*1 рumping station could operating fruits of the civil characterized Tract, station, the co-owned pumping did the district court Because
both. issue, prudent think it
clarify we this question first it to
allow resolve Accordingly, we reverse re-
instance. further con- court to
mand to the district fruits are civil profits whether the
sider and, so, & M if G
the Tract whether accounting. to an
therefore entitled
V. above, we RE- stated
For the reasons REMAND to the district
VERSE and
court. EFFI TRANSPORT
GROENEVELD INC., Plaintiff-Appel
CIENCY,
lee/Cross-Appellant, INTERNATIONAL, INC.,
LUBECORE
Defendant-Appellant/Cross-
Appellee. 12-3545,
Nos. 12-3576. Appeals, States Court of
United
Sixth Circuit. 19, 2013.
Argued: June Sept. Filed:
Decided and En Banc
Rehearing Rehearing 16, 2013.*
Denied Oct. * Judge grant rehearing reasons stated in her dissent. for the White would *6 Anastos,
ARGUED: Thomas L. Ulmer Cleveland, Ohio, LLP, & Berne Appel- for lant/Cross-Appellee. Deborah J. Michel- son, LLP, Faeges Lapine Miller Goler Ohio, Cleveland, for Appellee/Cross-Ap- Anastos, pellant. ON BRIEF: Thomas L. Zujkowski, Melissa L. Ulmer & Berne LLP, Cleveland, Ohio, Appel- for Deborah lant/Cross-Appellee. J. Michel- son, Miller, Kunselman, Steven J. David A. Faeges LLP, Lapine Miller Goler Cleve- land, Ohio, Appellee/Cross-Appellant. for cross-appeals in turn Germain, Ev- claim. Herron & Groeneveld Wood Kenneth B. Ohio, Cincinnati, for Amicus Cu- other For LLP, from the of its claims. ans dismissal below, riae. forth RE- the reasons set we of the district court judgment VERSE the GRIFFIN, GILMAN, Before: denying Rule 50 motion with Lubecore’s WHITE, Judges. Circuit claim, respect Groeneveld’s trade-dress court’s GILMAN, J., AFFIRM the district dismissal opinion delivered J., claims, GRIFFIN, joined. court, REMAND in which Groeneveld’s 521-37), delivered a WHITE, (pp. judg- J. the case instructions enter opinion. dissenting separate law in favor ment as a matter of of Lube- core all claims. OPINION GILMAN, LEE Circuit RONALD I. BACKGROUND Judge. background A. Factual in this case is whether key issue The case, many trademark cases This like pro- trade-dress law to company can use product design it, from before contest between an oldtimer tect functional is a “copycat” design made competition with and a Their battle is over a newcomer. no company where there is another relatively grease obscure —the consumers likelihood reasonable in an automated pump used lubrication companies’ products the two would confuse (ALS) system commercial trucks. An for single We emanating as from source. ALS, is a for implies, system name holding, In so we hold it cannot. amount of delivering a controlled lubricant designed law reaffirm that trademark (in of a machine this case parts different recognition, not to insulate promote brand truck) a commercial while machine is compe- product manufacturers lawful in operation. Automated lubrication saves tition. time, operational efficiency, increases Inc. Transport Efficiency, by obviating corrosion the need minimizes International, Inc., claiming sued Lubecore frequent pri- manual lubrication. The grease pump automotive Lubecore’s mary of an is a component grease ALS copy of “virtually identical” through grease injectors that forces pump. complaint automotive *7 at targeted and areas timed inter- hoses copying such constitutes asserts vals. in infringement trade-dress violation the American branch of a Groeneveld is (Trademark) Act, 43(a) § the Lanham Dutch that has been in the ALS company 1125(a), § and further violates U.S.C. years. It mar- began business for over 40 laws. of related federal and Ohio number at keting grease pump issue in the except infringe- All claims trade-dress by present designated Groeneveld case— ment when the district were dismissed as its The pump EP0 1980s. —in judg- court for granted Lubecore’s motion family companies employs Groeneveld ment of law Rule 50 of as a matter under has a people and well-estab- thousands the Federal Rules of Civil Procedure. presence. lished international jury, went to which trade-dress claim found awarded for Groeneveld contrast, Lubecore, by new kid on $1,225,000 damages. in in by founded Jan the block. It was Eisses, previously had sold another who Rule appeals
Lubecore denial of its company his to Groeneveld and had respect motion with the trade-dress approxi- began employee selling been a Groeneveld cember it first in mately years. Lubecore located three 2008) (starting April Canada in then in Canada, owned Eisses and his 2009). (starting the United States March wife, people time employed companies’ The two competing discovery. designed pretrial It pumps shown below: in De- grease pump at issue this case ment, unfair competition, and false adver- background B. Procedural tising, all in violation of the Lanham Act In April brought Groeneveld suit 1125(a) (Counts 43(a), 1-3); § § 15 U.S.C. against Lubecore United States Dis- deceptive practices, trade violation trict Court for Northern District of seq. 4165.02 et §§ Ohio Revised Code Ohio. The complaint alleged that Lubecore (Count 4); competition, unfair in violation was marketing grease pump that was (Count 5); Ohio common unlaw- law “virtually identical” to Groeneveld’s ful interference with contractual and busi- with the intent confuse consumers into again in relationships, ness violation of believing that the two were made (Count 6). Ohio common law company, freeriding same thus on sought monetary damages *8 permanent and goodwill by pass- Groeneveld’s established injunctive It also a for relief. filed motion ing pumps off Lubecore as Groeneveld preliminary injunction day a on the same that, pumps. alleged Groeneveld further complaint. the as manufacturers, only of all competing Lube- adjudica- parties The consented to the essentially core a that pump made had the preliminary-injunction of tion Groeneveld’s same design as Groeneveld’s. by magistrate judge, a who denied motion The complaint asserted six claims a four-day hearing. motion after the against infringe- Lubecore: and Lubecore then cross- trade-dress filed purpose damages the for of the event summary judgment for before the
motions three-page summary court. In a that other claims were re- district Groeneveld’s order, and denied both motions court “yes” appeal). It answered to vived the case for trial. set court question also. The district ac- cepted jury’s answers and entered seven-day jury trial was held in Octo- A It judgment in favor of also Groeneveld. close of Groeneveld’s 2011. At the ber injunction barring a permanent for a entered judgment moved as proof, Lubecore Rule 50 of Federal selling matter of law under Lubecore from its Procedure, it of Civil which motion Rules States. United all renewed the close of the evidence. jury verdict, After rendered its court, ruling district the bench The Rule 50 pending Lubecore renewed mo- (other any analysis without than “I’ve and judgment tion as matter of law a me”), grant- everything, listened to believe a new moved in the alternative for trial respect Lubecore’s motion ed Rule 50 pursuant Rule 59 the Federal Rules to complaint, but re- to Counts 2-6 of of Civil Procedure. The district court de- ruling the trade-dress served on Count timely ap- nied both motions. Lubecore’s claim. peal cross-appeal fol- Groeneveld’s subsequently Count was submitted lowed. jury following the form of the three Regarding the denial of its Rule 50 and interrogatories, track the ele- which three motions, contends that Rule 59 Lubecore a ments of trade-dress claim: on all there was insufficient evidence three you 1. Do find Plaintiff Groene- elements of Groeneveld’s trade-dress proved by preponderance veld a of the nonfunctionality, secondary mean- (the claim— Dress evidence that its Trade exter- ing, and the likelihood of confusion—to shape appearance pump, nal jury. claim to submit the Alternative- color) including logo and are non-func- ly, argues jury’s Lubecore find- tional? ings against on all three elements were you 2. Do find that Plaintiff Groene- It also seeks weight of evidence. proved by preponderance veld of the damage ground set on the aside award (the evidеnce that its Trade Dress exter- link finding that there was no of a causal shape pump, nal appearance color) including alleged in between Lubecore’s trade-dress in- logo and distinctive is has marketplace, acquired fringement profits. and Groeneveld’s lost secondary meaning? turn, cross-appeal, seeks you Do judgment punitive damages find Plaintiff Groene- on the proved by preponderance veld previously dismissed counts its com- there is likelihood of (Counts 2-6), plaint well as a broaden- confusion in the minds consumers ing injunction of the district court’s EP[0] as to the source of Defen- include Canada. pump?
dant EP[0] Lubecore’s jury “yes” all three answered II. ANALYSIS OF LUBECORE’S interrogatories and awarded Groeneveld APPEAL damages $1,225,000. in the amount of On A. Standard review following day, jury returned Rule 50 of the Federal Rules arguments hear as to whether Lubecore’s *9 to grant Civil Procedure authorizes a court had infringement trade-dress been willful (which party a matter when “a judgment would be a relevant as of law consideration
503
(Gibson
fully
has
a
during
guitar
been
heard on an issue
Corp.
Guitar
v. Paul Reed
jury
trial and
court finds
a reason-
Guitars, LP,
(6th
Smith
L.Ed.2d 164
burden
414,
plaintiff.
falls on the
Id. at
416-
fore
Secondary meaning, perhaps more
1125(a)(3).
17;
§
plaintiff
If the
15U.S.C.
“acquired
indi
meaning,”
helpfully dubbed
present
evidence for a
fails to
sufficient
public,
of the
cates that “in the minds
jury
any
favor on
reasonable
to find
its
product
of a
feature
primary significance
elements,
judgment
then
one of
three
identify the source of
or term is to
as a matter of law should be entered for
than the
itself.”
product rather
Corp.
defendant. See Celotex
Ca-
11,
Labs.,
n.
102
at 851
Inwood
U.S.
322,
2548,
trett,
317,
477 U.S.
106 S.Ct.
Bros.,
2182;
at
529 U.S.
S.Ct.
Samara
(1986) (holding
judgment
L.Ed.2d
*,
example,
For
211 n.
Finally, confusing test for Groeneveld made a sufficient whether similarity, called the “likelihoоd of also jury to showing to a reasonable find enable test, ordinary an confusion” is whether its favor each of three elements. products at consumer would confuse focus, however, is on nonfunctionali- Their issue, in fact come from different which ty and the likelihood of confusion. We will sources, emanating single source concentrate on these two ele- therefore See, e.g., or from sources. Dad associated ments. Stores, Inc. v. Dad dy’s Junky Big Music Ctr., dy’s Music Family Nonfunctionality C. (6th Cir.1997). concept un “general dispute Groeneveld does derlying confusion is that the likelihood of grease pump a functional device de- mark public that the or dress believe signed automatically lubricate commer- sponsored approved owner otherwise attempt cial trucks. Nor does Groeneveld use or trade of the trademark dress.” component parts protect individual (brackets
Abercrombie,
All three of the re clear reservoir. The base is made cast secondary quirements nonfunctionality, — the pump aluminum contains mecha meaning, the likelihood of confusion— nism, which is connected wires and infringement of a trade-dress elements claim, See, ALS; a claim. to the the reservoir to such hoses rest defenses
505 (6th Cir.2003) (“[I]n made of plastic grease. is holds the 347 F.3d 158 clearly components Both serve a function order protection to receive trade dress product’s operation. essential the the overall combination of functional fea- tures, those configured features must be two testimony by Trial Groeneveld wit- arbitrary, fanciful, an or distinctive nesses, Willem van der Hulst and Corneli- way.... words, In other where individual Wapenaar, only us makes clear that not components functional the basic of are combined in a grease manufacture nonarbitrary but pump’s compоnents, also their manner perform size an overall shape, are closely grease- function, linked to the producer cannot claim that pumping shape function. of the base nonfunctional.”) the overall trade dress is functionally determined because it mini- Devices, (citing Mktg. Inc. v. Dis- TrafFix mizes the amount of material needed Inc., plays, 23, 34, 121 U.S. S.Ct. construction. And the volume of res- (2001)); L.Ed.2d Leatherman Tool functionally by ervoir dictated Inc., Grp., Indus., v. Cooper Inc. grease amount of that the vehicle needs Cir.1999) (reversing the during each interval. servicing The use of jury’s finding of infringement, trade-dress clear material in reservoir is also func- granting judgment as a matter of law for tional because it allows one to see easily defendant, holding that “where the much grease how is left pump. nothing whole is other than the assem-
Because the volume of the reservoir
blage
parts,
of functional
and where even
(like that of any cylinder) is
algebraic
arrangement
and combination of the
height,
its surface area times its
parts
designed
superior
to result in
per-
because
the surface area and
vol-
formance, it is
trickery
semantic
to say
functionally
ume
are both
reservoir
that
is still
separate
there
some sort of
(the
by
necessity
determined
former
‘overall appearance’ which is non-function-
fitting into
the base
the latter
al”).
necessity
holding
predetermined
argues
nonetheless
grease),
amount of
height
is also func-
design
pump
of its
is nonfunctional be-
tionally determined. The overall
design
particular
cause the
is not
neces-
grease pump
is therefore functional.
sary
competition
for effective
in the ALS
magistrate judge
As the
deny-
found when
shown,
business. This is
according to
ing Groeneveld’s
for a preliminary
motion
brief,
opening
Groeneveld’s
the fact
injunction, “all the
elements
Groene-
competitors
none Groeneveld’s
oth-
pump
veld’s
are there for
practical
some
er than Lubecore
similar-looking
makes a
or
benefit
reason....
Groeneveld has
pump:
presented
pump
as in any way the
products compete
Several
with Groene-
equivalent
an automotive tail fin—a
EP0, but
anywhere
veld’s
none comes
purely ornamental feature that contributes
dress,
close to Groeneveld’s trade
other
operation
no demonstrable benefit to the
Lubecore,
than the
looks like an
efficiency
designed product.”
copy of
products
exact
All these
it[.]
presented
Because Groeneveld
no evi-
have the
same purpose
—to
showing
dence
compo-
individual
grease yet no
competitor
found it
—
nents of its
pump or their overall
necessary to copy Groeneveld’s trade
configuration
nonfunctional,
it
failed
dress.
carry its
creating
burden of
a triable issue
nonfunctionality.
reject
argument
of fact with
respect
We
be-
Corp.,
See Antioch Co. v. W. Trimming
cause
in a
adopting would result
rever-
necessity.”
is a
configuration
competitive
the Su
very standard
to the
sion
was incorrect as a
unanimously rejected in
200 F.3d at
This
preme Court
explained
As
Devices,
comprehensive definition.
Marketing
Dis
Inc.
TrafFix
1255, 149
[Qualitex
Co. v.
Products
23, 121
Jacobson
S.Ct.
plays,
U.S.
*12
1300,
159,
Co.,
(2001).
U.S.
115 S.Ct.
131
That case concerned
514
164
L.Ed.2d
Labs.,
(1995), and Inwood
“dual-spring design”
L.Ed.2d 248
of a
the trade dress
Labs., Inc.,
844,
in
102
signs
outdoor
Ives
456 U.S.
of
Inc. v.
employed
base
2182,
(1982)],
in
wind
72
606
a
keep
upright
strong
L.Ed.2d
to
them
S.Ct.
order
it
functionality is “es previously argument availability neveld’s about the standard, purpose” use or sential designs is grease-pump alternаtive mis- competitive-necessity test: not guided. The issue whether Lube- trademarks, said[,] Discussing designed grease pump we core could have a have terms, appearance; a is with a different issue is general product feature functional, “is design serve a trade whether Groeneveld’s essential and cannot as mark, article or if it purpose if it or the use or of the is essential the use quality or if it affects the cost or article.” purpose of the article affects Labs., n. article. at 850 quality Expand cost or Inwood U.S. words, question phrase, this S.Ct. 2182. In other ing upon meaning we shape whether the overall of Groeneveld’s have that a functional feature observed substantially grease pump was influenced is one the exclusive use which would imperatives preferences. non-rep functional put competitors significant at a Antioch, disadvantage. (framing The See utation-related “engineering necessity whether inquiry in the instant case Appeals Court of the func- language configuration influenced interpret seemed components”). accordingly function tional We re- necessary mean that test for ject to drift invitation back ality particular product “whether of inquiring possible non-functionality.” into the error about But Lanard Toys (hold- designs. at 157 alternative See id. does stand proposition for the that the Devices, that, light ing of putting manager bare act on the stand TrafFix rejected properly district court nonfunctionality to claim is sufficient to concerning availability of alternative create triable issue of fact. If that were scrapbook-album designs plain- where the law, any plaintiff jury get could trial strap hinge” tiffs “dual was func- on the issue in question by simply mouth- together tional it held the album because ing legal conclusion that flat). permitted pages to lie design is holding nonfunctional. The Toys predicated Lanard instead was points testimony Groeneveld next to the specific the court’s conclusion that the de- Hulst, Willem van der its Vice President *13 sign in question features not influ- were Production, in- Design and who was enced functional considerations. See designing grease pump. volved in the EPO (crediting testimony id. at 417 the of a der Hulst testified that Groeneveld Van manager General Motors to the effect that to did not “have make its look this Army’s performance the specifications dic- way on itway the inside because certain tated elements of the Humvee’s works on the outside.” For the reasons dimensions, but above, testimony not vehicle’s “exterior stated this is insufficient appearance styling,” including and to create a triable of fact issue under “grille, hood, split slanted raised improperly Devices because it fo- wind- TrafFix shield, doors, rectangular squared cuses on de- possibility of alternative [and] signs. edges,” elective that not per- features did function). any form
Moreover, testimony van der Hulst’s entirely conclusory simply was assert- Groeneveld further van relies on der —he that any ed Groeneveld was not limited testimony Hulst’s effect that Groe- design, particular explain but he did not people” neveld’s “commercial “have fin- nonfunctional, why design the chosen was ger pot” power and “have the most certainly speak any did not with par- in group.” The record is unclear as to ticularity about the functional consider- why what testimony means and it is that, above, ations apparently as outlined relevant to the of nonfunctionality. issue pump’s design. dictated the The same There are van multiple references in der for der goes van Hulst’s bald assertion testimony Hulst’s to the so-called “com- design that the pump’s did “affect the people,” mercial but Groeneveld never ex- way performs.” the thing See Secalt S.A. If, plained meaning phrase. Ltd., Co., v. Wuxi Shenxi Constr. Mach. meaning the literal the word “commer- (9th Cir.2012) (holding suggests, cial” people” the “commercial plaintiffs that the evidence nonfunction- charge were business executives eval- ality was insufficient matter law as a uating pump’s viability, commercial where, “[ejxcept conclusory, self-serv- then the of such involvement individuals statements, ing provide[d] no plaintiff] [the says developing product design noth- design other evidence of fanciful or arbi- ing design about whether or not the trariness”). same if nonfunctional. The is true “com- people” general- managers mercial means next that asserts General ly. people” And even if “commercial Corp. Toys, Motors Lanard Cir.2006), marketing design means those F.3d 405 held that a compa- department, testimony ny manager’s testimony product would still be about de- velopment legally Every “was sufficient unhelpful Groeneveld. viable grease design is non- presumably pump’s de- find
mass-market marketing considerations in proof functional. And Groeneveld’s signed says fact mind, unremarkable and this nonfunctionality is even more rendered the product nothing about whether wanting by the fact that Lubecore has nonfunctional. testimony der pointed of van Hulst Wapenаar, own Groeneveld’s wit- points to van der Finally, Groeneveld volume, nesses, to pump’s show testimony that Hulst’s “terrible,” essentially all shape, and materials are look on the market function. founder “different influenced the dictates of was mechanical really old-fashioned result is with the This consonant choice” very good “he had people” underlying functionality public policy things,” such as “a nice “like[d] nice doctrine, legal pro which is channel office, cars, people.” nice Van der nice designs tection of from the realm of useful also Groeneveld has Hulst testified patent. trademark to that of Such chan grease-pump to alternative switched cheap- though might neling high public that the designs, even ensures costs of very er, pump is “a because the current an monopoly imposed are not without as *14 knows pump” “[everybody nice design the rigor surance that the satisfies pump.” requirements patentability, of ous includ nonobviousness, ing novelty and and is meaningful- fail
But these statements
to
of
protected
only
period
a limited
time.
nonfunctionality.
of
address the issue
ly
Court,
by
Supreme
As well
stated
good
has
The fact that Mr. Groeneveld
prove
does
to
that the
nothing
taste
functionality
prevents
doctrine
[t]he
design
And
is nonfunctional.
to
pump’s
law,
promote
trademark
to
which seeks
testimony
the extent that van der Hulst’s
competition by
a firm’s
protecting
repu-
intended
was
to show
less attractive
tation,
inhibiting legitimate
instead
cheaper grease-pump designs were also
or
competition by allowing
producer
a
to
showing plainly
such a
falls short
possible,
product
control a useful
feature.
It is
Devices
under
because courts
TrafFix
law,
province
patent
not trade-
designs
into
inquire
not
alternative
should
law,
encourage
mark
to
invention
substantially
at issue
design
when
over
granting
monopoly
inventors
new
influenced
functional considerations.
or
for a
product designs
functions
limit-
Devices,
33-34,
See
U.S.
TrafFix
time,
ed
which
competitors
after
free
(“There
...
need
to
S.Ct. 1255
no
product’s
to use
If a
the innovation.
engage,
Appeals,
as did the Court of
be used
functional features could
as
speculation
design possibili-
about other
however,
trademarks,
monopoly
over
Here,
functionality
....
ties
such features could be obtained without
design
spring
competitors
means
need
regard
they qualify
pat-
to whether
as
explore
juxtapo-
other spring
whether
(be-
ents and could be extended forеver
might
dual-spring
used. The
sitions
be
may
cause trademarks
be renewed in
arbitrary
design is
an
flourish
perpetuity).
product;
it is
configuration of MDI’s
designs
works.
reason
device
Other
Co.,
Qualitex
Prods.
Co. v. Jacobson
(internal
attempted.”
need not be
citation
164-65,
1300,
514 U.S.
115 S.Ct.
omitted)).
(1995)(internal
L.Ed.2d 248
citations omit-
ted);
short,
Trimming
accord Antioch Co. v. W.
was in-
In
Groeneveld’s
(6th Cir.2003).
jury
Corp.,
a reasonable
159-60
sufficient
enable
patent
Groeneveld has no
on the
This court has enumerated
grease pump.
why
eight
of its
That is
factors to consider in determining
pursued a trade-dress
under the whether
has
claim
trade dresses
competing
nonfunctionality
products present
Lanham Act. But
is an
a sufficient likelihood of
“(1)
confusion:
indispensable
strength
of a
plaintiffs
element
trade-dress
(2)
claim,
dress];
[trade
so
the goods;
Groeneveld’s failure to raise a
relatedness of
(3)
(4)
similarity
dresses];
product
[trade
triable issue
whether
(5)
confusion;
evidence of actual
design is
marketing
nonfunctional is alone sufficient
(6)
used;
channels
likely
require
degree
pur
judgment
as matter of law in
(7)
care;
chaser
defendant’s intent in
on
se
favor
Lubecore
this claim. We will
(8)
lecting
dress];
the [trade
likelihood of
proceed
nevertheless
the likeli
discuss
expansion
Frisch’s,
of the
lines.”
hood-of-confusion element of a trade-dress
510
$3,000 guitars
and
bottles
chasers
says
$100
“GROENE-
mark
large “G”
VELD”;
maple-leaf
likely
high degree
red
a
a
tequila
latter is
with
exercise
And
evi-
says “lubecore.”
care),
Corp.
mark and
with
Motors
v. Lanard
Gen.
logos
undisputed
(6th
that
the same
dence
Cir.
Toys,
468 F.3d
413
marketing
parties’
sales
appear
(not-
Frisch’s,
2006),
F.2d
1269
759
at
of such a stark visual
light
In
literature.
of inex-
ing, respectively,
purchasers
con-
branding,
in
no reasonable
difference
likely
food are not
toys and fast
pensive
two grease
think
sumer would
care).
degree
high
exercise
belong
company.
to the same
See
dispute
poten-
does
not
Abercrombie,
(holding
F.3d
647
at
grease pumps are knowl-
purchasers
tial
that,
trademarks of Abercrom-
because the
sophisticated people. Such
edgeable and
Eagle
American
were
bie & Fitch and
likely
not
to ig-
are therefore
purchasers
throughout
clothing
their
cata-
displayed
labeling
difference
nore
stark
were, “as
logs,
trade dresses
catalogs’
mistakenly
a Lubecore ALS
purchase
Frisch’s,
similar”);
law,
matter
purchase
intend
a Groene-
when
Shoney’s
(holding
We therefore copyrights patents. conclude See TrafFix Devices, branding different Mktg. Displays, two Inc. v. degree high pre- of care U.S. S.Ct. 149 L.Ed.2d (2001) (“The
sumably
by
sophisti-
pumps’
exercised
the
164
Lanham Act
does
cated
of
consumers—factors 3 and 6
the
exist to
their
reward manufacturers for
device;
compel
Frisch
conclusion
creating
particular
innovation in
a
factors —
that,
law,
as a matter
patent
of
Groeneveld has
that is the
and
purpose
law
carry
raising
period
failed to
its burden of
a
exclusivity.”); Fuji Kogyo
of
Co.
Int’l, Inc.,
675,
regarding
triable issue
of
Pac. Bay
likelihood
v.
Cir.2006)
Nevertheless,
(“Trademark
in
give
confusion.
to
order
law cannot
the benefit of all
in-
run
properly
favorable
make an end
around the
ferences,
proceed
utility
will
to
all of
analyze
requirements
patent
by
we
strict
of
law
whether,
giving
rights
the Frisch factors to see
taken
to
equivalent
exclude.”
system is one in which
(brackets
patent
Thus the
internal
marks
quotation
and
omitted)).
carefully
are
uniform federal standards
at the
promote
to
invention while
used
protection
desires
A
who
manufacturer
preserving
competition.
free
same time
satisfy
require-
must
against copying
copyright
under the
protectability
ments of
(internal
229-31,
cita-
513 any ability permits of mark ... it to or design pattern, however trifling. basic purposes. defendant, serve these hand, The may copy plaintiffs goods (internal slavishly down to 163-64, Id. at 115 1300 cita- S.Ct. may minutest detail: but tions, marks, he not quotation omit- brackets ted) represent plaintiff in himself (emphasis original). as the in their sale.”
Such an incentive structure would of disrupted course if a manufacturer’s Boats, Boats, Bonito Inc. v. Thunder Craft open hard-won recognition brand were to Inc., 141, 157, 489 U.S. 109 S.Ct. 103 appropriation other manufacturers who (1989) (brackets L.Ed.2d emphasis believing confused consumers into that the omitted). two are affiliated or brands are one and That why, in the absence of consumer If same. manufacturers’ qualitative confusion, and in any copy- the absence of subject skimming off, efforts such were right or patent protection, copying per- have improve would less incentive to Indeed, fectly legal. copying such is more offerings their and build in robust brand just than legal; is often beneficial: place. the first protection Trade dress must subsist harm No is done this incentive recognition many in- structure, however, by copying of a prohibition against stances there is no
product design that does not confuse con
copying goods
products.
gener-
In
product’s
sumers as to the
source. As
al,
right
unless an intellectual property
long
easily identify
as a consumer can
such
patent
as a
or copyright protects
trademark,
source based on the
the con
item,
an
subject
it will be
to copying.
sumer will still be
able
allocate his or
As the
has explained, copying
Court
capital freely
her
efficiently,
and man
not always
discouraged
disfavored
ufacturers
retain
will
to im
incentive
preserve
the laws
our competitive
which
prove their
offerings
solidify their
economy. Allowing competitors
copy
law,
brands.
trademark
So
like
law оf
will
salutary
many
have
effects in
in-
unfair competition
part,
of which it
ais
stances. Reverse engineering of chemi-
focuses
on copying per
not
se but on confu
cal and
public
mechanical articles
sion:
domain
significant
often leads to
ad-
competition
law
unfair
has its
vances in technology.
roots in the common-law tort of deceit:
Devices,
Mktg.
Inc.
Displays,
TrafFix
general
concern is with protecting
23, 29,
U.S.
S.Ct.
consumers from confusion as to source.
(2001) (internal
L.Ed.2d 164
citations and
may
While that concern
result
omitted);
quotation marks
accord Bonito
creation of ‘quasi-property
rights’
Boats,
156-57,
U.S.
tured well in the distinction Crescent novelty Both the and the nonobviousness Co., Bishop Tool Co. v. Kilbom & 247 F. requirements patent of federal law are (2d Cir.1917), where he wrote: grounded concepts in the notion that with- plaintiff right “The has lose in the public grasp, or those so his customers obvious through representa- false be, they readily tions that those are his in that could are the tools of wares which not, may fact are but monopolize They provide he creation available to all. *19 514 confusion”); Fer- causing the “intent of which to competition upon of free
baseline
Roberts,
1235,
v.
944 F.2d
1243
incentive to creative
rari S.P.A.
system’s
patent
Cir.1991)
(6th
Day-
Compeo Corp.
(asking
v.
whether the intent
depends.”);
effort
Inc.,
234, 238, 84
U.S.
Lighting,
purchasers
376
“to deceive
and thus derive
Brite
was
(“[I]f
(1964)
779,
L.Ed.2d 669
reputa-
11
name and
S.Ct.
a benefit
another’s
design
or
patent
to a
is not entitled
design
design
of a
tion” or “rather to avail oneself
then it
statutory protection,
desirable”);
federal
which is
attractive
Sears,
will.”);
Roebuck &
copied
Inc.,
can
Restaurant,
be
Shoney’s,
Inc. v.
Frisch’s
231,
Co.,
225,
84
376 U.S.
(6th
(re-
Co. v.
Cir.1985)
1261,
759 F.2d
1269-70
Stiffel
(1964).
784,11
L.Ed.2d
S.Ct.
con-
ferring to
intent”
“fraudulent
“acted
been affirmed
text of whether
defendant
has
principle
The same
any
impressions that con-
perpetuate
this court. See Antioch Co.
false
repeatedly
150,
have”).
Corp.,
Trimming
might
347 F.3d
W.
sumers
(6th
(“Antioch
Cir.2003)
repeatedly attacks
otherwise,
act
If the
were
an
law
slavishly
the CREA-
copying
Westrim
only
often
legal
that is not
but also
benefi
What Antioch
MEMORIES album.
TIVE
cial
be
into evidence—
would
transformed
copying is not
appreciate
is that
fails
worse,
“pre
suggests,
or
as Groeneveld
and can
always discouraged or disfavored
in
sumption”
Such an
unlawfulness.
—of
Copying preserves
salutary
have
effects.
terpretation
De
would contravene TrafFix
pres-
downward
keeps
which
competition,
vices and the other decisions cited above
encourages innovation.”
prices
sure on
pur
and would subvert
fundamental
(brackets, citations,
quotation marks
poses
recognize
trademark law. We
Stores,
omitted));
& Fitch
Abercrombie
copy
probative
intent
might
Inc.,
Outfitters,
Am.
280 F.3d
Eagle
Inc. v.
see,
secondary meaning,
e.g.,
in proving
(6th Cir.2002)
(explaining that
Abercrombie,
F.3d at
but such
preserves competition”); See also
“copying
standing
bearing
intent
no
on
alone has
McCarthy, McCarthy
Thomas
J.
the likelihood-of-eonfusionissue.
Competition
Trademarks
Unfair
copying
The
can have sa-
principle
§
to imitate an
in order
(“[C]opying
8:19
lutary
effects
illustrated
circum-
competi-
of a
aspect
functional
unpatented
Contrary
case.
present
stances of
competition is all
tor’s
is what free
about____”).
protestation
that Lubecore’s
(minus the
copying
of Groeneveld’s
prin
import
The
of the twin
clear
logo)
explanation,”
“no innocent
has
copy
ciples
copying
the absence
procompetitive pur-
similarity serves the
patent protection
or
often serves use
right
pose
a com-
signaling
existence
purposes,
ful
and that
concern
by alerting potential
petitive alternative
copying per se
trademark
is not about
law
might
consumers
work
engenders consum
copying
but about
same
look the same.
because
confusion,
appropriate “in
er
is that the
By
making
appearance
pump
copy
tent” to
on is not the intent
focus
(other
essentially the same as Groeneveld’s
but rather the intent to deceive
confuse.
label),
specifically
than
has
Lubecore
Distillery, Inc. v. Dia
See Maker’s Mark
targeted
who are familiar with
(6th
consumers
410, 424
geo Am.,
N.
679 F.3d
and offered them
Cir.2012)
(discussing
to in
“inten[t]
competitive option.
Supreme
Court
Stores,
fringe”); Daddy’s Junky Music
Ctr.,
unanimously
using
has
confirmed that
Family
Big Daddy’s
Inc. v.
Music
Cir.1997)
product’s
promote
look to
(referring
functional
*20
offering
competitive
procompetitive
is a
I
you
[Osborn:]
would think is if
[W]hat
Devices,
practice. See
if
just,
you
U.S.
off
top
took
half
TrafFix
(“If
buyers
by specifically targeting Groeneveld cus have considered or bought the Lube- tomers, competitive Lubecore focuses its if pump cores didn’t look much so on activity those who are most interested pump? like Groeneveld competition, thereby decreasing such intensify consumers’ search costs and very [Osborn:] It made me comfortable ing competition where it matters most. when it—when looks like a Groene- course, say, None of this is to Lubecore, .... veld The the comfort consumers should switch from Groeneveld of knowing zone that it to looks identical to Lubecore or that Lubecore makes it it probably operates the same rather, pump. point, better thing, know, is that they, you in the literature the state of affairs where consumers are they have the blocks of main where the aggressively competi courted and offered grease goes the different to blocks tive options is beneficial as matter it goes Everything then out. me public same, policy. I you resembles the know what Groeneveld, mean. The Lubecore and points These are borne out one of machines, okay. look sister like witnesses, Osborn, Groeneveld’s Dean who look They like twins. And for me mak- way testified he likes the the Groene- ing my buying a greaser, decision pump particularly veld works does but easy. systems. that’s I like these two Therefore, сare who manufactures it. owns it I Who doesn’t matter me. when Lubecore him offered as an just want go places alternative to pump, the Groeneveld he go] to where should and I want [it ultimately bought considered and place here to it. service pump. Lubecore Osborn testified that he has been satisfied with both the Groene-
veld and the you [Lubecore’s Lubecore he has ... When Counsel:] owned, systems, and that he has been bought never con- the four Lubecore you fused between the two brands: clear were you buying was against slav- sys- protestations systems, Lubecore admittedly a certain emo- copying ish have tems, correct? presumably swayed the appeal tional Correct. [Osborn:] *21 all, people generally After dislike jury. [an Garvin inde- Counsel:] [Lubecore’s But, foregoing as the discussion copycats. through which both pendent distributor demonstrates, application of proper the systems] ALS has told their parties sold requires us to focus our trademark law much you as himself? the to the analysis copy on intent Um-hum, yes. [Osborn:] on the likelihood of product design, but product the Counsel:] And [Lubecore’s confusion. Evidence Lube- consumer it than label on more got Lubecore’s has copy product intent to Groeneveld’s core’s right? place, one help of no Groene- therefore [Osborn:] Yes. evidence, anything, if Such shows veld. you And Counsel:] said [Lubecore’s proeompetitive benefits of Lubecore’s the market- you given some Lubecore were practices against allowing and cautions materials? ing jury. Wal-Mart go issue to See Yes. [Osborn:] Bros., 205, Stores, Inc. v. Samara U.S. no there was Counsel:] So [Lubecore’s (2000) 1339, 214,120 S.Ct. L.Ed.2d part on about whose your confusion (discussing desirability “summary buying? product you were disposition anticompetitive of an strike Objection. Counsel:] [Groeneveld’s context). suit” in the trade-dress Correct. [Osborn:] objects target- to Lubecore’s Groeneveld Strength 2. of Groeneveld’s trade arguing that Lubecore’s competition, ed dress quality,” ... are of pumps “diminish[ed] This factor “focuses on distinc recalls, and “have subject have been recognition of mark its tiveness grease.” It also leaking points been seen among public.” Maker’s Mark Distill offering to ex- practice Lubecore’s Am., Inc., Inc. v. N. ery, Diageo warranty replace and to tend Groeneveld’s Cir.2012) (internal quotation parts pumps and with Lube- omitted). marks Groeneveld submitted core products. prominence pedigree evidence however, аllegations, These do not and, industry, advertising, its extensive claim strengthen Groeneveld’s trade-dress importantly, witnesses who testified most If competition or make unfair. Lubecore’s they recognized pump’s design inferior, are in fact all pumps Lubecore’s associated it with This Groeneveld. Consumers better Groeneveld: to support evidence is sufficient a factual in quality the difference would soon realize trade finding dress clearly on flock to labeled no strong. finding help But is of such judg that is Groeneveld. But a business any Groeneveld in the absence of they ment to be consumers as see made likely to confuse consumers fit, legal judgment not a to be dictated grease pumps. competing source market, The trade-dress law. free courts, winners and losers pick should goods 3. Relatedness As stated business world. TrafFix parties dispute do not Groene- Devices, 121 S.Ct. 582 U.S. pumps per- veld’s Lubecore’s “protection pro for trade dress exists to directly function and com- competition,” not to hinder it. form same mote witnesses, pete industry. So this factor would however, None these were any proof also favor Groeneveld if had consumers, and actually none of them were the likelihood of confusion. confused as to the origin pumps. of the two Indeed, Groeneveld admitted at argu- oral Similarity of marks ment it had no evidence of actual above, the starkly
As discussed different confusion: labels competing and trademarks [Judge you Gilman:] Do have evi- any products any to dispel serve likelihood of dence that anybody thought they were confusion between two pumps. This buying your client’s when weighs heavily against factor Groeneveld. *22 actually were buying Lubecore’s? [Groeneveld’s I don’t. Counsel:]
5. of Evidence actual confusion sum, In there is no simply evidence of Nothing shows the of likelihood in actual confusion the record. confusion more than the fact of con actual of fusion. So evidence actual consumer Marketing 6. channels used confusion, though necessary, not would be immensely helpful to Groeneveld. See The record contains evidence both that Restaurant, Inc., v. Shoney’s, Frisch’s Inc. parties often industry attended the same (6th Cir.1985) 759 F.2d (noting shows, trade they marketed their that evidence of actual “is confusion Internet, products over the and that cer- necessary,” but obviously “it is the most tain distributors parties’ sold both ALS probative confusion”); of proof likelihood of Such, systems. evidence is sufficient Stores, Daddy’s Junky Big Music Inс. v. commonality show there is a in how Ctr., Daddy’s Family Music systems But, the ALS are marketed. (6th Cir.1997) (same). again, this helpful evidence would be
But surveys only Groeneveld if any showing submitted no there were showing sample whether a of the relevant of the of likelihood confusion.
consumer population actually was confused as the parties’ products. between See Likely degree 7. purchaser of care Frisch’s, 1267-69, 759 F.2d at and General discussed, previously As consumers of Corp. Motors Toys, Lanard grease pumps knowledgeable are so- Cir.2006), F.3d which discuss market, phisticated about the are significance surveys of consumer in unlikely buy an expensive system ALS showing the likelihood of confusion. Groe- exercising without degree substantial of neveld testimony instead offered the a sin- care. strongly This factor favors Lube- customer, gle Osborn, Dean in support core, especially coupled when with the Osborn, actual-confusion claim. howev- dissimilarity labeling. stark er, unequivocally testified on cross-exami- nation that he was not confused to the as expansion 8. Likelihood of market origin pumps, of the reflected transcript quoted above. only The regarding evidence the likeli- expansion hood market respect testimony
Groeneveld also cites the company testimony either was the some of Eiss- employees of its own and affiliates es, founder, “really Lubecore’s professing “shock” he “surprise” States,” would like to move into Lubecore’s “looks the same” as the United Groeneveld’s, saying that it “looks like a but could not do so of the because lawsuit. factor, however, Groeneveld with a Lubecore sticker it.” This our does alter But in certain circumstances trademark any in the absence analysis similarity. against even if it protects law confusion confusing before the moment ultimately dissipated Summary Frisch factors takes confusion purchase. “Initial-interest the likelihood-of-confusion improperly manufacturer upshot place The when (1) overall trade dress- is that analysis initial uses trademark to create customer dissimilar because are es of the two product, if the even customer interest by starkly different distinguished they are realizes, prior purchase, prod- that the (2) purchasers of sophisticated logos, actually manufactured uct was not systems presumably ALS expensive Corp. trademark-holder.” Gibson Guitar making of care in degree a high exercise LP, Guitars, v. Paul Reed Smith (3) nois evidence of purchases, therе their (6th Cir.2005). 539, 549 (4) confusion, the intent actual following example demon of Lubecore’s choice effect why protection against initial-inter strates Frisch factors all procompetitive. These might est confusion make sense under contrast, By favor. weigh Lubecore’s you right Suppose circumstances: weigh in fa- the factors that *23 long you have taking roadtrip, a become all reasonable vor it the benefit (giving very you keeping eye an hungry, and are inferences) (1) Groeneveld’s trade are McDonald’s, your out for a which is fast- (2) parties’ products strong, dress is (3) you choice. a spot food restaurant of related, Soon parties use similar are by an You take sign But these latter fac- “McDonald’s” exit. marketing channels. a signs, looking alone do not raise triable the exit and follow the for standing tors regarding likelihood of your issue of fact ham ward to favorite McDonald’s any confusion in the absence burger. Burger King. a But —behold—it’s consumer exercis- showing potential that a misleading. were You are not signs ordinary would confuse the ing care but, Burger King having already so fond of sum, no question. In reasonable made the detour and loath to waste even the basis of the jury could conclude on time, you reluctantly buy Whopper more a it that Groeneveld has met evidence before get your trip. on with See Brookfield the likelihood of con- proving burden Commc’ns, Inc. Corp., v. W. Coast Entm’t fusion. (9th Cir.1999) (using a stores). example rental similar with video E. additional trade-dress Groeneveld’s not be to One does have to an economist theories an see that such a deceitful creation of con- “point-of-sale the so-called Beyond initial harmful in interest is to consumer fusion,” which has been discussed Part terests, incentives, brand-development above, II.D. Groeneveld claims capital, efficient allocation of even if the against protects Lanham Act other kinds ultimately dissipated by confusion harm well. The addi- of confusion and as purchase. time of put forth Groeneveld are tional theories pres But circumstances of (2) (1) confusion, initial-interest dilu- remotely those of approach ent case do tion. To paradigmatic initial-interest case. Initial-interest confusion with, begin presented proof no Groeneveld how, pumps’ of the two view of trademark The usual focus logos, there starkly different labels and are misled as law is whether consumers any at they would be initial-interest confusion goods purchаse. the source of why, explain opening up competition, Nor does Groeneveld market all. create initial assuming that such confusion were “a reasonable inference of confusion and instantly place, take not be would its likelihood.” desire to Groeneveld’s any in- dissipated Simply without harm. natural; only game perfectly town is voking the term “initial-interest confusion” companies hope most would for that sta- claim, not state a viable let alone does get any tus. But Groeneveld cannot help a triable of fact. This court create issue suppressing from trade-dress law in lawful alleging held that a hypothetical has Devices, competition. See TrafFix an might chance a consumer think for (“[Pjrotection 28,121 at U.S. S.Ct. 1255 for products instant that two come from the promote competi- trade dress exists to simply enough: same source is tion.”). argues shape essentially Gibson guitar PRS leads consumers 2. Dilution standing on in a the far side of the room Lanham remaining Act ar- guitar store to believe see Gibson gument responsible is that Lubecore what guitars and walk over to examine diluting image by former’s brand intro- they soon guitars. realize are PRS We ducing low-quality knockoffs into the mar- reading adopt decline such broad dilution, argues, ket. Such initial-interest-confusion doctrine. harmful above beyond alleged most, Many, if not products consumer harm caused consumer confusion. tend to like appear competitors
will
their
sufficient distance. Where
Under a
theory,
plain
dilution
trademarked,
shapes
themselves
against
tiffs trade dress is protected
*24
theory
prevent
competitors
such
would
cheapens
genu
kind of imitation that
from producing
prod-
even dissimilar
flooding
ine
the market with a
might appear,
ucts which
from the far
low-quality replicas,
mass of
even if con
store,
of an
end
aisle in warehouse
ultimately
sumers
not
confuse the fake
do
similar
to a
somewhat
trademarked
thing.
with
real
Ferrari
See
S.P.A v.
shape.
(6th
Roberts,
1244-45
Cir.
Guitar,
(emphasis
Gibson
520
for
that its trade-dress
to further
the same reasons
decline
action. We therefore
claim survived.
appeal.
claim on
See
new
consider this
the proce-
forth
(setting
Fed.R.Civ.P.
decep
But
claims of
Groeneveld’s
to amend a
to be
order
dure
followed
practices
competition
tive
and unfair
trade
claim);
a new
Foster
complaint to add
Practices
Deceptive
the Ohio
Trade
under
(6th Cir.1993)
Barilow, 6
F.3d
(Counts
(DTPA)
Act
common law
Ohio
(“In
to the
general,
presented
issues
5)
properly
were
dismissed because
the first time
court but raised for
district
federal
with the
are coextensive
appeal
properly
before
See,
Daddy’s
e.g.,
trade-dress
claim.
(brackets
quotation
and internal
court.”
Stores,
Daddy’s
Big
Inc. v.
Junky Music
omitted)).
marks
Ctr.,
Family Music
Cir.1997)
plaintiffs Ohio
(holding that the
summary
F. Trade-dress
“mirror
DTPA and common-law claims
sum,
In
Groeneveld failed
because
infringe
...
trademark
federal claim of
to enable
rea-
sufficient evidence
present
proof of a likeli
requiring
ment
also
find both that
jury
sonable
confusion”). The claim of unfair
hood of
product design
1125(a)
is nonfunctional and
§
competition under
U.S.C.
likely
ordinary
(Count
would
confuse
2)
consumers
met the same fate be
properly
Lubecore’s, judgment
trade
dress
likeli
requires proof
of either a
cause
a matter of law should have been en-
misdesignation
confusion or a
hood of
therefore
tered
Lubecore. We
reverse
origin,
pres
exists in the
neither of which
the district court’s denial of Lubecore’s
ent case. See Part II.D. above.
law,
judgment
motion for
as a matter of
advertis-
This leaves the claims
false
damages,
jury’s
aside the
award of
set
1125(a)
§
tortious
ing under 15 U.S.C.
injunction.
dissolve the
Ohio
law
interference under
common
(Counts
6).
support
In
these
3 and
III.
OF
ANALYSIS
GROENEYELD’S
claims,
points to Lubecore’s
CROSS-APPEAL
“mimicking
appear-
the EPO’s external
extend
practice
offering
and its
ance”
A. Other
claims
*25
warranty
replace
and to
Groeneveld’s
cross-ap-
now
We
turn
Groeneveld’s
parts
and
with Lube-
Groeneveld
challenges
peal, which
the district court’s
products.
core
grant
decision
Lubecore’s motion for
judgment
a matter of law on counts 2-6
as
“mimicking”
The claim of
has al
of the
These counts assert
complaint.
disposed
ready been
discussion of
competition
claims of unfair
and false ad- product-design
in Part
II.D.l.
copying
vertising,
of 11
both
violation
U.S.C.
And the claim that Lubecore is
above.
1125(a) (Counts 2-3); deceptive
§
trade
targeting
fault for
Groeneveld consumers
in violation
Ohio
Revised
practices,
is
has cited no au
untenable. Groeneveld
(Count 4);
§§
seq.
et
unfair
Code
4165.02
targeting
thority
proposition
for
competition, in violation of Ohio common
competitor by ex
the customers of one’s
(Count 5);
offering
law
and unlawful interference
warranty program
tending
relation-
with contractual
business
is
Nor
replacement
parts
unlawful.
again in violation of Ohio common
ships,
authority surprising.
is
a dearth of
such
(Count 6).
all,
to take
primary
company’s attempt
Groeneveld’s
ar-
one
law
After
away
another
gument
company
is that its non-trade-dress claims
customers
very
com-
disposition
manner
summary
should
survived
such a
is
essence
have
claim in this re-
I
petition.
respectfully
Groeneveld’s
dissent
I
because
do not
“anticompeti-
spect
exactly
the kind of
agree that Groeneveld presented insuffi-
strike
for
appropriate
tive
suit” that
cient
jury
evidence for a reasonable
to find
“summary disposition.” See Wal-Mart
in its favor on its
infringement
trade-dress
Stores,
Bros.,
Inc. v. Samara
Moreover,
U.S.
claim.
I
although
agree with
120 S.Ct.
522 in court to consider jury to find its that the had whether
denee for a reasonable configuration its was the district court abused overall album favor and that functional, motion for a new denying exclusively in its rather focusing discretion than damages award. upholding trial and component parts”). is appeal Lubecore’s governing terms,
The law
product
feature is
general
“In
view the evidence
clear.
must
We
if it
to the use or
functional
is essential
Groeneveld, cannot
light most favorable
if
purpose of the article or
it affects
evidence, and owe substantial
reweigh the
quality
of the
Inwood
cost
article.”
jury
Radvansky
to the
verdict.
deference
10,
Labs.,
844,
v. Ives
456 U.S.
850 n.
Labs.
Falls,
609,
496 F.Bd
614
City
v.
Olmsted
2182,
(1982).
102
L.Ed.2d
S.Ct.
72
606
Cir.2007).
(6th
majority
The
reweighs
upon the
of this
“Expanding
meaning
notwithstanding
in
favor
facts
Lubecore’s
phrase,
ob-
Supreme
ha[s]
[the
Court]
proffered
sup-
that Groeneveld
served that
functional feature is one
“(1)
its claim:
porting each element of
compet-
use of
would put
‘exclusive
[which]
(2)
functional;
trade
is not
the trade
dress
significant non-reputation-related
itors at a
”
marketplace
dress is
distinctive
Devices,
disadvantage.’
Inc. v.
TrafFix
acquired ‘secondary meaning,’ thereby
has
Inc.,
32,
23,
121
Mktg. Displays,
532 U.S.
(3)
goods;
the source of the
indicating
(2001) (last
1255, 149
164
S.Ct.
L.Ed.2d
of the accused
is
trade dress
Qualitex
in original) (quoting
alteration
Motors
v.
Corp.
similar.” Gen.
confusingly
Co.,
159,
Co. v. Jacobson
514
Prods.
U.S.
Inc.,
405,
F.3d
414
Toys,
Lanard
468
165,
1300,
248
115 S.Ct.
131 L.Ed.2d
omitted).
Cir.2006) (citation
(1995)).
TrafFix,
Supreme
princi-
In
Court
A.
(which
pally
court
had re-
held
our
first
attacks
district
Lubecore
part
grant
versed
a district court’s
to deny
court’s
its motion for
decision
judgment
summary
competi-
in favor of a
judgment as a matter of law and a new
claim)
plaintiffs
tor on the
trade-dress
trial on the basis that Groeneveld failed to
“gave
recognition
impor-
insufficient
prove non-functionality.
prod-
Whether a
utility
tance of the
expired
patents,
question
uct
is a
feature is functional
evidentiary
their
significance,
establish-
Fuji Kogyo
fact
for clear
reviewed
error.
ing
[plaintiffs] de-
functionality
of the
Inc.,
675,
Int’l,
Bay
v.
461
Co.
Pac.
F.3d
keep-
dual-spring
vice”—a
mechanism for
(6th Cir.2006).
appropriate
focus
ing
signs
upright
outdoor
adverse wind
is the
trade dress rather than each
overall
32,
conditions. Id. at
1255. The
S.Ct.
component. See Tools USA and
dissected
Court
then reaffirmed that
the Inwood
Champ
Equip.
Straightening
Frame
Co.
formulation,
see
n.
456 U.S.
(4th Cir.1996)
Equip.
2182, is the main test
S.Ct.
to determine
(“[T]he
functionality inquiry
critical
functionality,
had
and held
this court
component
whether each individual
into the
inquiring
competitive
erred
functional,
trade
rather wheth-
dress
but
necessity of the design where the device
er the
is function-
trade dress
a whole
was otherwise functional.
523 design purpose designs served more than of alternative would not be accept- informing sign consumers); able to see Georgia-Pa- consumers that stands also but Consumer LP plaintiff, “provide[d] were made Prods. v. Kimberly- cific (7th Corp., 723, a and useful mechanism to Clark 647 F.3d unique resist 727-28 Cir.2011); words, In other id. at 731 (considering argu- the wind’s force.” Id. ment about availability of design was “the alternative reason device designs, 34,121 concluding but that possibility at Id. S.Ct. 1255. work[ed].” cannot, own, of alternative designs on its TrafFix, possibility Under of alter- nonfunctional); design render a Aur-Tomo- designs cannot a trade native render dress Gold, Am., tive Inc. Volkswagen of non-functional where it is otherwise func- Cir.2006) F.3d 1072 n. (noting tional under Inwood. at Id. S.Ct. that, following TrafFix, the court of ap- majority morphed 1255. has this sim- has of peals possibility reiterated holding ple principle into a that evidence designs, among factors, alternative is regarding possibility of alternative de- legitimate a in determining consideration signs is irrelevant to the determination functional); product whether a feature is a design whether is functional. TrafFix Eng’g Valu Inc. v. Rexnord Corp., 1 McCarthy does not so hold.1 See on (Fed.Cir.2002) (“Nothing Competition Trademarks and Unfair suggests in of consideration TrafFix (4th ed.2013) § (explaining 7:75 Traf- alternative not designs properly part of “d[oes] Fix that alternative de- [hold] mix, overall and we do not read the signs cannot be as one considered source in Court’s observations as render- TrafFix evidence, others, of in along with the initial ing the of availability designs alternative determination engineer- under the Inwood Rather, irrelevant. we conclude that the formulation”). ing-driven merely Court product noted once a sure, To be “a not required court is to feature is found functional based on other designs examine alternative when applying considerations, there is no need to consider the traditional for Inwood test functionali- of availability designs, alternative be- ty” because “if a is clearly func- cause the- given feature cannot be trade Inwood, tional under court need not protection merely dress because there are apply competitive-necessity test and its (internal designs alternative available.” inquiry concerning availability related omitted)). Thus, footnote I do not read Co., designs.” of alternative Antioch standing unqualified TrafFix however, 156. Pоst-TrafFix, F.3d at both proposition inquiring possible about this court other courts have continued designs alternative error under the In- possibility, thereof, (as to consider the or lack formulation, although wood the district alternative, equivalent functionally de- properly jury) court instructed the signs as one several determin- mere possibility designs of alternative does factors Co., functionality. ing Fuji Kogyo See 461 not render a non-functional. Gen. (considering 417; 685-86 testimony Corp., F.3d at that Motors PID 8787.2 puzzle functionality. Nor does hold that consideration resolve the I difficult TrafFix that, designs appropriate only policy, alternative think as matter consideration functionality.” expert cases "esthetic alternatives can assist witnesses (and (or judges) reaching opinion sound 2. As one commentator has reasoned: decision) why shape as to is or is not "func- Supreme More, I cannot believe that the Court in tional” under test. the Inwood meant, less, way, evidentiary light permitted [a] back-handed should TrafFix overrule decades of precedent TrafFix, problem. which has used shine In the Court “principal question” said alternatives another source evidence to that the to be decid- els *28 formulation, I dress functional as matter dis- overall trade is Inwood
Applying the law, equation such majority’s conclusion that and the of majority’s the of agree with func- components adding “no evidence” that to an overall presented up Rather, is non-functional. “in design pump’s design its overall tional is the law. design of president vice protection for order receive trade dress Hulst, agreed der production, Willem van fea- the overall combination of functional the of optimized amount that the base tures, configured features must be those work- pump in the internal material fanciful, way.” arbitrary, an or distinctive However, say he did not ings. PID 7989. Co,, 158 (emphasis Antioch 347 F.3d at infers) (as irregular that the majority the added). finding supports The evidence necessitated based shape of the base was configuration pump’s that the overall was components. Rath- on the internal pump’s industry designed to look distinctive the er, not “form he that the base was testified functional concerns. rather than due to parts, and he the internal fitted” around First, pump’s the outer weight it is of aluminum clarified that the appearance was not its internal dictated der in the that affects the cost. Van base prod- is Whether a functioning sufficient. of alu- Hulst that the same amount added uct’s to thе use or design “essential minum, shape, molded to a different if the cost purpose of the article” or “affects the of probably would not affect cost the article,” TrafFix, quality of the 532 U.S. affect of aluminum but could “the cost added), 32-33, (emphasis S.Ct. i.e., production body,” to work the the TrafFix, appropriate inquiry. is the In of part” the device. PID 7989- “machine emphasized point “[t]he the Court The appropriate 8004-05. inference to necessary oper- the springs to the testimony is that the drawn device,” de- dual-spring ation the “the arrangement aluminum or volume of the provides a sign unique useful mecha- parts impact pump’s internal could wind,” nism resist the force of the function, irregular shape but dual-spring design is not an arbi- “[t]he func- pump’s base is not essential to trary configuration flourish of [the] tioning and does not affect the cost of the product; is the reason the device clear, der Hulst device. As van made 30, 33, 34, 121 works.” Id. at 1255. S.Ct. pump cost the same with a would even (ex- Co., Accord Antioch F.3d at 158 Further, PID al- shape. different necessity plaining that engineering “where though upper the “inside volume” of the func- configuration influence^] cylinder by “some- reservoir is determined design is components,” resulting tional thing than human design” because functional). affects amount of the reservoir volume hold, 7922, 7988, PID can In Corp., General Motors we concluded apparent cylinder’s it is not trade dress of a Hummer/Humvee shape the reason the device works. appearance vehicle—“the exterior includes event, styling of the vehicle which configu- In any the non-functional hood, grille, split raised components ration functional slanted and of otherwise windshield, doors, compel finding product’s does that a rectangular [and] alternatives, supra, (capitalization McCarthy, § ed 7:75 was not relevance but presence Here, significance altered). was the there is internal case names alleged utility patent in a trade dress features utility patent ad- no that touts utilitarian “strong It which evidence’’ was this created vantages design. pump’s of the Groeneveld functionality case. TrafFix *29 edges” squared you non-functional. 468 to do with the time want to [ ]come —-was course, grille, 417. Of F.3d at vehicle’s ... filling.... the next windshield, hood, edges doors and exterior Q. So the sizes of reservoir of ALS particular serve functions as individual pumps vary then? vehicle, of the their components but indi- Yes, lot, vary A. yeah. designs on
vidualized the Hummer/Hum- PID 7922. too, vee did not. Here the Groeneveld Q. shape Does the or outline of the external pump’s appearance round —the pump way affect the thing performs, the cylindrical shape of the clear reser- way the it grease delivers throughout voir, grooves top on the bottom of system? reservoir, particular placement A. No. features, label and other Q. Explain jury. this to the might It irregular shape perform the base— obvious, but I’m sorry. I’ll you ask inherently no functional That purpose. its (or explain. components individual volume of inside components) quali-
those have functional A. a car. It’s like No? The car go from not compel ties does finding A they’re to B and all different. The is trade dress functional. shape nothing has to do with the moving function the [car] A Second, van testimony der Hulst’s —as- B, and it’s same as the lubrica- serting have did not system. only thing The tion we have design pump way unique did— energy to do is create and that there was not bare denial as characterized coming w[h]ere an outlet majority: out, you that, you do how can do it Q. Did Groeneveld have to make its many, many many, ways. way look pump this on the be- outside added). way cause it works on the inside? PID (emphasis No, no, No, A. course no. not. Third, disagree I majority’s Well, Q. you again, say of not— course rejection of der van Hulst’s reference You A. can’t—the made pump people.” English wasn’t “commercial way you but can van put language, the valves der Hulst’s first I which You can pistons inside. make out jury believe the could have reasonably tak- vertical, horizontal or make it horizontal. en into in assessing testimony. account his can change shape You the reser- explained Van der Hulst that the commer- you round voir can make reservoirs people also cial provide “information of what square. you change which So can PID market wants.” impli- easily the very pump same func- company [would] cation is that this in- division is way. ] the same design volved decisions from an aesthet- tion! ic, functional, rather than a standpoint. PID 7920. He further testified: You see top? A. the reservoir on This Q. people Were commercial reservoir on top, yeah. is a That is the at people sales Groeneveld involved of the [grease]. container The reservoir of the EP-0 Groeneveld dimensions, can you make in several pump? kilos, yeah. You can in two make them kilos, speaking okay.
three. We’re A. Of course. We make—we art make you impression one which This see on the table [is time. make We greаse container, kilo six and this has a] some sketches. How it would look sys- very pneumatic with this made even another successful I think we like. tem, to the still are. people to show the and we model *30 money there was management because years, anybody Q. the last 30 did Over involved, needed show what and we Groeneveld’s, look pump ALS like else’s they an idea do. So had going we are the we here on other than what have only— function shape the and the is now? table That’s telling it will function. yeah, how easy, shape the we have to not too but No, [A.] no. it, yeah. show mar- on the Q. products Did new come added). juryA (emphasis PID 7946-47 ket, years? over the last 30 pumps ALS design pump infer that the could Yes, a produce A. there is lot of from its in- separate a consideration was system, pumps, lubrication lubrication functioning. ternal Chinese, Japanese, Europe, differ- also Fourth, explained in van Hulst de- der ones, they all ent smaller but producers, why design is based on pump tail systems way, in a have their own that pump branding considerations different, all different. look all marketplace: in the unique has a look added). (emphasis PID 7909-11 that A. ... were sure this was [W]e Q. You that Echo or Sterk said only possibility pump to make a just looking at is terri- pump we were looks than completely which different ble about it? pump. What’s terrible pumps at that time which were Yeah, nothing only A. the look. I have available because a lot of were say quality proba- because about parts made with mechanical with bolts only bly pump, and so it’s perfect steel, on, piece and screws and so mention, yeah. I look which make it plastic. We wanted to different. Q. important that —was that Was piece One worked and finished. you way you chose to or a factor Q. Why your you did want make way engineer pump back Groeneveld than pump looking everybody different looked, looking way it and not the market? else’s was on just things you and all those terrible just challenge. A. Yeah. It’s a It’s described? challenge say of designer and each-let’s Yeah, I think so because Groe- [A.] something you want to make different time, very young neveld was—at everybody than else.... young Mr. company managers. groove give it a we want to look. So Groeneveld, very good especially, he had many, has our So this to be had a things. He like nice We choice. many years good to be nice. and has office, cost, nice nice So we people. nice Q. And EP-0 was me- really than old were diffеrent looking everybody than pump different way. say Let’s it in this people. chanical else’s on market? a lot company, We a sales we did were Yes, time, yes. A. At that of course. why reason promotion, and there’s a Q. over And what about the last 30 (cid:127) something else[.] we to do wanted years? PID 7923-24. of success A. We had a lot with this Q. jockey you know this is a Do went all pump. Groeneveld over pump? a lot pump. world with this We created grease jockey pump. A. A everywhere, and we were distributors 42?
Q. Meaning configuration nonfunctional,” which Exhibit id. at 1013 n. the Ninth Circuit A. reasoned: Yeah. Q. you Would have wanted to ... [TJhere is no evidence the rec- create, something make looks jury’s ord which supports the conclusion like this? appearance the overall of the PST No, probably. A. me they[’d] fire protectable sure, trade dress. To be
(Laughter.)
PST has an
appearance,
every
physical object
There
works,
must.
is no evi-
Q.
if
why,
And
what does
dence, however,
anybody
anything
care
looks like?
about
what it
*31
(other
that appearance
than the Leath-
nowadays
cars,
A. You see
even
name)
erman
trucks,
any
new truck
exists
non-func-
nowadays,
is nicer
Rather,
than
personal
purpose.
every
car inside. The
tional
shape
physical
cars,
wheels,
on
protec-
tire
part
jure
of the Leatherman is de
func-
tion,
tanks,
tanks,
air
it’s
unbe-
tional.
pointed
any
No witness
to
fea-
only a
lievable nice. Not
car would go
of,
on,
(other
ture
marking
PST
No,
from A to B.
want
also to make
name)
than the Leatherman
which was
you
something
put
nice.
when
some-
So
ornamental
to identify
or intended
its
thing on a chassis of an owner of a truck
Rather,
source.
the evidence showed
money,
with truck for a
he bought
lot of
...
product
particular
that the
its
insulation,
all
lights
kinds of chrome
and
shape because it
better
works
you
things,
put
nice
and then
this on the
Indeed,
shape.
designer
of the PST
terrible,
chassis. It’s
huh?
repeatedly testified
to his belief in
as
PID 7944-45.
truth of Leatherman’s claims as to the
Although
pump’s
trade dress is not
superiority
design.
of the PST
per
ornamental
se like
an
feature
certain
...
[Although
trade dress must
the]
cars,
components
luxury
an
ALS
whole,
be
...
viewed as a
where the
component
can be a visible
of a truck.
nothing
whole is
other than the assem-
App.
consumer,
323-35.
And for
blage
parts,
of functional
and where
unique look
immediate brand recog-
causes
even the
and
arrangement
combination
PID
nition.
8199. Van der Hulst testified
parts
designed
result
that, although it
more to
costs
manufac-
superior
performance,
is semantic
nowadays,
ture
overall
pump’s
appear-
trickery
say
that there is still some
ance has
same since it
remained the
was
separate
appearance”
sort of
“overall
produced
first
in the
because the
1980s
which is non-functional.
industry
associates it
Groeneveld.
(internal citation, quotation
Id. at 1013
7930-31,
PID
8005-06.
omitted).
marks,
emphasis
and
The Ninth
Group
Cooper
Leatherman Tool
v.
In-
also
“the
Circuit
noted that
evidence here
(9th
dustries,
Cir.1999),
supports considerations, the has sec- a trade dress based aesthetic determine whether was on function, “(1) the pump’s ondary dictate direct tes- shape meaning: does not consumer same (2) (3) result in the designs would surveys, timony, exclusivi- consumer function, not result in (4) does use, length, manner of amount ty, or cost effective- performance superior (5) advertising, manner amount of ness.3 (6) customers, estab- and number of sales (7) market, place proof lished sum, might have although jury
In
Corp.,
copying.”
intentional
Gen. Motors
otherwise,
evi-
there was sufficient
decided
single
F.3d
“No
factor is
at 418.
finding that the Groe-
support
dence
every
one need not
trade dress is not based
determinative
pump’s
neveld
Miller,
concerns,
was “se-
or cost
but
Herman
Inc. v. Palaz-
engineering
proven.”
Ferrari
lected for
distinctiveness.”
Imports
Exports,
[its]
zetti
&
(6th
Roberts,
Cir.2001).
S.P.A.
secondary
Cir.1991);
Jag Preci-
Cybergun, S.A. v.
see
must
meaning
plaintiffs
of a
trade dress
sion,
2:12-CV-0074,
No.
2012 WL
in-
prior
competitor’s alleged
exist
*32
(D.Nev.
2012)
11,
(holding
at *5
that
Oct.
Burke-Parsons-Bowlby
fringement. See
a nonfunc-
configuration
an overall
serves
Inc.,
Homes,
Log
Corp. v. Appalachian
prod-
it
purpose when
identifies
tional
(6th Cir.1989).
590,
F.2d
871
596
by specific
a
specific product
uct as a
made
Except
surveys,
for consumer
Groene-
—
manufacturer),
Fed.Appx.-,
ajfd,
presented
all the
supporting
veld
12-17640,
WL
Cir.
No.
2013
3770855
that,
believed,
remaining
support
if
factors
2013).
19,
July
jury’s
secondary meaning.
finding
a
(ex-
Miller,
313,
270 F.3d
Herman
at
315
B.
sur-
plaining that the absence
consumer
there
Lubecore also asserts that
was
veys is not
to a
a triable
fatal
create
to submit the issue of
insufficient evidence
claim).
testimony
Consumer
established
secondary meaning
jury.
to the
“Second-
pump
recog-
Groeneveld
has been
generally to
ary meaning is used
indicate
many years.
nized
its
for
appearance
through
has
that a mark or dress
come
use
4373, 4394,
PID
Lubecore’s
8199. Even
a specific
to be
associated with
uniquely
founder,
Eisses,
Jan
conceded
Cabana,
Pesos, Inc.
source.”
v. Taco
Two
shape,
al-
pump
recognizable
its
2753,
n.
S.Ct.
U.S.
can
though
qualified
he
“also”
(1992).
sec-
371-79 C. attendance). significant shоw ny’s trade sale The revenue from the of the Groene- element, Turning majori the last (sealed). PX pump significant. veld ty concludes that Groeneveld failed to an dispute There is no that Groeneveld is prove likelihood of confusion. We consider (and industry quite leader has been for eight determining factors whether the time), 8198, 8304, some PID or that products trade of competing pres dresses industry. is well known in this ent a “1. strength likelihood confusion: dress]; of the plaintiffs 2. related [trade Finally, majority acknowledges, as the goods; similarity ness of the 3. ap- in the two pumps’ similarities “[t]he dresses]; 4. evidence of actual [trade con labels), pearance (excluding the the fact fusion; used; marketing channels 6. that other manufacturers’ do care; likely degree purchaser 7. defen look, similar the fact have a that Lube- dress]; in selecting dant’s the [trade intent founder be a core’s used to expansion 8. likelihood of [and] evi- employee constitute circumstantial *33 Rest., product lines.” Inc. v. Frisch’s Sho copy.” of an Maj. Op. dence intent to (6th Inc., ney’s 1261, 759 F.2d 1264 Cir. strong; implausible This evidence is is 1985) altered). (formatting pump, by that Lubecore’s sheer coinci- dence, just happened to be manufactured the Although ultimate determination identical as the shape with an Groeneveld whether a set of facts a establishes likeli- Evidence of pump. copying intentional “is hood of is a conclusion legal confusion sub- especially helpful establishing secondary to review, ject to our de novo we have held meaning logical because is no there reason appro- that the issue of confusion is more precise copying for the save an to attempt fact-finder, priately by resolved rather secondary upon meaning a is realize law, than the court as a matter when Miller, in existence.” Herman 270 at F.3d a presents factually-intensive case a close (internal omitted). quotation 314 marks call factors are and the balanced. Innova- Ventures, N.V.E., Inc., tion LLC v. 694 a copies When newcomer to market (6th Cir.2012). 731, 723, F.3d 733 dress, competitor’s a trade its intent goodwill be to benefit from the must majority The concludes that the “differ competitor’s by getting customers branding ent grease pumps two is product them believe that new high degree presumably of care exer same, originates either the pumps’ sophisticated cised consum same source as the whose trade that, compel ... ers the conclusion as a copied. drеss was law, matter has failed to a carry raising Food Indus. Ltd. v. triable issue Osem Sherwood its burden (4th Foods, Inc., regarding 165 Cir. the likelihood confusion.” Miller, 1990), 270 quoted Maj. Op. majority begins as in Herman 511. The its analysis side-by-side comparison F.3d at 314. 530 green everything pretty “The with a look the base and former pumps: same.”). ‘GROENEVELD’; much says
large mark
‘G’
maple-leaf
mark
is red with
latter
& Fitch
v.
Abercrombie
Stores Ameri-
”
says
Id. at
Be
‘lubecore.’
509-10.
(6th
Outfitters,
Eagle
can
See
I
agree
also
majority
with the
that copy-
(placing
weight
little
on the lack of
ing
per
is not
illegal
se
and that evidence
of actual confusion where the
evidence
copying
of intentional
is not necessarily
sold for a
competitor’s
was
short
dispositive of the likelihood-of-confusion
quantities).
time and
limited
analysis. For
we
example,
have held that
majority,
Like the
I
turn to
now
consid-
plaintiff
rely
could not
this factor where
to
er all
Frisch factors
conduct an
plaintiffs
mark
not strong
was
and the
assessment.
overall
competitor’s
copy
alleged
was not very
to
plaintiffs
similar
trade
Gray
dress.
copying
1. Lubecore’s
intent
Groe-
Meijer,
295 F.3d
650-51
neveld’s trade dress
Cir.2002).
“a
Although
presumption of in-
agree
I
with
majority
insofar as it
tent
to confuse arises when evidence of
“[ijntentional copying
that
...
holds
is not
copying
presented,”
is
“recognize
courts
Act
actionable under the Lanham
absent
if
there is no real issue of a likelihood
that the
was
copying
evidence
done with
confusion
the lack
to
of
[due
the intent
to derive a
from
benefit
factors],
supporting other
evidence of
S.P.A.,
reputation
another.” Ferrari
(inter-
copying
import.”
is
no
Id. at 651
(internal quotation
F.2d at
marks
omitted)
quotation
nal
marks
omitted).
However,
majority,
unlike the
I do not
[However,
party
chooses a mark
i]f
precedents
read these
the broader
—or
confusion,
causing
the intent
implications underlying
policy
the roles of
may
justify
fact alone
sufficient
an
copyright
patent
law versus trade-
confusing similarity.
inference of
Intent
mark law—to mean that Lubecore’s intent
relevant
purposeful copying
because
copy
help”
is “of no
to Groeneveld.
alleged infringer,
indicаtes
who
1)
Eisses’s testimony established that:
he
knowledge
has
least as much
as the
(another
instructed Martin
for-
Vermeulen
trier of fact
regarding
likelihood of
employee)
mer
confusion,
Groeneveld
make a
copying may
believes that his
Lubecore,
pump for
and told him
what he
divert some business
the senior
pump
“like[d] about the Groeneveld
user. Direct evidence of intentional
2)
copying
necessary
prove
industry”;
is not
intent.
pump
Lubecore
looks similar to the Groe-
Stores,
Daddy’s Junky Music
ment. See Maker’s Marketing 6. channels used (“[W]e at 424 have said that the ‘most F.Sd I agree majority with the “[t]he that similarity important Frisch factors’ are record contains parties evidence that both strength (quoting of the mark[.]” often attended the same trade industry 646)). F.3d at Gray, 295 shows, that marketed products their Internet, over the and that certain distrib- goods 3. Relatedness of parties’ utors systems. sold both ALS majority acknowledges The also Such evidence sufficient to show parties dispute do not that Groene- “[t]he commonality there is a in how ALS per- veld’s Lubecore’s pumps systems Maj. are marketed.” 517. Op. directly same function form the com- majority, however, Unlike the I do not industry.” pete Maj. in the 516-17. Op. consider such evidence inconsequential, es- again, majority But once its repeats conjunction pecially in simi- the visual stating error by “[s]o this factor would also larity of the trade weight dresses and if it any favor Groeneveld had of the proof Grp., the other factors. See Homeowners likelihood confusion.” Id. the con- To Inc., 931 F.2d at (explaining Frisch, trary, under this factor bears “[tjhis very significant factor in illumi- the overall assessment is a whether there nating actually happens what mar- likelihood confusion. and, ketplace where other factors are not Similarity 4. of the trade dresses particularly probative, special impor- is of tance,” facts, the fact that other Despite shapes that the but such as dis- identical, virtually similarities, two the ma- may possibility lessen the jority confusion). that this factor “heavi- weighs finds
ly” against Groeneveld the dif- because of Likely degree purchaser 7.
ferent
As
care
supra,
labels.
discussed
there is
no clear
finding
error
district court’s
agree
I cannot
with the
as-
majority’s
that different
labels did not render
this
“strongly
sessment that
factor
favors
given
dissimilar
products
industry-
because,
supra,
Lubecore”
as discussed
factor,
specific
This
at mini-
evidence.
presented
evidence that under-
mum, narrowly favors Groeneveld.
presumption
mines the
of consumer care.
favor,
Drawing
inferences Groeneveld’s
5. Evidence of actual confusion
factor,
most, only
this
slightly favors
majority acknowledges
the lack
event,
any
already
Lubecore.
In
dis-
of actual
confusion is not dis-
cussed,
dispositive.
this factor is not
positive
analysis.
See Maker’s
Distillery,
Mark
(explain-
F.3d at 422
expansion
of market
Likelihood
lack of
ing that a
evidence of actual confu-
explained:
haveWe
rarely significant,”
sion “is
upholding
A strong possibility
party
that either
court’s
lack
finding
district
that the
expand
compete
will
business to
non-determinative);
[its]
such evidence was
Best., Inc.,
(ex-
with the other or be
Frisch’s
finding that in- expansion jury reasonably sup- or an finding the award ing. geographic A *39 types products or ser- crease in the ported. Sign Grp., See LLC Advance A finding can relevant. vices offered Optec Displays, expand their will not parties Cir.2013) (“Our jury’s review of a however, does significantly, markets deferential, extremely damage award is ultimate issue likelihood address new will not order a remittitur or and we of confusion. contrary to all trial unless award Stores, reason.”). Music 109 F.3d at Daddy’s Junky (internal marks, citations, quotation omitted). brackets and alteration Wit- II. parties testified that there for nesses both cross-appeal. I turn to now Groeneveld’s growth in the potential for United
was (Jennifer Wolfe, IP States. PID 8244-45 A. (Eisses: consultant), PID 8589 lawyer and into the to move United plans challenges have district “[W]e Groeneveld big It’s a company. to build States and motion grant court’s decision to Lubecore’s The market is ten times as opportunity. (made judgment as a matter of law Canada.”). large as jury) the case submitted to the before was unfair-competition, on federal Ohio its Summary 9. unfair-competition, and ODT- common-law lack evidence of actual Except for the no provided PA court claims.6 The district confusion, weighing and even consum- explanation for its dismissal of these favor, in Lubeeore’s the re- er-care factor claims, beyond opining: “I’ve listened maining either favor Groeneveld or factors PID Both everything, believe me.” 8763. Moreover, even are neutral. under in trial and on Lubecore’s oral motion factors, majority’s weighing there is appeal, argument urging dismissal which in fa- split militates three-to-four argu- these claims coextensive with its rather than a jury vor of determination supported ment that insufficient evidence ruling matter law. as a Innovation infringement trade-dress (“[W]hen Ventures, F.3d at 733 claim. factors, court, by the district were as found evenly split, so 4 to 3 with the balanced—a it is unclear from the record Because at in this eighth factor not issue case— remaining claims were why Groeneveld’s precedent granting of not counsels favor dismissed, I remand. would record, summary judgment.”). On this jury reasonable could find the Lube- B. likely core to confuse consumers. pump is this court to broaden urges scope permanent of the district court’s D. injunction to I do not include Canada. challenges raises various Lubecore because, issue unlike find this moot jury’s damages arguments Its award. injunc- I majority, would not dissolve rejected by were court in a district Nevertheless, it is merit. tion. without well-reasoned see Groeneveld opinion, ad- expressly did not Transport The district court Efficiency, 2012 WL *4-5, injunc- request for the and I discern no hold dress Groeneveld’s basis claims, deem waived. I those Because Groeneveld abandons its prove conduct in proscribe Canada but that Lubecore’s tion Canadian activi- infringing con- limited relief to Lubecore’s ties have a substantial effect on domestic duct the United States. To establish Although commerce. is true Eisses call for extraterri- whether “circumstances desired to his expand business the Unit- Act,” application of the Lanham torial States, ed Groeneveld’s assertion that “(1) traditionally have courts considered: strategy ground- Lubecore’s is to “lay has a whether defendant’s conduct work for expansion Canada into the substantial effect commerce presupposes U.S.” Lubecore will vio- (2) States; whether defendant United injunction late district court’s and is *40 States; (3) citizen of United and is a unsupported by record evidence. The there between whether exists conflict most has possibil- Groeneveld shown is the rights defendant’s trademark established ity that foreign might Lubecore’s activities law, foreign plaintiffs trade- under impact country, commerce but that rights mark established under domestic not enough extraterritorially apply Glass, Ltd., Libbey law.” Inc. v. Oneida the Lanham Act. (N.D.Ohio 1999) (cit- 720, F.Supp.2d Co., Vanity v. T. ing Fair Mills Eaton III. (2d 633, Cir.1956)); Steele v. see reasons, Co., For these I 280, dissent. Bulova Watch U.S. 73 S.Ct. (1952)
252,
(holding
eral have extraterritorially).
Lanham Act
Lubecore is not U.S. citizen but a corporation, weighs Canadian which heavi- JEFFERSON, Kenneth Andrew ly against application extraterritorial Petitioner-Appellant, Int’l, Act. Inc. Aerogroup the Lanham See Footworks, Ltd., F.Supp. v. Marlboro (S.D.N.Y.1997). 220, 227 On the other America, UNITED STATES hand, parties agree there is no Respondent-Appellee. (as law foreign conflict Lubecore has Canada) No. 12-1182. no claim the trade dress there be no thus would interference with United Court of Appeals, States if the Lanham Act sovereignty Canadian Sixth Circuit. applied against were Lubecore in Canada. Argued June 2013. argument Groeneveld’s central Lubecore’s Canadian activities have sub- Filed Sept. Decided and 2013. commerce, effect on stantial United States Rehearing Rehearing En Banc speculation— but its discussion rests on Nov. Denied “likely” that Canadian trucks will with installed Lubecore cross
in and out of United States pumps marketed sold in
Lubecore “likely”
Canada are to affect sales and reputation United (as asserts) Even if
States.
U.S. consumers can access Lubecore’s web online, and order products
sites does