Ze- Indus. Ltd. v.

Matsushita Elec. 574, 106 S.Ct. Corp., Radio 475 U.S.

nith (1986).

1348, 89 L.Ed.2d 538 sufficiency express

I no view about the any respect issue

of the evidence

the case.

Case Details

Case Name: General Motors Corporation and Am General, LLC v. Lanard Toys, Inc. And Lanard Toys Limited

Court Name: Court of Appeals for the Sixth Circuit

Date Published: Oct 25, 2006

Citation: 468 F.3d 405

Docket Number: 05-2085

Court Abbreviation: 6th Cir.