Sixth Circuit Rules that Trade Dress Law Does Not Prevent Copying of Functional Design

In Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 2013 U.S. App. LEXIS 18897 (6th Cir. Sept. 12, 2013), an industry veteran and a relative newcomer battled over the appearance of  a rather specialized product: automatic lubrication pumps for commercial trucks.

The plaintiff, Groeneveld, began making its pump in the 1980s.  Lubecore, the defendant, began selling its own pump roughly 20 years later.  As shown below, the external design of the companies’ respective pumps is quite similar:

Groeneveld

In April, 2010, Groeneveld brought suit against Lubecore in the U.S. District Court for the Northern District of Ohio.  Groeneveld alleged trade dress infringement – essentially a claim that Lubecore’s similar external design was intended to confuse consumers into believing that the two pumps were made by the same company.  Thus, according to Groeneveld, Lubecore was attempting to profit by misappropriating Groeneveld’s established goodwill in the marketplace.  The jury found in Groeneveld’s favor, resulting in a damages award in excess of $1 million.

On appeal, Lubecore argued that the evidence could not have proved the necessary elements of trade dress infringement, specifically that the product’s external appearance (1) is nonfunctional; (2) has acquired distinctiveness (“secondary meaning”); and (3) is confusingly similar to the alleged infringing design.  The Sixth Circuit agreed.

The Sixth Circuit concluded that the overall shape of Groeneveld’s pump was functional.  The Court noted that features such as the shape of the base, the height and volume of the reservoir, and the use of transparent material are all “closely linked to the grease-pumping function.”  Interestingly, although Groeneveld argued that non-functionality was proved by the fact that “it could have designed a grease pump with a different appearance,” the Court refused inquire about the availability of alternative designs.  Rather, in the Court’s view, the only question was “whether the overall shape of Groeneveld’s grease pump was substantially influenced by functional imperatives or preferences.”

The Court also found no likelihood of confusion between the two pumps, largely based on its view that the presence of the parties’ respective logos on the pumps created “a stark visual difference in branding.”  Notably, the Court reached this conclusion while acknowledging circumstantial evidence that Lubecore intended to copy Groeneveld’s design.  The Court reasoned that where a product is distinctly labeled so as to prevent consumer confusion, the use of an external design similar to that of an existing product “serves the procompetitive purpose of signaling the existence of a competitive alternative by alerting potential consumers that the pumps might work the same because they look the same.”  Thus, in the Court’s view, any intentional copying by Lubecore was a perfectly legitimate attempt to “specifically target consumers who are familiar with the Groeneveld pump and offer them a competitive option.”

In sum, the Sixth Circuit has wholeheartedly adopted the principle that “using a functional product’s look to promote a competitive offering is a procompetitive practice” that is not generally actionable under trade dress principles.  It remains to be seen how far this approach will migrate into disputes arising out of products which are less obviously mechanical.

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