Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc.

RECOMMENDED FOR FULL-TEXT PUBLICATION

Pursuant to Sixth Circuit I.O.P. 32.1(b)

File Name: 13a0271p.06

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

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GROENEVELD TRANSPORT EFFICIENCY, INC.,

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Plaintiff-Appellee/Cross-Appellant,

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Nos. 12-3545/3576

v.

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Defendant-Appellant/Cross-Appellee. -

LUBECORE INTERNATIONAL, INC.,

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Appeal from the United States District Court

for the Northern District of Ohio at Cleveland.

No. 1:10-cv-00702—Donald C. Nugent, District Judge.

Argued: June 19, 2013

Decided and Filed: September 12, 2013

Before: GILMAN, GRIFFIN, and WHITE, Circuit Judges.

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COUNSEL

ARGUED: Thomas L. Anastos, ULMER & BERNE LLP, Cleveland, Ohio, for

Appellant/Cross-Appellee. Deborah J. Michelson, MILLER GOLER FAEGES LAPINE

LLP, Cleveland, Ohio, for Appellee/Cross-Appellant. ON BRIEF: Thomas L. Anastos,

Melissa L. Zujkowski, ULMER & BERNE LLP, Cleveland, Ohio, for Appellant/Cross-

Appellee. Deborah J. Michelson, Steven J. Miller, David A. Kunselman, MILLER

GOLER FAEGES LAPINE LLP, Cleveland, Ohio, for Appellee/Cross-Appellant.

Kenneth B. Germain, WOOD HERRON & EVANS LLP, Cincinnati, Ohio, for Amicus

Curiae.

GILMAN, J., delivered the opinion of the court, in which GRIFFIN, J., joined.

WHITE, J. (pp. 36–61), delivered a separate dissenting opinion.

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Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 2

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OPINION

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RONALD LEE GILMAN, Circuit Judge. The key issue in this case is whether

a company can use trade-dress law to protect its functional product design from

competition with a “copycat” design made by another company where there is no

reasonable likelihood that consumers would confuse the two companies’ products as

emanating from a single source. We hold that it cannot. In so holding, we reaffirm that

trademark law is designed to promote brand recognition, not to insulate product

manufacturers from lawful competition.

Groeneveld Transport Efficiency, Inc. sued Lubecore International, Inc., claiming

that Lubecore’s automotive grease pump is a “virtually identical” copy of Groeneveld’s

automotive grease pump. The complaint asserts that such copying constitutes trade-

dress infringement in violation of § 43(a) of the Lanham (Trademark) Act, 15 U.S.C.

§ 1125(a), and further violates a number of related federal and Ohio laws. All the claims

except trade-dress infringement were dismissed when the district court granted

Lubecore’s motion for judgment as a matter of law under Rule 50 of the Federal Rules

of Civil Procedure. The trade-dress claim went to the jury, which found for Groeneveld

and awarded it $1,225,000 in damages.

Lubecore appeals the denial of its Rule 50 motion with respect to the trade-dress

claim. Groeneveld in turn cross-appeals from the dismissal of its other claims. For the

reasons set forth below, we REVERSE the judgment of the district court denying

Lubecore’s Rule 50 motion with respect to Groeneveld’s trade-dress claim, AFFIRM

the district court’s dismissal of Groeneveld’s other claims, and REMAND the case with

instructions to enter judgment as a matter of law in favor of Lubecore on all claims.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 3

I. BACKGROUND

A. Factual background

This case, like many trademark cases before it, is a contest between an oldtimer

and a newcomer. Their battle is over a relatively obscure product—the grease pump

used in an automated lubrication system (ALS) for commercial trucks. An ALS, as the

name implies, is a system for delivering a controlled amount of lubricant to different

parts of a machine (in this case a commercial truck) while the machine is in operation.

Automated lubrication saves time, increases operational efficiency, and minimizes

corrosion by obviating the need for frequent manual lubrication. The primary

component of an ALS is a grease pump that forces grease through injectors and hoses

to targeted areas at timed intervals.

Groeneveld is the American branch of a Dutch company that has been in the ALS

business for over 40 years. It began marketing the grease pump at issue in the present

case—designated by Groeneveld as its EP0 pump—in the 1980s. The Groeneveld

family of companies employs thousands of people and has a well-established

international presence.

Lubecore, by contrast, is the new kid on the block. It was founded in 2007 by

Jan Eisses, who had previously sold another company of his to Groeneveld and had been

a Groeneveld employee for approximately three years. Lubecore is located in Canada,

is owned by Eisses and his wife, and employed 12 people at the time of pretrial

discovery. It designed the grease pump at issue in this case in December 2007 and began

selling it first in Canada (starting in April 2008) and then in the United States (starting

in March 2009). The two companies’ competing grease pumps are shown below:

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B. Procedural background

In April 2010, Groeneveld brought suit against Lubecore in the United States

District Court for the Northern District of Ohio. The complaint alleged that Lubecore

was marketing a grease pump that was “virtually identical” to Groeneveld’s pump with

the intent to confuse consumers into believing that the two pumps were made by the

same company, thus freeriding on Groeneveld’s established goodwill by passing off

Lubecore pumps as Groeneveld pumps. Groeneveld further alleged that, of all

competing manufacturers, only Lubecore made a pump that had essentially the same

design as Groeneveld’s.

The complaint asserted six claims against Lubecore: trade-dress infringement,

unfair competition, and false advertising, all in violation of the Lanham Act § 43(a), 15

U.S.C. § 1125(a) (Counts 1-3); deceptive trade practices, in violation of Ohio Revised

Code §§ 4165.02 et seq. (Count 4); unfair competition, in violation of Ohio common law

(Count 5); and unlawful interference with contractual and business relationships, again

in violation of Ohio common law (Count 6). Groeneveld sought monetary damages and

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permanent injunctive relief. It also filed a motion for a preliminary injunction on the

same day as the complaint.

The parties consented to the adjudication of Groeneveld’s preliminary-injunction

motion by a magistrate judge, who denied the motion after a four-day hearing.

Groeneveld and Lubecore then filed cross-motions for summary judgment before the

district court. In a three-page summary order, the court denied both motions and set the

case for trial.

A seven-day jury trial was held in October 2011. At the close of Groeneveld’s

proof, Lubecore moved for judgment as a matter of law under Rule 50 of the Federal

Rules of Civil Procedure, which motion it renewed at the close of all the evidence. The

district court, ruling from the bench and without any analysis (other than “I’ve listened

to everything, believe me”), granted Lubecore’s Rule 50 motion with respect to Counts

2-6 of the complaint, but reserved ruling on Count 1, the trade-dress claim.

Count 1 was subsequently submitted to the jury in the form of the following three

interrogatories, which track the three elements of a trade-dress claim:

1. Do you find that Plaintiff Groeneveld proved by a

preponderance of the evidence that its Trade Dress (the external

shape and appearance of the pump, including logo and color) are

non-functional?

2. Do you find that Plaintiff Groeneveld proved by a

preponderance of the evidence that its Trade Dress (the external

shape and appearance of the pump, including logo and color) is

distinctive in the marketplace, that is has it acquired secondary

meaning?

3. Do you find that Plaintiff Groeneveld proved by a

preponderance of the evidence that there is a likelihood of

confusion in the minds of consumers of EP[0] pumps as to the

source of Defendant Lubecore’s EP[0] pump?

The jury answered “yes” to all three interrogatories and awarded Groeneveld

damages in the amount of $1,225,000. On the following day, the jury returned to hear

arguments as to whether Lubecore’s trade-dress infringement had been willful (which

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would be a relevant consideration for the purpose of damages in the event that

Groeneveld’s other claims were revived on appeal). It answered “yes” to this question

also. The district court accepted the jury’s answers and entered judgment in favor of

Groeneveld. It also entered a permanent injunction barring Lubecore from selling its

grease pump in the United States.

After the jury rendered its verdict, Lubecore renewed its pending Rule 50 motion

for judgment as a matter of law and moved in the alternative for a new trial pursuant to

Rule 59 of the Federal Rules of Civil Procedure. The district court denied both motions.

Lubecore’s timely appeal and Groeneveld’s cross-appeal followed.

Regarding the denial of its Rule 50 and Rule 59 motions, Lubecore contends that

there was insufficient evidence on all three elements of Groeneveld’s trade-dress

claim—nonfunctionality, secondary meaning, and the likelihood of confusion—to

submit the claim to the jury. Alternatively, Lubecore argues that the jury’s findings on

all three elements were against the weight of the evidence. It also seeks to set aside the

damage award on the ground that there was no finding of a causal link between

Lubecore’s alleged trade-dress infringement and Groeneveld’s lost profits. Groeneveld’s

cross-appeal, in turn, seeks a judgment and punitive damages on the previously

dismissed counts of its complaint (Counts 2-6), as well as a broadening of the district

court’s injunction to include Canada.

II. ANALYSIS OF LUBECORE’S APPEAL

A. Standard of review

Rule 50 of the Federal Rules of Civil Procedure authorizes a court to grant

judgment as a matter of law when “a party has been fully heard on an issue during a jury

trial and the court finds that a reasonable jury would not have a legally sufficient

evidentiary basis to find for the party on that issue.” Fed. R. Civ. P. 50(a). A motion for

judgment as a matter of law should be granted “if, under the governing law, there can

be but one reasonable conclusion as to the verdict.” Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 250 (1986). The standard for judgment as a matter of law under Rule 50

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 7

is the same as the standard for summary judgment under Rule 56. Reeves v. Sanderson

Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). We review the district court’s denial

of a Rule 50 motion de novo. Imwalle v. Reliance Med. Prods., Inc., 515 F.3d 531, 543

(6th Cir. 2008).

B. Legal framework

The Lanham Act, 15 U.S.C. §§ 1051-1141n, encompasses the protection not just

of wordmarks and symbols, but also of trade dress. Wal-Mart Stores, Inc. v. Samara

Bros., 529 U.S. 205, 209 (2000). “Trade dress refers to the image and overall

appearance of a product. It embodies that arrangement of identifying characteristics or

decorations connected with a product, whether by packaging or otherwise, that makes

the source of the product distinguishable from another and promotes its sale.”

Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 629 (6th

Cir. 2002) (brackets, ellipsis, and internal quotation marks omitted). It “involves the

total image of a product and may include features such as size, shape, color or color

combinations, texture, graphics, or even particular sales techniques.” Id. (internal

quotation marks omitted). Trade dress might include, for example, the outer shape and

design of a Ferrari car (Ferrari S.P.A. v. Roberts, 944 F.2d 1235 (6th Cir. 1991)), or of

a Gibson guitar (Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539 (6th

Cir. 2005)); the arrangement, content, and layout of an Abercrombie & Fitch catalogue

(Abercrombie, 280 F.3d 619); or the decoration, vibe, and “motif” of a Mexican

restaurant (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)).

Trade dress is generally classified into the categories of either “product design”

(also known as “product configuration”) or “product packaging,” and occasionally a

“tertium quid,” a third, indeterminate catchall. Samara Bros., 529 U.S. at 215. The

trade dress at issue in the present case—the overall design of Groeneveld’s grease

pump—indisputably falls under the product-design category.

To prevail on a claim for the infringement of a product-design trade dress, a

plaintiff must prove that its allegedly infringed product design (1) is nonfunctional,

(2) has acquired secondary meaning, and (3) is confusingly similar to the allegedly

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infringing product design. Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 414

(6th Cir. 2006); accord Samara Bros., 529 U.S. at 211. The meaning of these three

elements is fleshed out in the caselaw.

A product design is functional “if it is essential to the use or purpose of the article

or if it affects the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs., Inc.,

456 U.S. 844, 850 n.10 (1982). The Supreme Court, for example, has held that the

“dual-spring design” employed at the base of road signs to make them withstand strong

wind gusts is functional and therefore cannot be protected as trade dress. TrafFix

Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001).

Secondary meaning, perhaps more helpfully dubbed “acquired meaning,”

indicates that “in the minds of the public, the primary significance of a product feature

or term is to identify the source of the product rather than the product itself.” Inwood

Labs., 456 U.S. at 851 n.11; Samara Bros., 529 U.S. at 211, 211 n.*. For example, this

court has held that the outer-body design of a Ferrari car possesses secondary meaning

because Ferrari showed that the public primarily associates that design with a Ferrari car,

not just generically with a sports car. See Ferrari, 944 F.2d at 1239-42.

Finally, the test for confusing similarity, also called the “likelihood of confusion”

test, is whether an ordinary consumer would confuse the products at issue, which in fact

come from different sources, as emanating from a single source or from associated

sources. See, e.g., Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr.,

109 F.3d 275, 280 (6th Cir. 1997). The “general concept underlying the likelihood of

confusion is that the public believe that the mark or dress owner sponsored or otherwise

approved the use of the trademark or trade dress.” Abercrombie, 280 F.3d at 645

(brackets and internal quotation marks omitted). Whereas nonfunctionality and

secondary meaning are required to show protectability—that is, that the plaintiff’s trade

dress is capable of Lanham Act protection in the first place—likelihood of confusion is

required to show that the trade dress has in fact been infringed by the defendant.

Abercrombie, 280 F.3d at 629.

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All three of the foregoing requirements—nonfunctionality, secondary meaning,

and the likelihood of confusion—are elements of a trade-dress infringement claim, not

defenses to such a claim. See, e.g., Lanard Toys, 468 F.3d at 414. The burden of

proving each requirement therefore falls on the plaintiff. Id. at 414, 416-17; 15 U.S.C.

§ 1125(a)(3). If the plaintiff fails to present sufficient evidence for a reasonable jury to

find in its favor on any one of the three elements, then judgment as a matter of law

should be entered for the defendant. See Celotex Corp. v. Catrett, 477 U.S. 317, 322

(1986) (holding that judgment should be entered against “a party who fails to make a

showing sufficient to establish the existence of an element essential to that party’s case,

and on which that party will bear the burden of proof at trial”).

The parties in the present case dispute whether Groeneveld made a sufficient

showing to enable a reasonable jury to find in its favor on each of the three elements.

Their focus, however, is on nonfunctionality and the likelihood of confusion. We will

therefore concentrate on these two elements.

C. Nonfunctionality

Groeneveld does not dispute that its grease pump is a functional device designed

to automatically lubricate commercial trucks. Nor does Groeneveld attempt to protect

the individual component parts of its pump. Rather, the question is whether the “overall

shape” of the grease pump (such shape being the trade dress claimed by Groeneveld) “is

essential to the use or purpose of the article or . . . affects the cost or quality of the

article.” See Inwood Labs., 456 U.S. at 850 n.10.

Groeneveld’s pump, in its overall shape, consists of a black base topped by a

clear reservoir. The base is made of cast aluminum and contains the pump mechanism,

which is connected by wires and hoses to the rest of the ALS; the reservoir is made of

plastic and holds the grease. Both components clearly serve a function essential to the

product’s operation.

Trial testimony by two Groeneveld witnesses, Willem van der Hulst and

Cornelius Wapenaar, makes clear that not only the basic manufacture of the grease

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pump’s components, but also their size and shape, are closely linked to the grease-

pumping function. The shape of the base is functionally determined because it

minimizes the amount of material needed in construction. And the volume of the

reservoir is functionally dictated by the amount of grease that the vehicle needs during

each servicing interval. The use of clear material in the reservoir is also functional

because it allows one to easily see how much grease is left in the pump.

Because the volume of the reservoir (like that of any cylinder) is the algebraic

product of its surface area times its height, and because the surface area and the volume

of the reservoir are both functionally determined (the former by the necessity of fitting

into the base and the latter by the necessity of holding a predetermined amount of

grease), the height is also functionally determined. The overall design of the grease

pump is therefore functional. As the magistrate judge found when denying Groeneveld’s

motion for a preliminary injunction, “all the elements of Groeneveld’s pump are there

for some practical benefit or reason . . . . Groeneveld has not presented its pump as in

any way the equivalent of an automotive tail fin—a purely ornamental feature that

contributes no demonstrable benefit to the operation or efficiency of the designed

product.”

Because Groeneveld presented no evidence showing that the individual

components of its grease pump or their overall configuration are nonfunctional, it failed

to carry its burden of creating a triable issue of fact with respect to nonfunctionality. See

Antioch Co. v. W. Trimming Corp., 347 F.3d 150, 158 (6th Cir. 2003) (“[I]n order to

receive trade dress protection for the overall combination of functional features, those

features must be configured in an arbitrary, fanciful, or distinctive way. . . . In other

words, where individual functional components are combined in a nonarbitrary manner

to perform an overall function, the producer cannot claim that the overall trade dress is

nonfunctional.” (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 34

(2001)); Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013

(9th Cir. 1999) (reversing the jury’s finding of trade-dress infringement, granting

judgment as a matter of law for the defendant, and holding that “where the whole is

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nothing other than the assemblage of functional parts, and where even the arrangement

and combination of the parts is designed to result in superior performance, it is semantic

trickery to say that there is still some sort of separate ‘overall appearance’ which is

non-functional”).

Groeneveld nonetheless argues that the design of its pump is nonfunctional

because the particular design is not necessary for effective competition in the ALS

business. This is shown, according to Groeneveld’s opening brief, by the fact that none

of Groeneveld’s competitors other than Lubecore makes a similar-looking pump:

Several products compete with Groeneveld’s EP0, but none

comes anywhere close to Groeneveld’s trade dress, other than the

Lubecore, that looks like an exact copy of it[.] All these products

have the same purpose—to pump grease—yet no other

competitor found it necessary to copy Groeneveld’s trade dress.

We reject Groeneveld’s argument because adopting it would result in a reversion

to the very standard that the Supreme Court unanimously rejected in TrafFix Devices,

Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). That case concerned the trade

dress of a “dual-spring design” employed in the base of outdoor signs in order to keep

them upright in strong wind conditions. Id. at 25. Our circuit reversed the district

court’s determination that the dual-spring design was functional, reasoning that “[i]t

takes little imagination” to conceive of alternative workable designs. Mktg. Displays,

Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 940 (6th Cir. 1999). This court instead held

that “[t]he appropriate question is whether the particular product configuration is a

competitive necessity.” Id.

But competitive necessity is an appropriate avenue of inquiry, the Supreme Court

held, only in cases of “esthetic functionality,” not in cases of utilitarian functionality

where a design is essential to the use or purpose of a device. TrafFix Devices, 532 U.S.

at 33. The Supreme Court then reversed this court’s decision regarding the dual-spring

design, holding that the proper measure of functionality is the previously quoted

“essential to the use or purpose” standard, not the competitive-necessity test:

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Discussing trademarks, we have said[,] in general terms, a

product feature is functional, and cannot serve as a trademark, if

it is essential to the use or purpose of the article or if it affects the

cost or quality of the article. Expanding upon the meaning of this

phrase, we have observed that a functional feature is one the

exclusive use of which would put competitors at a significant

non-reputation-related disadvantage. The Court of Appeals in the

instant case seemed to interpret this language to mean that a

necessary test for functionality is “whether the particular product

configuration is a competitive necessity.” 200 F.3d at 940. This

was incorrect as a comprehensive definition. As explained in

[Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995),

and Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982)],

a feature is also functional when it is essential to the use or

purpose of the device or when it affects the cost or quality of the

device . . . . Where the design is functional under the Inwood

formulation there is no need to proceed further to consider if

there is a competitive necessity for the feature.

TrafFix Devices, 532 U.S. at 32-33 (some internal citations and some quotation marks

omitted). Because the dual-spring design in TrafFix Devices accomplished the function

of keeping the signs upright in strong winds, the Supreme Court held that our circuit had

erred in requiring competitors to explore alternative designs (such as using three or four

springs) and in finding the design to be nonfunctional. Id. at 33-34.

TrafFix Devices makes clear that Groeneveld’s argument about the availability

of alternative grease-pump designs is misguided. The issue is not whether Lubecore

could have designed a grease pump with a different appearance; the issue is whether

Groeneveld’s design “is essential to the use or purpose of the article or if it affects the

cost or quality of the article.” Inwood Labs., 456 U.S. at 850 n.10. In other words, the

question is whether the overall shape of Groeneveld’s grease pump was substantially

influenced by functional imperatives or preferences. See Antioch, 347 F.3d at 158

(framing the inquiry as whether “engineering necessity influenced the configuration of

the functional components”). We accordingly reject Groeneveld’s invitation to drift

back into the error of inquiring about possible alternative designs. See id. at 157

(holding that, in light of TrafFix Devices, the district court properly rejected evidence

concerning the availability of alternative scrapbook-album designs where the plaintiff’s

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“dual strap hinge” design was functional because it held the album together and

permitted the pages to lie flat).

Groeneveld next points to the testimony of Willem van der Hulst, its Vice

President of Design and Production, who was involved in designing the EP0 grease

pump. Van der Hulst testified that Groeneveld did not “have to make its pump look this

way on the inside because of the way it works on the outside.” For the reasons stated

above, this testimony is insufficient to create a triable issue of fact under TrafFix

Devices because it improperly focuses on the possibility of alternative designs.

Moreover, van der Hulst’s testimony was entirely conclusory—he simply

asserted that Groeneveld was not limited to any particular design, but he did not explain

why the chosen design was nonfunctional, and certainly did not speak with any

particularity about the functional considerations that, as outlined above, apparently

dictated the pump’s design. The same goes for van der Hulst’s bald assertion that the

pump’s design did not “affect the way the thing performs.” See Secalt S.A. v. Wuxi

Shenxi Constr. Mach. Co., Ltd., 668 F.3d 677, 684 (9th Cir. 2012) (holding that the

plaintiff’s evidence of nonfunctionality was insufficient as a matter of law where,

“[e]xcept for conclusory, self-serving statements, [the plaintiff] provide[d] no other

evidence of fanciful design or arbitrariness”).

Groeneveld next asserts that General Motors Corp. v. Lanard Toys, Inc.,

468 F.3d 405 (6th Cir. 2006), held that a company manager’s testimony about product

development “was legally sufficient evidence of non-functionality.” But Lanard Toys

does not stand for the proposition that the bare act of putting a manager on the stand to

claim nonfunctionality is sufficient to create a triable issue of fact. If that were the law,

any plaintiff could get a jury trial on the issue in question by simply mouthing the legal

conclusion that its product design is nonfunctional. The holding in Lanard Toys was

instead predicated on the court’s specific conclusion that the design features in question

were not influenced by functional considerations. See id. at 417 (crediting the testimony

of a General Motors manager to the effect that the Army’s performance specifications

dictated certain elements of the Humvee’s dimensions, but not the vehicle’s “exterior

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appearance and styling,” including its “grille, slanted and raised hood, split windshield,

rectangular doors, [and] squared edges,” elective features that did not perform any

function).

Groeneveld further relies on van der Hulst’s testimony to the effect that

Groeneveld’s “commercial people” “have a finger in the pot” and “have the most power

in the group.” The record is unclear as to what this testimony means and why it is

relevant to the issue of nonfunctionality. There are multiple references in van der

Hulst’s testimony to the so-called “commercial people,” but Groeneveld never explained

the meaning of the phrase. If, as the literal meaning of the word “commercial” suggests,

the “commercial people” were business executives in charge of evaluating the pump’s

commercial viability, then the involvement of such individuals in developing the product

design says nothing about whether or not the design is nonfunctional. The same is true

if “commercial people” means managers generally. And even if “commercial people”

means those in the marketing or design department, the testimony would still be

unhelpful to Groeneveld. Every viable mass-market product is presumably designed

with marketing considerations in mind, and this unremarkable fact says nothing about

whether the product design is nonfunctional.

Finally, Groeneveld points to van der Hulst’s testimony that the other grease

pumps on the market look “terrible,” and that Groeneveld’s founder was “different from

the really old-fashioned mechanical people” in that “he had very good choice” and

“like[d] nice things,” such as “a nice office, nice cars, nice people.” Van der Hulst also

testified that Groeneveld has not switched to alternative grease-pump designs, even

though they might be cheaper, because the current pump is “a very nice pump” and

“[e]verybody knows this pump.”

But these statements fail to meaningfully address the issue of nonfunctionality.

The fact that Mr. Groeneveld has good taste does nothing to prove that the grease

pump’s design is nonfunctional. And to the extent that van der Hulst’s testimony was

intended to show that less attractive or cheaper grease-pump designs were also possible,

such a showing plainly falls short under TrafFix Devices because courts should not

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inquire into alternative designs when the design at issue is substantially influenced by

functional considerations. See TrafFix Devices, 532 U.S. at 33-34 (“There is no need

. . . to engage, as did the Court of Appeals, in speculation about other design possibilities

. . . . Here, the functionality of the spring design means that competitors need not

explore whether other spring juxtapositions might be used. The dual-spring design is not

an arbitrary flourish in the configuration of MDI’s product; it is the reason the device

works. Other designs need not be attempted.” (internal citation omitted)).

In short, Groeneveld’s evidence was insufficient to enable a reasonable jury to

find that the grease pump’s design is nonfunctional. And Groeneveld’s proof of

nonfunctionality is rendered even more wanting by the fact that Lubecore has pointed

to the testimony of van der Hulst and Wapenaar, Groeneveld’s own witnesses, to show

that the pump’s volume, shape, and materials are all essentially influenced by the

dictates of function.

This result is consonant with the public policy underlying the functionality

doctrine, which is to channel the legal protection of useful designs from the realm of

trademark to that of patent. Such channeling ensures that the high public costs of

monopoly are not imposed without an assurance that the design satisfies the rigorous

requirements of patentability, including novelty and nonobviousness, and is protected

for only a limited period of time. As well stated by the Supreme Court,

[t]he functionality doctrine prevents trademark law, which seeks

to promote competition by protecting a firm’s reputation, from

instead inhibiting legitimate competition by allowing a producer

to control a useful product feature. It is the province of patent

law, not trademark law, to encourage invention by granting

inventors a monopoly over new product designs or functions for

a limited time, after which competitors are free to use the

innovation. If a product’s functional features could be used as

trademarks, however, a monopoly over such features could be

obtained without regard to whether they qualify as patents and

could be extended forever (because trademarks may be renewed

in perpetuity).

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 16

Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 164-65 (1995) (internal

citations omitted); accord Antioch Co. v. W. Trimming Corp., 347 F.3d 150, 159-60 (6th

Cir. 2003).

Groeneveld has no patent on the design of its grease pump. That is why it has

pursued a trade-dress claim under the Lanham Act. But nonfunctionality is an

indispensable element of a trade-dress claim, so Groeneveld’s failure to raise a triable

issue as to whether its product design is nonfunctional is alone sufficient to require

judgment as a matter of law in favor of Lubecore on this claim. We will nevertheless

proceed to discuss the likelihood-of-confusion element of a trade-dress claim because

it bears upon Groeneveld’s cross-appeal and further supports our resolution of this case

in light of the important public-policy issues involved.

D. The likelihood of confusion

Another element that Groeneveld must prove in order to prevail on its trade-dress

claim is that an ordinary consumer of grease pumps would likely be confused into

thinking that the two pumps at issue were manufactured by the same company or were

associated or affiliated with the same company. See Abercrombie & Fitch Stores, Inc.

v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 645 (6th Cir. 2002); Daddy’s Junky Music

Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997). The

appropriate benchmark for assessing the likelihood of confusion is the ordinary

consumer who would consider buying the product at issue. Frisch’s Restaurant, Inc. v.

Shoney’s, Inc., 759 F.2d 1261, 1266 (6th Cir. 1985) (“In assessing the similarity of two

marks, it is the effect upon prospective purchasers that is important.” (brackets and

internal quotation marks omitted)). And the focus is on “the typical buyer exercising

ordinary caution,” Daddy’s Junky Music, 109 F.3d at 285, not “the most obtuse

consumer,” Abercrombie, 280 F.3d at 648 (internal quotation marks omitted).

This court has enumerated eight factors to consider in determining whether the

trade dresses of competing products present a sufficient likelihood of confusion:

“(1) strength of the plaintiff’s [trade dress]; (2) relatedness of the goods; (3) similarity

of the [trade dresses]; (4) evidence of actual confusion; (5) marketing channels used;

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(6) likely degree of purchaser care; (7) defendant’s intent in selecting the [trade dress];

(8) likelihood of expansion of the product lines.” Frisch’s, 759 F.2d at 1264. To create

a triable issue of fact, the plaintiff’s “burden is to identify a disputed factor or set of

factors whose resolution would necessarily be dispositive on the likelihood of confusion

issue.” Abercrombie, 280 F.3d at 646 (internal quotation marks omitted).

These factors are helpful guides rather than rigid requirements, Daddy’s Junky

Music, 109 F.3d at 280, with “[t]he ultimate question remain[ing] whether relevant

consumers are likely to believe that the products or services offered by the parties are

affiliated in some way.” Id. The Frisch factors are therefore not always weighed

consistently in this court’s caselaw, and a particular factor might receive a greater or

lesser weight depending on the circumstances. Accordingly, this court has sometimes

resolved the question of confusion by reference to only one or a few of these factors,

without inquiring into the rest. See Abercrombie, 280 F.3d at 646-47 (considering “only

one of the eight factors,” namely, the similarity of the parties’ trade dresses in light of

their different logos and brands, and ruling for the defendant on that basis).

In the present case, Groeneveld’s and Lubecore’s logos and trademarks appearing

on their respective product designs are unmistakably different, as shown in the product

photos at the beginning of this opinion. The former is green with a large “G” mark and

says “GROENEVELD”; the latter is red with a maple-leaf mark and says “lubecore.”

And the evidence is undisputed that the same logos appear on the parties’ sales and

marketing literature. In light of such a stark visual difference in branding, no reasonable

consumer would think that the two grease pumps belong to the same company. See

Abercrombie, 280 F.3d at 647 (holding that, because the trademarks of Abercrombie &

Fitch and American Eagle were displayed throughout their clothing catalogs, the

catalogs’ trade dresses were, “as a matter of law, not similar”); Frisch’s, 759 F.2d at

1265 (holding that Shoney’s use of the phrase “Big Boy” in the name of its restaurants

did not render the phrase confusingly similar to Frisch’s own Big Boy restaurants, in part

because “[b]y emphasizing ‘Shoney’s Big Boy Restaurants,’ as it did in its advertising,

Shoney’s has identified itself as the source of the services”) (emphases in original);

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 18

Antioch, 347 F.3d at 160 (“Westrim’s use of its own distinctive logo, scrollwork,

stickers, and face sheet provide sufficient signals to scrapbook buyers that its albums are

not made by Antioch, and Antioch has not contended otherwise.”); AutoZone, Inc. v.

Tandy Corp., 373 F.3d 786, 797 (6th Cir. 2004) (holding that the parties’ use of their

respective “house marks” in proximity to the challenged mark “reduces the likelihood

of confusion from any similarity that does exist”); see also Daddy’s Junky Music,

109 F.3d at 283 (“Similarity of marks is a factor of considerable weight.”).

This conclusion is reinforced by the fact that, at about $2,500 apiece, ALS

systems are expensive industrial products that are not likely to be purchased without

substantial care and research. Compare Gibson Guitar Corp. v. Paul Reed Smith

Guitars, LP, 423 F.3d 539, 549 n.13 (6th Cir. 2005), and Maker’s Mark Distillery, Inc.

v. Diageo N. Am., Inc., 679 F.3d 410, 423 (6th Cir. 2012) (noting, respectively, that

purchasers of $3,000 guitars and $100 bottles of tequila likely exercise a high degree of

care), with Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 413 (6th Cir. 2006),

and Frisch’s, 759 F.2d at 1269 (noting, respectively, that purchasers of inexpensive toys

and fast food are not likely to exercise a high degree of care).

Groeneveld does not dispute that potential purchasers of grease pumps are

knowledgeable and sophisticated people. Such purchasers are therefore not likely to

ignore the stark difference in labeling and mistakenly purchase a Lubecore ALS when

they intend to purchase a Groeneveld ALS. As this court has stated,

when a buyer has expertise or is otherwise more sophisticated

with respect to the purchase of the services at issue, a higher

standard [of consumer confusion] is proper. Similarly, when

services are expensive or unusual, the buyer can be expected to

exercise greater care in her purchases. When services are sold to

such buyers, other things being equal, there is less likelihood of

confusion.

Daddy’s Junky Music, 109 F.3d at 285; accord Versa Prods. Co., Inc. v. Bifold Co.

(Mfg.) Ltd., 50 F.3d 189, 213 (3d Cir. 1995) (“In the case of a relatively high-priced,

single-purchase article, there is hardly likelihood of confusion or palming off when the

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 19

name of the manufacturer is clearly displayed.” (internal quotation marks and ellipsis

omitted)).

Groeneveld argues, however, that the two pumps’ starkly different labeling

would not distinguish the pumps in the eyes of their sophisticated consumers because

“(1) labels are not the predominant brand identifiers in the industry; (2) corporate

mergers and acquisitions are frequent, so competitor affiliations are constantly changing;

(3) many pumps bear multiple company names; (4) a pump’s label does not identify who

made it or where it was manufactured; (5) Lubecore is a newcomer and has no

independent brand recognition; and (6) witnesses who saw the Lubecores were still

confused, notwithstanding the Lubecore label.” We find none of these arguments

persuasive.

Points (2) and (5) simply have no bearing on the issue of whether the pumps’

different labels are sufficient to tell them apart. Point (1) is similarly irrelevant and, in

any event, is not supported by the record evidence cited by Groeneveld. The most that

the cited testimony shows is that certain witnesses were able to distinguish Groeneveld’s

pumps from pumps other than Lubecore’s without even looking at the labels, which says

nothing about whether a consumer would be able to distinguish a Groeneveld pump from

a Lubecore pump with the labels. Points (3) and (4), on the other hand, plainly do not

apply to the labels at issue in the present case. Finally, point (6), which is really

Groeneveld’s only relevant argument on this issue, will be discussed below under the

“actual confusion” factor. The upshot is that Groeneveld has at most identified possible

reasons why—hypothetically—differential branding might not be sufficient to

distinguish the sources of competing products, but it did not present any evidence to

show that any of those hypothetical reasons actually applies in the present case.

We therefore conclude that the starkly different branding of the two grease

pumps and the high degree of care presumably exercised by the pumps’ sophisticated

consumers—factors 3 and 6 of the Frisch factors—compel the conclusion that, as a

matter of law, Groeneveld has failed to carry its burden of raising a triable issue

regarding the likelihood of confusion. Nevertheless, in order to give Groeneveld the

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benefit of all favorable inferences, we will proceed to analyze all of the Frisch factors

to see whether, taken together, they would enable a reasonable jury to find for

Groeneveld on this issue.

1. Lubecore’s intent in selecting the trade dress

Because Groeneveld makes Lubecore’s intent the centerpiece of its likelihood-of-

confusion analysis, we will start with this factor and then proceed to the other Frisch

factors. Groeneveld argues that Lubecore intended to copy Groeneveld’s trade dress

(minus the label) and that this “bad intent,” for which Lubecore has offered “no innocent

explanation whatsoever,” is sufficient to prove the likelihood of confusion.

The similarities in the two pumps’ appearance (excluding the labels), the fact that

other manufacturers’ pumps do not have a similar look, and the fact that Lubecore’s

founder used to be a Groeneveld employee constitute circumstantial evidence of an

intent to copy. But Groeneveld is mistaken about the legal significance of such copying.

In particular, its assertion that the intentional copying of its trade dress constitutes “bad

intent” that creates a “presumption of confusing similarity” indicates a fundamental

misapprehension of the purposes of trademark law.

Groeneveld’s argument fails to appreciate that trademark law does not prohibit

copying as such; that is the province of copyrights and patents. See TrafFix Devices, Inc.

v. Mktg. Displays, Inc., 532 U.S. 23, 34 (2001) (“The Lanham Act does not exist to

reward manufacturers for their innovation in creating a particular device; that is the

purpose of the patent law and its period of exclusivity.”); Fuji Kogyo Co. v. Pac. Bay

Int’l, Inc., 461 F.3d 675, 686 (6th Cir. 2006) (“Trademark law cannot properly make an

end run around the strict requirements of utility patent law by giving equivalent rights

to exclude.” (brackets and internal quotation marks omitted)).

A manufacturer who desires protection against copying must satisfy the

requirements of protectability under the copyright or patent regimes and must also

submit itself to the limited time periods of protection afforded under those regimes.

Those requirements and their attendant restrictions incentivize valuable artistic and

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 21

scientific creations while ensuring that the social costs of monopoly are contained within

reasonable bounds. See U.S. Const. art. I, § 8, cl. 8 (the Copyright and Patent Clause)

(“The Congress shall have Power . . . To promote the Progress of Science and useful

Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their

respective Writings and Discoveries.”); Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

489 U.S. 141, 146-51 (1989) (explicating the policies and tradeoffs of the patent

system); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 428-29 (1984)

(explicating the policies and tradeoffs of copyright law).

The public policy behind the patent regime is perhaps most clearly set out in

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964):

The grant of a patent is the grant of a statutory monopoly . . . .

Patents . . . are meant to encourage invention by rewarding the

inventor with the right, limited to a term of years fixed by the

patent, to exclude others from the use of his invention. . . . But in

rewarding useful invention, the rights and welfare of the

community must be fairly dealt with and effectually guarded. To

that end the prerequisites to obtaining a patent are strictly

observed, and when the patent has issued the limitations on its

exercise are equally strictly enforced. . . . Thus the patent system

is one in which uniform federal standards are carefully used to

promote invention while at the same time preserving free

competition.

Id. at 229-31 (internal citations and quotation marks omitted).

Trademark law’s likelihood-of-confusion requirement, in contrast, is designed

to promote informational integrity in the marketplace. By ensuring that consumers are

not confused about what they are buying, trademark law allows them to allocate their

capital efficiently to the brands that they find most deserving. This, in turn, incentivizes

manufacturers to create robust brand recognition by consistently offering good products

and good services, which results in more consumer satisfaction. That is the virtuous

cycle envisioned by trademark law, including its trade-dress branch. As stated in

Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995):

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In principle, trademark law, by preventing others from copying

a source-identifying mark, reduces the customer’s costs of

shopping and making purchasing decisions, for it quickly and

easily assures a potential customer that this item—the item with

this mark—is made by the same producer as other similarly

marked items that he or she liked (or disliked) in the past. At the

same time, the law helps assure a producer that it (and not an

imitating competitor) will reap the financial, reputation-related

rewards associated with a desirable product. The law thereby

encourages the production of quality products, and

simultaneously discourages those who hope to sell inferior

products by capitalizing on a consumer’s inability quickly to

evaluate the quality of an item offered for sale. It is the

source-distinguishing ability of a mark . . . that permits it to serve

these basic purposes.

Id. at 163-64 (internal citations, quotation marks, and brackets omitted) (emphasis in

original).

Such an incentive structure would of course be disrupted if a manufacturer’s

hard-won brand recognition were open to appropriation by other manufacturers who

confused consumers into believing that the two brands are affiliated or are one and the

same. If manufacturers’ qualitative efforts were subject to such skimming off, they

would have less incentive to improve their offerings and build a robust brand in the first

place.

No harm is done to this incentive structure, however, by the copying of a product

design that does not confuse consumers as to the product’s source. As long as a

consumer can easily identify the source based on the trademark, the consumer will still

be able to allocate his or her capital freely and efficiently, and manufacturers will retain

the incentive to improve their offerings and solidify their brands. So trademark law, like

the law of unfair competition of which it is a part, focuses not on copying per se but on

confusion:

The law of unfair competition has its roots in the common-law

tort of deceit: its general concern is with protecting consumers

from confusion as to source. While that concern may result in

the creation of ‘quasi-property rights’ in communicative symbols,

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 23

the focus is on the protection of consumers, not the protection of

producers as an incentive to product innovation. Judge Hand

captured the distinction well in Crescent Tool Co. v. Kilborn &

Bishop Co., 247 F. 299, 301 (2d Cir. 1917), where he wrote:

“The plaintiff has the right not to lose his customers through false

representations that those are his wares which in fact are not, but

he may not monopolize any design or pattern, however trifling.

The defendant, on the other hand, may copy plaintiff’s goods

slavishly down to the minutest detail: but he may not represent

himself as the plaintiff in their sale.”

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 157 (1989) (brackets and

emphasis omitted).

That is why, in the absence of consumer confusion, and in the absence of any

copyright or patent protection, copying is perfectly legal. Indeed, such copying is more

than just legal; it is often beneficial:

Trade dress protection must subsist with the recognition that in

many instances there is no prohibition against copying goods and

products. In general, unless an intellectual property right such as

a patent or copyright protects an item, it will be subject to

copying. As the Court has explained, copying is not always

discouraged or disfavored by the laws which preserve our

competitive economy. Allowing competitors to copy will have

salutary effects in many instances. Reverse engineering of

chemical and mechanical articles in the public domain often leads

to significant advances in technology.

TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001) (internal citations

and quotation marks omitted); accord Bonito Boats, 489 U.S. at 156-57 (“[T]he efficient

operation of the federal patent system depends upon substantially free trade in publicly

known, unpatented design and utilitarian conceptions. . . . Both the novelty and the

nonobviousness requirements of federal patent law are grounded in the notion that

concepts within the public grasp, or those so obvious that they readily could be, are the

tools of creation available to all. They provide the baseline of free competition upon

which the patent system’s incentive to creative effort depends.”); Compco Corp. v.

Day-Brite Lighting, Inc., 376 U.S. 234, 238 (1964) (“[I]f the design is not entitled to a

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design patent or other federal statutory protection, then it can be copied at will.”); Sears,

Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 231 (1964).

The same principle has been affirmed repeatedly by this court. See Antioch Co.

v. W. Trimming Corp., 347 F.3d 150, 160 (6th Cir. 2003) (“Antioch repeatedly attacks

Westrim for slavishly copying the CREATIVE MEMORIES album. What Antioch fails

to appreciate is that copying is not always discouraged or disfavored and can have

salutary effects. Copying preserves competition, which keeps downward pressure on

prices and encourages innovation.” (brackets, citations, and quotation marks omitted));

Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 640

(6th Cir. 2002) (explaining that “copying preserves competition”); See also 1 J. Thomas

McCarthy, McCarthy on Trademarks and Unfair Competition § 8:19 (“[C]opying in

order to imitate an unpatented functional aspect of a competitor’s product is what free

competition is all about . . . .”).

The clear import of the twin principles that copying in the absence of copyright

or patent protection often serves useful purposes, and that the concern of trademark law

is not about copying per se but about copying that engenders consumer confusion, is that

the appropriate “intent” to focus on is not the intent to copy but rather the intent to

deceive or confuse. See Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d

410, 424 (6th Cir. 2012) (discussing the “inten[t] to infringe”); Daddy’s Junky Music

Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 286 (6th Cir. 1997)

(referring to the “intent of causing confusion”); Ferrari S.P.A. v. Roberts, 944 F.2d

1235, 1243 (6th Cir. 1991) (asking whether the intent was “to deceive purchasers and

thus derive a benefit from another’s name and reputation” or “rather to avail oneself of

a design which is attractive and desirable”); Frisch’s Restaurant, Inc. v. Shoney’s, Inc.,

759 F.2d 1261, 1269-70 (6th Cir. 1985) (referring to “fraudulent intent” in the context

of whether the defendant “acted to perpetuate any false impressions that consumers

might have”).

If the law were otherwise, an act that is not only legal but also often beneficial

would be transformed into evidence—or worse, as Groeneveld suggests, a

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“presumption”—of unlawfulness. Such an interpretation would contravene TrafFix

Devices and the other decisions cited above and would subvert the fundamental purposes

of trademark law. We recognize that the intent to copy might be probative in proving

secondary meaning, see, e.g., Abercrombie, 280 F.3d at 639, but such intent standing

alone has no bearing on the likelihood-of-confusion issue.

The principle that copying can have salutary effects is illustrated by the

circumstances of the present case. Contrary to Groeneveld’s protestation that

Lubecore’s copying of Groeneveld’s design (minus the logo) has “no innocent

explanation,” the similarity 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.

By making the appearance of its pump essentially the same as Groeneveld’s

(other than the label), Lubecore has specifically targeted consumers who are familiar

with the Groeneveld pump and offered them a competitive option. The Supreme Court

has unanimously confirmed that using a functional product’s look to promote a

competitive offering is a procompetitive practice. See TrafFix Devices, 532 U.S. at 34

(“If buyers are assured the product serves its purpose by seeing the operative

mechanism[,] that in itself serves an important market need.”).

Lubecore’s targeting of Groeneveld’s customers would of course be unfair and

anticompetitive if Lubecore masqueraded as Groeneveld and confused them about the

product they were buying. But Lubecore has in fact scrupulously avoided such

confusion by choosing a starkly different logo that it prominently displays on its pumps

and on all its sales and marketing literature. That is why the differential labeling is

critical—it transforms a practice that would otherwise be anticompetitive into one that

is procompetitive. And by specifically targeting Groeneveld customers, Lubecore

focuses its competitive activity on those who are most interested in such competition,

thereby decreasing the consumers’ search costs and intensifying competition where it

matters most. None of this is to say, of course, that consumers should switch from

Groeneveld to Lubecore or that Lubecore makes a better pump. The point, rather, is that

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 26

the state of affairs where consumers are aggressively courted and offered competitive

options is beneficial as a matter of public policy.

These points are borne out by one of Groeneveld’s witnesses, Dean Osborn, who

testified that he likes the way the Groeneveld pump works but does not particularly care

who manufactures it. Therefore, when Lubecore offered him its pump as an alternative

to the Groeneveld pump, he considered and ultimately bought the Lubecore pump.

Osborn testified that he has been satisfied with both the Groeneveld and the Lubecore

pumps that he has owned, and that he has never been confused between the two brands:

[Osborn:] [W]hat I would think is if you just, if you took off the

top half of the thing and you took all the labels off of these

things, take the red thing off and the black one and you take the

label off here and you put that base with this off and that off and

you look at the bases, to me I would not tell the difference. And

to me that means I’m comfortable with the product. If it be

whose product it is, I don’t care. I have a good experience with

it. So I’m very comfortable with it. Whatever labels you put on

it or sticker, you know, I mean it doesn’t matter. I’m looking at

the mechanism that functions the grease to go to the spots where

the greasing, that’s all I’m -- that’s all I care about.

...

[Groeneveld’s Counsel:] Sir, would you have considered or

bought the Lubecores if the pump didn’t look so much like the

Groeneveld pump?

[Osborn:] It made me very comfortable when it -- when that

looks like a Groeneveld . . . . The Lubecore, the comfort zone of

knowing that it looks identical to it and it probably operates the

same thing, they, you know, in the literature they have the blocks

of where the main grease goes to the different blocks and then it

goes out. Everything to me resembles the same, you know what

I mean. The Lubecore and Groeneveld, they look like sister

machines, okay. They look like twins. And for me making my

decision on buying a greaser, that’s easy. I like these two

systems. Who owns it doesn’t matter to me. I just want the

grease to go to the places to where [it should go] and I want a

place here to service it.

...

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 27

[Lubecore’s Counsel:] . . . When you bought the four Lubecore

systems, it was clear to you that you were buying Lubecore

systems, not Groeneveld systems, correct?

[Osborn:] Correct.

[Lubecore’s Counsel:] Garvin [an independent distributor

through which both parties sold their ALS systems] has told you

as much himself?

[Osborn:] Um-hum, yes.

[Lubecore’s Counsel:] And the product has got Lubecore’s label

on it more than one place, right?

[Osborn:] Yes.

[Lubecore’s Counsel:] And you said you were given some

Lubecore marketing materials?

[Osborn:] Yes.

[Lubecore’s Counsel:] So there was no confusion on your part

about whose product you were buying?

[Groeneveld’s Counsel:] Objection.

[Osborn:] Correct.

Groeneveld objects to Lubecore’s targeted competition, arguing that Lubecore’s

pumps are of “diminish[ed] . . . quality,” have been subject to recalls, and “have been

seen leaking grease.” It also points to Lubecore’s practice of offering to extend

Groeneveld’s warranty and to replace Groeneveld pumps and parts with Lubecore

products.

These allegations, however, do not strengthen Groeneveld’s trade-dress claim or

make Lubecore’s competition unfair. If Lubecore’s pumps are in fact inferior, all the

better for Groeneveld: Consumers would soon realize the difference in quality on the

clearly labeled pumps and flock to Groeneveld. But that is a business judgment to be

made by consumers as they see fit, not a legal judgment to be dictated by trade-dress

law. The free market, not the courts, should pick winners and losers in the business

world. As stated in TrafFix Devices, 532 U.S. at 28, “protection for trade dress exists

to promote competition,” not to hinder it.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 28

Groeneveld’s protestations against slavish copying admittedly have a certain

emotional appeal and presumably swayed the jury. After all, people generally dislike

copycats. But, as the foregoing discussion demonstrates, the proper application of

trademark law requires us to focus our analysis not on the intent to copy the product

design, but on the likelihood of consumer confusion. Evidence of Lubecore’s intent to

copy Groeneveld’s product design is therefore of no help to Groeneveld. Such evidence,

if anything, shows the procompetitive benefits of Lubecore’s practices and cautions

against allowing the issue to go to the jury. See Wal-Mart Stores, Inc. v. Samara Bros.,

529 U.S. 205, 214 (2000) (discussing the desirability of “summary disposition of an

anticompetitive strike suit” in the trade-dress context).

2. Strength of Groeneveld’s trade dress

This factor “focuses on the distinctiveness of a mark and its recognition among the

public.” Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 419 (6th Cir. 2012)

(internal quotation marks omitted). Groeneveld submitted evidence of its prominence and

pedigree in the industry, its extensive advertising, and, most importantly, witnesses who

testified that they recognized the pump’s design and associated it with Groeneveld. This

evidence is sufficient to support a factual finding that Groeneveld’s trade dress is strong. But

such a finding is of no help to Groeneveld in the absence of any evidence that consumers are

likely to confuse the source of the competing grease pumps.

3. Relatedness of the goods

The parties do not dispute that Groeneveld’s and Lubecore’s grease pumps perform the

same function and directly compete in the industry. So this factor would also favor Groeneveld

if it had any proof of the likelihood of confusion.

4. Similarity of the marks

As discussed above, the starkly different labels and trademarks on the competing

products serve to dispel any likelihood of confusion between the two pumps. This factor

weighs heavily against Groeneveld.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 29

5. Evidence of actual confusion

Nothing shows the likelihood of confusion more than the fact of actual confusion. So

evidence of actual consumer confusion, though not necessary, would be immensely helpful to

Groeneveld. See Frisch’s Restaurant, Inc. v. Shoney’s, Inc., 759 F.2d 1261, 1267 (6th Cir.

1985) (noting that evidence of actual confusion “is not necessary,” but “it is obviously the most

probative proof of likelihood of confusion”); Daddy’s Junky Music Stores, Inc. v. Big Daddy’s

Family Music Ctr., 109 F.3d 275, 284 (6th Cir. 1997) (same).

But Groeneveld submitted no surveys showing whether a sample of the relevant

consumer population was actually confused as between the parties’ products. See Frisch’s,

759 F.2d at 1267-69, and General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 414 (6th

Cir. 2006), which discuss the significance of consumer surveys in showing the likelihood of

confusion. Groeneveld instead offered the testimony a single customer, Dean Osborn, in

support of its actual-confusion claim. Osborn, however, unequivocally testified on cross-

examination that he was not confused as to the origin of the pumps, as reflected in the transcript

quoted above.

Groeneveld also cites the testimony of some of its own employees and affiliates

professing “shock” and “surprise” that Lubecore’s pump “looks the same” as Groeneveld’s,

saying that it “looks like a Groeneveld with a Lubecore sticker on it.” None of these witnesses,

however, were consumers, and none of them were actually confused as to the origin of the two

pumps. Indeed, Groeneveld admitted at oral argument that it had no evidence of actual

confusion:

[Judge Gilman:] Do you have any evidence that anybody thought they

were buying your client’s product when they were actually buying

Lubecore’s?

[Groeneveld’s Counsel:] I don’t.

In sum, there is simply no evidence of actual confusion in the record.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 30

6. Marketing channels used

The record contains evidence that both parties often attended the same industry trade

shows, that they marketed their products over the Internet, and that certain distributors sold

both parties’ ALS systems. Such evidence is sufficient to show that there is a commonality in

how the ALS systems are marketed. But, again, this evidence would be helpful to Groeneveld

only if there were any showing of the likelihood of confusion.

7. Likely degree of purchaser care

As previously discussed, consumers of grease pumps are knowledgeable and

sophisticated about the market, and they are unlikely to buy an expensive ALS system without

exercising a substantial degree of care. This factor strongly favors Lubecore, especially when

coupled with the stark dissimilarity in labeling.

8. Likelihood of market expansion

The only evidence regarding the likelihood of market expansion with respect to either

company was the testimony of Eisses, Lubecore’s founder, that he “really would like to move

into the United States,” but could not do so because of the lawsuit. This factor, however, does

not alter our analysis in the absence of any evidence of confusing similarity.

9. Summary of the Frisch factors

The upshot of the likelihood-of-confusion analysis is that (1) the overall trade dresses

of the two pumps are dissimilar because they are distinguished by starkly different logos,

(2) the sophisticated purchasers of the expensive ALS systems presumably exercise a high

degree of care in making their purchases, (3) there is no evidence of actual confusion, and (4)

the intent and effect of Lubecore’s choice of design is procompetitive. These Frisch factors all

weigh in Lubecore’s favor. By contrast, the factors that weigh in Groeneveld’s favor (giving

it the benefit of all reasonable inferences) are that (1) Groeneveld’s trade dress is strong, (2) the

parties’ products are related, and (3) the parties use similar marketing channels. But these latter

factors standing alone do not raise a triable issue of fact regarding the likelihood of confusion

in the absence of any evidence showing that a potential consumer exercising ordinary care

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 31

would confuse the grease pumps in question. In sum, no reasonable jury could conclude on the

basis of the evidence before it that Groeneveld has met its burden of proving the likelihood of

confusion.

E. Groeneveld’s additional trade-dress theories

Beyond the so-called “point-of-sale confusion,” which has been discussed in Part II.D.

above, Groeneveld claims that the Lanham Act protects against other kinds of confusion and

harm as well. The additional theories put forth by Groeneveld are (1) initial-interest confusion,

and (2) dilution.

1. Initial-interest confusion

The usual focus of trademark law is on whether consumers are misled as to the source

of the goods they purchase. But in certain circumstances trademark law protects against

confusion even if it is ultimately dissipated before the moment of purchase. “Initial-interest

confusion takes place when a manufacturer improperly uses a trademark to create initial

customer interest in a product, even if the customer realizes, prior to purchase, that the product

was not actually manufactured by the trademark-holder.” Gibson Guitar Corp. v. Paul Reed

Smith Guitars, LP, 423 F.3d 539, 549 (6th Cir. 2005).

The following example demonstrates why protection against initial-interest confusion

might make sense under the right circumstances: Suppose that you are taking a long roadtrip,

you have become very hungry, and you are keeping an eye out for a McDonald’s, which is your

fast-food restaurant of choice. Soon you spot a “McDonald’s” sign by an exit. You take the

exit and follow the signs, looking forward to your favorite McDonald’s hamburger.

But—behold—it’s a Burger King. The signs were misleading. You are not so fond of Burger

King but, having already made the detour and loath to waste even more time, you reluctantly

buy a Whopper and get on with your trip. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t

Corp., 174 F.3d 1036, 1064 (9th Cir. 1999) (using a similar example with video rental stores).

One does not have to be an economist to see that such a deceitful creation of an initial interest

is harmful to consumer interests, brand-development incentives, and efficient allocation of

capital, even if the confusion is ultimately dissipated by the time of purchase.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 32

But the circumstances of the present case do not remotely approach those of a

paradigmatic initial-interest case. To begin with, Groeneveld presented no proof as to how, in

view of the two pumps’ starkly different labels and logos, there would be any initial-interest

confusion at all. Nor does Groeneveld explain why, assuming that such initial confusion were

to take place, it would not be instantly dissipated without any harm. Simply invoking the term

“initial-interest confusion” does not state a viable claim, let alone create a triable issue of fact.

This court has held that alleging a hypothetical chance that a consumer might think for an

instant that two products come from the same source is simply not enough:

Gibson essentially argues that the shape of the PRS guitar leads

consumers standing on the far side of the room in a guitar store to

believe they see Gibson guitars and walk over to examine what they

soon realize are PRS guitars. We decline to adopt such a broad reading

of the initial-interest-confusion doctrine. Many, if not most, consumer

products will tend to appear like their competitors at a sufficient

distance. Where product shapes themselves are trademarked, such a

theory would prevent competitors from producing even dissimilar

products which might appear, from the far end of an aisle in a

warehouse store, somewhat similar to a trademarked shape.

Gibson Guitar, 423 F.3d at 552 (emphasis in original) (internal citations omitted); see also 4

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:9 (“Confusion

means more than that the junior user’s mark merely calls to mind the senior user’s mark.”

(internal quotation marks omitted)).

In the final analysis, what appears to concern Groeneveld is not so much initial-interest

confusion, but initial interest, period. Groeneveld, in other words, simply does not want its

customers to become interested in Lubecore as a potential competitor and possibly switch over.

We cannot ascribe any other interpretation to Groeneveld’s rather startling claim that evidence

of diverted sales and declining revenues, which are the normal signs of a market opening up

to competition, create “a reasonable inference of confusion and its likelihood.” Groeneveld’s

desire to be the only game in town is perfectly natural; most companies would hope for that

status. But Groeneveld cannot get any help from trade-dress law in suppressing lawful

competition. See TrafFix Devices, 532 U.S. at 28 (“[P]rotection for trade dress exists to

promote competition.”).

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 33

2. Dilution

Groeneveld’s remaining Lanham Act argument is that Lubecore is responsible for

diluting the former’s brand image by introducing low-quality knockoffs into the market. Such

dilution, Groeneveld argues, is harmful above and beyond the alleged harm caused by

consumer confusion.

Under a dilution theory, a plaintiff’s trade dress is protected against the kind of imitation

that cheapens the genuine product by flooding the market with a mass of low-quality replicas,

even if consumers do not ultimately confuse the fake with the real thing. See Ferrari S.P.A.

v. Roberts, 944 F.2d 1235, 1244-45 (6th Cir. 1991). Examples include the proliferation of fake

Rolex watches or Ferrari look-alikes. See Rolex Watch, U.S.A., Inc. v. Canner, 645 F. Supp.

484 (S.D. Fla. 1986); Ferrari, supra.

Trade-dress dilution is actionable under § 43(c) of the Lanham Act,

15 U.S.C. § 1125(c). Groeneveld’s grease-pump design, however, is neither nonfunctional nor

“famous,” which are both requirements of a dilution claim under that section. Moreover,

Groeneveld’s dilution claim is being raised for the first time on appeal. Neither the complaint

nor the interrogatories submitted to the jury contain any references to 15 U.S.C. § 1125(c) or

to a claim of dilution. Dilution is not just a new argument; it is a new cause of action. We

therefore decline to further consider this new claim on appeal. See Fed. R. Civ. P. 15 (setting

forth the procedure to be followed in order to amend a complaint to add a new claim); Foster

v. Barilow, 6 F.3d 405, 407 (6th Cir. 1993) (“In general, issues not presented to the district

court but raised for the first time on appeal are not properly before the court.” (brackets and

internal quotation marks omitted)).

F. Trade-dress summary

In sum, because Groeneveld failed to present sufficient evidence to enable a reasonable

jury to find both that Groeneveld’s product design is nonfunctional and that ordinary consumers

would likely confuse its trade dress with Lubecore’s, judgment as a matter of law should have

been entered for Lubecore. We therefore reverse the district court’s denial of Lubecore’s

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 34

motion for judgment as a matter of law, set aside the jury’s award of damages, and dissolve the

injunction.

III. ANALYSIS OF GROENEVELD’S CROSS-APPEAL

A. Other claims

We now turn to Groeneveld’s cross-appeal, which challenges the district court’s

decision to grant Lubecore’s motion for judgment as a matter of law on counts 2-6 of the

complaint. These counts assert claims of unfair competition and false advertising, both in

violation of 11 U.S.C. § 1125(a) (Counts 2-3); deceptive trade practices, in violation of Ohio

Revised Code §§ 4165.02 et seq. (Count 4); unfair competition, in violation of Ohio common

law (Count 5); and unlawful interference with contractual and business relationships, again in

violation of Ohio common law (Count 6). Groeneveld’s primary argument is that its non-trade-

dress claims should have survived summary disposition for the same reasons that its trade-dress

claim survived.

But Groeneveld’s claims of deceptive trade practices and unfair competition under the

Ohio Deceptive Trade Practices Act (DTPA) and Ohio common law (Counts 4 and 5) were

properly dismissed because they are coextensive with the federal trade-dress claim. See, e.g.,

Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 288

(6th Cir. 1997) (holding that the plaintiff’s Ohio DTPA and common-law claims “mirror the

. . . federal claim of trademark infringement by also requiring proof of a likelihood of

confusion”). The claim of unfair competition under 15 U.S.C. § 1125(a) (Count 2) properly

met the same fate because it requires proof of either a likelihood of confusion or a

misdesignation of origin, neither of which exists in the present case. See Part II.D. above.

This leaves the claims of false advertising under 15 U.S.C. § 1125(a) and tortious

interference under Ohio common law (Counts 3 and 6). In support of these claims, Groeneveld

points to Lubecore’s “mimicking the EP0’s external appearance” and its practice of offering

to extend Groeneveld’s warranty and to replace Groeneveld pumps and parts with Lubecore

products.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 35

The claim of “mimicking” has already been disposed of in the discussion of product-

design copying in Part II.D.1. above. And the claim that Lubecore is at fault for targeting

Groeneveld consumers is untenable. Groeneveld has cited no authority for the proposition that

targeting the customers of one’s competitor by extending a warranty program or offering the

replacement of parts is unlawful. Nor is such a dearth of authority surprising. After all, one

company’s attempt to take customers away from another company in such a manner is the very

essence of competition. Groeneveld’s claim in this respect is exactly the kind of

“anticompetitive strike suit” that is appropriate for “summary disposition.” See Wal-Mart

Stores, Inc. v. Samara Bros., 529 U.S. 205, 214 (2000).

B. Scope of the permanent injunction

Finally, Groeneveld urges us to broaden the scope of the district court’s permanent

injunction to include Canada as well as the United States. This issue is moot because we have

set aside the injunction altogether.

IV. CONCLUSION

For all of the reasons set forth above, we REVERSE the judgment of the district court

denying Lubecore’s Rule 50 motion with respect to Groeneveld’s trade-dress claim, AFFIRM

the district court’s dismissal of Groeneveld’s other claims, and REMAND the case with

instructions to enter judgment as a matter of law in favor of Lubecore on all claims.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 36

____________________

DISSENT

____________________

HELENE N. WHITE, Circuit Judge, dissenting. The majority’s articulation of the “key

issue” presented—“whether a company can use trade-dress law to protect its functional product

design from competition with a ‘copycat’ design made by another company where there is no

reasonable likelihood that consumers would confuse the two companies’ products as emanating

from a single source,” Maj. Op. 1 (emphasis added)—frames this appeal in a manner that

assumes the very issues to be considered—whether the trade dress is functional and whether

there is a reasonable likelihood of confusion—without any acknowledgment that reasonable

inferences to the contrary not only exist but were accepted by a jury and the district court.

I respectfully dissent because I do not agree that Groeneveld presented insufficient

evidence for a reasonable jury to find in its favor on its trade-dress infringement claim.

Moreover, although I agree with the majority as to the basic legal standards governing

copyright, patent, trademark, and trade-dress law, my reading of the relevant precedents does

not fully comport with the majority’s interpretation and application of the law.

I would affirm the district court’s judgment because Groeneveld presented sufficient

evidence to support the jury verdict, the district court did not abuse its discretion in denying

Lubecore’s motion for a new trial or upholding the damages award, and the permanent

injunction is appropriately limited to the United States. Lastly, I would remand for the limited

purpose of instructing the district court to provide on-the-record reasons for its dismissal of

Groeneveld’s federal unfair-competition claim, 15 U.S.C. § 1125(a); Ohio common-law unfair-

competition claim; and Ohio deceptive trade practices act (ODTPA) claim, Ohio Rev. Code §

4165.02.

I.

Groeneveld’s trade dress is the external shape and appearance of its EP0 grease pump

(the Groeneveld pump), including its logo and color. Groeneveld was the exclusive

manufacturer of this style pump for decades, until Lubecore began selling a similar-shaped

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 37

pump. The differences between the two pumps are the company logos and plates, and bands

of color. Although there was ample evidence to support a verdict for either party on

Groeneveld’s trade-dress infringement claim, the jury—after listening to testimony during a

seven-day trial and considering numerous exhibits— found for Groeneveld. Lubecore appeals,

seeking reversal on the basis that Groeneveld failed to present sufficient evidence for a

reasonable jury to find in its favor and that the district court abused its discretion in denying its

motion for a new trial and upholding the damages award.

The law governing Lubecore’s appeal is clear. We must view the evidence in the light

most favorable to Groeneveld, cannot reweigh the evidence, and owe substantial deference to

the jury verdict. Radvansky v. City of Olmsted Falls, 496 F.3d 609, 614 (6th Cir. 2007). The

majority reweighs the facts in Lubecore’s favor notwithstanding that Groeneveld proffered

evidence supporting each element of its claim: “(1) the trade dress is not functional; (2) the

trade dress is distinctive in the marketplace and has acquired ‘secondary meaning,’ thereby

indicating the source of the goods; and (3) the trade dress of the accused product is confusingly

similar.” Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 414 (6th Cir. 2006) (citation

omitted).

A.

Lubecore first attacks the district court’s decision to deny its motion for judgment as

a matter of law and a new trial on the basis that Groeneveld failed to prove non-functionality.

Whether a product feature is functional is a question of fact reviewed for clear error. Fuji

Kogyo Co. v. Pac. Bay Int’l, Inc., 461 F.3d 675, 681 (6th Cir. 2006). The appropriate focus is

the overall trade dress rather than each dissected component. See Tools USA and Equip. Co.

v. Champ Frame Straightening Equip. Inc., 87 F.3d 654, 658 (4th Cir. 1996) (“[T]he critical

functionality inquiry is not whether each individual component of the trade dress is functional,

but rather whether the trade dress as a whole is functional.” (collecting case-law from the

Second, Ninth, Tenth, and Eleventh Circuits for the same proposition)); cf. Antioch Co. v. W.

Trimming Corp., 347 F.3d 150, 157 (6th Cir. 2003) (recognizing that “the district court was

perhaps too categorical in summarily rejecting [the plaintiff]’s argument that the court had to

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 38

consider whether the overall configuration of the album was functional, rather than focusing

exclusively on its component parts”).

“In general terms, a product feature is functional if it is essential to the use or purpose

of the article or if it affects the cost or quality of the article.” Inwood Labs. v. Ives Labs.,

456 U.S. 844, 850 n.10 (1982). “Expanding upon the meaning of this phrase, [the Supreme

Court] ha[s] observed that a functional feature is one the ‘exclusive use of [which] would put

competitors at a significant non-reputation-related disadvantage.’” TrafFix Devices, Inc. v.

Mktg. Displays, Inc., 532 U.S. 23, 32 (2001) (last alteration in original) (quoting Qualitex Co.

v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995)).

In TrafFix, the Supreme Court principally held that our court (which had reversed in

part a district court’s grant of summary judgment in favor of a competitor on the plaintiff’s

trade-dress claim) “gave insufficient recognition to the importance of the expired utility patents,

and their evidentiary significance, in establishing the functionality of the [plaintiff’s]

device”—a dual-spring mechanism for keeping outdoor signs upright in adverse wind

conditions. Id. at 32. The Court then reaffirmed that the Inwood formulation, see 456 U.S. at

850 n.10, is the main test to determine functionality, and held that this court had erred by

inquiring into the competitive necessity of the design where the device was otherwise

functional. 532 U.S. at 32–33. “Where the design is functional under the Inwood formulation

there is no need to proceed further to consider if there is a competitive necessity for the

feature.” Id. at 33. The Court reasoned that the dual-spring design served more than the

purpose of informing consumers that the sign stands were made by the plaintiff, but “provide[d]

a unique and useful mechanism to resist the wind’s force.” Id. In other words, the design was

“the reason the device work[ed].” Id. at 34.

Under TrafFix, the possibility of alternative designs cannot render a trade dress

non-functional where it is otherwise functional under Inwood. Id. at 33. The majority has

morphed this simple principle into a holding that evidence regarding the possibility of

alternative designs is irrelevant to the determination whether a design is functional. TrafFix

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 39

does not so hold.1 See 1 McCarthy on Trademarks and Unfair Competition § 7:75 (4th ed.

2013) (explaining that TrafFix “d[oes] not [hold] that alternative designs cannot be considered

as one source of evidence, along with others, in the initial determination under the Inwood

engineering-driven formulation”).

To be sure, “a court is not required to examine alternative designs when applying the

traditional Inwood test for functionality” because “if a product is clearly functional under

Inwood, a court need not apply the competitive-necessity test and its related inquiry concerning

the availability of alternative designs.” Antioch Co., 347 F.3d at 156. Post-TrafFix, however,

both this court and other courts have continued to consider the possibility, or lack thereof, of

alternative, functionally equivalent designs as one of several factors in determining

functionality. See Fuji Kogyo Co., 461 F.3d at 685–86 (considering testimony that alternative

designs would not be acceptable to consumers); see also Georgia-Pacific Consumer Prods. LP

v. Kimberly-Clark Corp., 647 F.3d 723, 727–28 (7th Cir. 2011); id. at 731 (considering

argument about the availability of alternative designs, but concluding that the possibility of

alternative designs cannot, on its own, render a design nonfunctional); Au-Tomotive Gold, Inc.

v. Volkswagen of Am., 457 F.3d 1062, 1072 n.8 (9th Cir. 2006) (noting that, following TrafFix,

the court of appeals has reiterated that the possibility of alternative designs, among other

factors, is a legitimate consideration in determining whether a product feature is functional);

Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002) (“Nothing in TrafFix

suggests that consideration of alternative designs is not properly part of the overall mix, and

we do not read the Court’s observations in TrafFix as rendering the availability of alternative

designs irrelevant. Rather, we conclude that the Court merely noted that once a product feature

is found functional based on other considerations, there is no need to consider the availability

of alternative designs, because the feature cannot be given trade dress protection merely

because there are alternative designs available.” (internal footnote omitted)). Thus, I do not

read TrafFix as standing for the unqualified proposition that inquiring about possible alternative

designs is error under the Inwood formulation, although (as the district court properly instructed

1

Nor does TrafFix hold that consideration of alternative designs is appropriate only in cases of

“esthetic functionality.”

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 40

the jury) the mere possibility of alternative designs does not render a design non-functional.

Gen. Motors Corp., 468 F.3d at 417; PID 8787.2

Applying the Inwood formulation, I disagree with the majority’s conclusion that

Groeneveld presented “no evidence” that its pump’s overall design is non-functional.

Groeneveld’s vice president of design and production, Willem van der Hulst, agreed that the

base optimized the amount of material in the pump for its internal workings. PID 7989.

However, he did not say (as the majority infers) that the irregular shape of the base was

necessitated based on the pump’s internal components. Rather, he testified that the base was

not “form fitted” around the internal parts, and he clarified that it is the weight of aluminum in

the base that affects the cost. Van der Hulst added that the same amount of aluminum, if

molded to a different shape, probably would not affect the cost of the aluminum but could affect

“the cost of production to work the body,” i.e., the “machine part” of the device. PID 7989–80,

8004–05. The appropriate inference to be drawn from this testimony is that the volume of

aluminum or arrangement of the internal parts could impact the pump’s function, but the

irregular shape of the base is not essential to the pump’s functioning and does not affect the cost

of the device. As van der Hulst made clear, the pump would cost the same even with a different

shape. PID 8005. Further, although the “inside volume” of the upper cylinder reservoir is

determined by “something other than human design” because the reservoir volume affects the

amount of grease the pump can hold, PID 7922, 7988, 8019, it is not apparent that the

cylinder’s shape is the reason the device works.

2

As one commentator has reasoned:

I cannot believe that the Supreme Court in TrafFix meant, in [a] back-handed

way, to overrule decades of precedent which has used alternatives as another source of

evidence to resolve the difficult puzzle of functionality. I think that, as a matter of

policy, consideration of alternatives can assist expert witnesses (and judges) in reaching

a sound opinion (or decision) as to why a shape is or is not “functional” under the

Inwood test. More, not less, evidentiary light should be permitted to shine on the

problem. In TrafFix, the Court said that the “principal question” to be decided was not

the relevance of alternatives, but was the significance of the presence of the alleged

trade dress features in a utility patent. It was this which created “strong evidence” of

functionality in the TrafFix case.

1 McCarthy, supra, § 7:75 (capitalization of internal case names altered). Here, there is no utility patent

that touts the utilitarian advantages of the Groeneveld pump’s design.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 41

In any event, the non-functional configuration of otherwise functional components does

not compel a finding that a product’s overall trade dress is functional as matter of law, and the

majority’s equation of such components adding up to an overall functional design is not the

law. Rather, “in order to receive trade dress protection for the overall combination of

functional features, those features must be configured in an arbitrary, fanciful, or distinctive

way.” Antioch Co., 347 F.3d at 158 (emphasis added). The evidence supports a finding that

the pump’s overall configuration was designed to look distinctive in the industry rather than

due to functional concerns.

First, evidence that the pump’s outer appearance was not dictated by its internal

functioning is sufficient. Whether a product’s design is “essential to the use or purpose of the

article” or “affects the cost or quality of the article,” TrafFix, 532 U.S. at 32–33 (emphasis

added), is the appropriate inquiry. In TrafFix, the Court emphasized that “[t]he point is that the

springs are necessary to the operation of the device,” “the dual-spring design provides a unique

and useful mechanism to resist the force of the wind,” and “[t]he dual-spring design is not an

arbitrary flourish in the configuration of [the] product; it is the reason the device works.” Id.

at 30, 33, 34. Accord Antioch Co., 347 F.3d at 158 (explaining that “where engineering

necessity influence[s] the configuration of the functional components,” the resulting design is

functional).

In General Motors Corp., we concluded that the trade dress of a Hummer/Humvee

vehicle—“the exterior appearance and styling of the vehicle design which includes the grille,

slanted and raised hood, split windshield, rectangular doors, [and] squared edges”—was non-

functional. 468 F.3d at 417. Of course, a vehicle’s grille, hood, windshield, doors and exterior

edges serve particular functions as individual components of the vehicle, but their

individualized designs on the Hummer/Humvee did not. Here too, the Groeneveld pump’s

external appearance—the round and cylindrical shape of the clear reservoir, the grooves on the

top and bottom of the reservoir, the particular placement of the product label and other features,

and the irregular shape of the base—perform no inherently functional purpose. That its

individual components (or inside volume of those components) have functional qualities does

not compel a finding that the trade dress is functional.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 42

Second, van der Hulst’s testimony—asserting that Groeneveld did not have to design

its pump in the unique way it did—was not a bare denial as characterized by the majority:

Q. Did Groeneveld have to make its pump look this way on the outside because

of the way it works on the inside?

A. No, no, of course not. No, no.

Q. Well, again, you say of course not --

A. You can’t -- the pump wasn’t made in this way but you can put the valves

inside. You can make out of the pistons horizontal or vertical, make it

horizontal. You can change the shape of the reservoir round you can make also

reservoirs which are square. So you can change very easily the same pump

[would] function[] the same way.

PID 7920.

A. You see the reservoir on top? This is a reservoir on top, yeah. That is the

container of the [grease]. The reservoir you can make in several dimensions,

yeah. You can make them in two kilos, three. We’re speaking kilos, okay.

This one which you see on the table [is a] six kilo grease container, and this has

to do with the time you want to []come for the next . . . filling . . . .

Q. So the sizes of reservoir of ALS pumps vary then?

A. Yes, vary a lot, yeah.

PID 7922.

Q. Does the shape or outline of the pump affect the way the thing performs, the

way it delivers grease throughout the system?

A. No.

Q. Explain this to the jury. It might be obvious, but I’m sorry. I’ll ask you to

explain.

A. It’s like a car. No? The car go from A to B and they’re all different. The

shape has nothing to do with the function of the [car] moving from A to B,

and it’s the same as the lubrication system. The only thing we have to do

is create energy and that there is an outlet w[h]ere grease is coming out,

how you do that, you can do it in many, many, many ways.

PID 7947 (emphasis added).

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 43

Third, I disagree with the majority’s rejection of van der Hulst’s reference to the

“commercial people.” English is not van der Hulst’s first language, which I believe the jury

could have reasonably taken into account in assessing his testimony. Van der Hulst explained

that the commercial people provide “information of what the market wants.” PID 7920. The

implication is that this company division is involved in design decisions from an aesthetic,

rather than a functional, standpoint. He further testified:

Q. Were the commercial people and the sales people at Groeneveld involved

in the design of the EP-0 Groeneveld pump?

A. Of course. We make -- we make art impression at that time. We make

some sketches. How it would look like. I think we made even another model

to show the pump to the people to management because there was money

involved, and we needed to show what we are going to do. So they had an idea

of the shape and the function is only -- yeah, telling how it will function. That’s

not too easy, but the shape we have to show it, yeah.

PID 7946–47 (emphasis added). A jury could infer that the design of the pump was a separate

consideration from its internal functioning.

Fourth, van der Hulst explained in detail why the pump design is based on branding

considerations and that the pump has a unique look in the marketplace:

A. . . . [W]e were sure that this was the only possibility to make a pump which

looks completely different than the other pumps at that time which were

available because a lot of pumps were made with mechanical parts with bolts

and screws and piece of steel, so on, and plastic. We wanted to make it

different. One piece worked and finished.

Q. Why did you want to make your pump different looking than everybody

else’s that was on the market?

A. Yeah. It’s just a challenge. It’s a challenge of designer and each -- let’s say

you want to make something different than everybody else. . . .

So we want to give it a groove look. So this has to be our pump for many,

many years and has to be good and nice.

Q. And was the Groeneveld EP-0 pump different looking than everybody else’s

on the market?

A. At that time, yes. Yes, of course.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 44

Q. And what about over the last 30 years?

A. We had a lot of success with this pump. Groeneveld went all over the world

with this pump. We created a lot of distributors everywhere, and we were very

successful with this pneumatic system, and we still are.

Q. Over the last 30 years, did anybody else’s ALS pump look like

Groeneveld’s, other than what we have here on the table now?

...

[A.] No, no.

Q. Did new products come on the market, ALS pumps over the last 30 years?

A. Yes, there is a lot of produce of lubrication pumps, lubrication system,

Japanese, Chinese, also Europe, different producers, smaller ones, but they all

have their own systems in a way, and they look all different, all different.

PID 7909–11 (emphasis added).

Q. You said that the Echo or the Sterk pump we were just looking at is a

terrible pump. What’s terrible about it?

A. Yeah, only the look. I have nothing to say about the quality because

probably is a perfect pump, and so it’s only the look which I mention, yeah.

Q. Was that -- was that important to you or a factor in the way you chose to

engineer the Groeneveld pump way back in the way it looked, and not looking

terrible and all those things you just described?

[A.] Yeah, I think so because the Groeneveld was -- at that time, a very

young company with young managers. Mr. Groeneveld, especially, he had very

good choice. He like nice things. We had a nice office, nice cost, nice people.

So we were different than the really old mechanical people. Let’s say it in this

way. We were a sales company, we did a lot of promotion, and there’s a reason

why we wanted to do something else[.]

PID 7923–24.

Q. Do you know this is a grease jockey pump?

A. A grease jockey pump.

Q. Meaning Exhibit 42?

A. Yeah.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 45

Q. Would you have wanted to design and create, make something that looks

like this?

A. No, they[’d] fire me probably.

(Laughter.)

Q. And why, if it works, what does anybody care what it looks like?

A. You see nowadays the cars, even trucks, nowadays, new truck is nicer than

a personal car inside. The shape on the cars, the wheels, the tire protection, the

tanks, the air tanks, it's unbelievable nice. Not only a car would go from A to

B. No, they want also to make something nice. So when you put something on

a chassis of an owner of a truck with truck for a lot of money, he bought all

kinds of chrome insulation, lights and nice things, and then you put this on the

chassis. It’s terrible, huh?

PID 7944–45.

Although the pump’s trade dress is not an ornamental feature per se like certain

components of luxury cars, an ALS pump can be a visible component of a truck. App. 323–35.

And for the consumer, its unique look causes immediate brand recognition. PID 8199. Van

der Hulst testified that, although it costs more to manufacture nowadays, the pump’s overall

appearance has remained the same since it was first produced in the 1980s because the industry

associates it with Groeneveld. PID 7930–31, 8005–06.

Leatherman Tool Group v. Cooper Industries, 199 F.3d 1009 (9th Cir. 1999), does not

support the majority’s result. In Leatherman, the Ninth Circuit concluded that a competitor was

entitled to judgment as a matter of law on Leatherman’s trade-dress claim because the overall

appearance of Leatherman’s Pocket Survival Tool (PST) was functional. Applying the

principle “that[,] in a product configuration case[,] there must be some aspect to the

configuration which is nonfunctional,” id. at 1013 n.6, the Ninth Circuit reasoned:

. . . [T]here is no evidence in the record which supports the jury’s conclusion

that the overall appearance of the PST is protectable trade dress. To be sure, the

PST has an appearance, as every physical object must. There is no evidence,

however, that anything about that appearance (other than the Leatherman name)

exists for any non-functional purpose. Rather, every physical part of the

Leatherman is de jure functional. No witness pointed to any feature of, or

marking on, the PST (other than the Leatherman name) which was ornamental

or intended to identify its source. Rather, the evidence showed . . . that the

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 46

product is in its particular shape because it works better in this shape. Indeed,

the designer of the PST repeatedly testified as to his belief in the truth of

Leatherman’s claims as to the superiority of the PST design.

. . . [Although the] trade dress must be viewed as a whole, . . . where the

whole is nothing other than the assemblage of functional parts, and where even

the arrangement and combination of the parts is designed to result in superior

performance, it is semantic trickery to say that there is still some sort of separate

“overall appearance” which is non-functional.

Id. at 1013 (internal citation, quotation marks, and emphasis omitted). The Ninth Circuit also

noted that “the evidence here was unequivocal that none of the alternative[] [designs] offered

the same functionality as the PST.” Id.

Unlike Leatherman, there was ample evidence that the Groeneveld pump’s design was

intended to identify its manufacturer and does in fact identify its manufacturer in the

marketplace. Moreover, as discussed supra, van der Hulst’s testimony supports a finding that

the pump’s design was based on aesthetic considerations, the shape does not dictate the pump’s

function, other designs would result in the same function, and the design does not result in

superior performance or cost effectiveness.3

In sum, although the jury might have decided otherwise, there was sufficient evidence

to support a finding that the Groeneveld pump’s trade dress is not based on engineering or cost

concerns, but was “selected for [its] distinctiveness.” Ferrari S.P.A. v. Roberts, 944 F.2d 1235,

1247 (6th Cir. 1991); see Cybergun, S.A. v. Jag Precision, No. 2:12-CV-0074, 2012 WL

4868104, at *5 (D. Nev. Oct. 11, 2012) (holding that an overall configuration serves a non-

functional purpose when it identifies the product as a specific product made by a specific

manufacturer), aff’d, --- F. App’x ----, No. 12-17640, 2013 WL 3770855 (9th Cir. July 19,

2013).

3

The Ninth Circuit further stated that “the only reasonable conclusion is that the overall

appearance of the PST is not protectable as trade dress, at least as against a competitor which clearly marks

its own product with a distinct name and who uses distinct packaging.” 199 F.3d at 1014. As the Ninth

Circuit held that the only non-functional component of the PST was the product name, it noted the

difference in product labeling and packaging to emphasize that Leatherman’s competitor did not copy the

one plausibly protected component of its trade dress. It did not reach a separate conclusion on the

likelihood-of-confusion factor.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 47

B.

Lubecore also asserts that there was insufficient evidence to submit the issue of

secondary meaning to the jury. “Secondary meaning is used generally to indicate that a mark

or dress has come through use to be uniquely associated with a specific source.” Two Pesos,

Inc. v. Taco Cabana, Inc., 505 U.S. 763, 766 n.4 (1992). “To establish secondary meaning, a

manufacturer must show that, in the minds of the public, the primary significance of a product

feature or term is to identify the source of the product rather than the product itself.” Inwood

Labs., 456 U.S. at 851 n.11. We consider seven factors to determine whether a trade dress has

secondary meaning: “(1) direct consumer testimony, (2) consumer surveys, (3) exclusivity,

length, and manner of use, (4) amount and manner of advertising, (5) amount of sales and

number of customers, (6) established place in the market, and (7) proof of intentional copying.”

Gen. Motors Corp., 468 F.3d at 418. “No single factor is determinative and every one need not

be proven.” Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 312 (6th

Cir. 2001). The secondary meaning of a plaintiff’s trade dress must exist prior to a competitor’s

alleged infringement. See Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc.,

871 F.2d 590, 596 (6th Cir. 1989).

Except for consumer surveys, Groeneveld presented evidence supporting all the

remaining factors that, if believed, support a jury’s finding of secondary meaning. Herman

Miller, 270 F.3d at 313, 315 (explaining that the absence of consumer surveys is not fatal to a

create a triable claim). Consumer testimony established that the Groeneveld pump has been

recognized by its appearance for many years. PID 4373, 4394, 8199. Even Lubecore’s

founder, Jan Eisses, conceded that the pump is recognizable by its shape, although he qualified

that it “also” can be recognized by the name and label. PID 8729–30. There is no dispute that

Groeneveld exclusively used its unique design for decades before Lubecore made a

similar-shaped pump. As to advertising, the Groeneveld pump is “displayed clearly on all of

[its] promotional materials” and “it is a predominant part of [the company’s] corporate image.”

PID 8293–94 (testimony of Gail Wilson, Groeneveld’s chief financial officer); see PID

8302–10 (Wilson explaining the investment in advertising that incorporates images of the

pump); App. 371–79 (evidence establishing the company’s significant trade show attendance).

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 48

The revenue from the sale of the Groeneveld pump is significant. PX 39 (sealed). There is no

dispute that Groeneveld is an industry leader (and has been for quite some time), PID 8198,

8304, or that its pump is well known in this industry.

Finally, as the majority acknowledges, “[t]he similarities in the two pumps’ appearance

(excluding the labels), the fact that other manufacturers’ pumps do not have a similar look, and

the fact that Lubecore’s founder used to be a Groeneveld employee constitute circumstantial

evidence of an intent to copy.” Maj. Op. 22. This evidence is strong; it is implausible that

Lubecore’s pump, by sheer coincidence, just happened to be manufactured with an identical

shape as the Groeneveld pump. Evidence of intentional copying “is especially helpful to

establishing secondary meaning because there is no logical reason for the precise copying save

an attempt to realize upon a secondary meaning that is in existence.” Herman Miller, 270 F.3d

at 314 (internal quotation marks omitted).

When a newcomer to the market copies a competitor’s trade dress, its intent

must be to benefit from the goodwill of the competitor’s customers by getting

them to believe that the new product is either the same, or originates from the

same source as the product whose trade dress was copied.

Osem Food Indus. Ltd. v. Sherwood Foods, Inc., 917 F.2d 161, 165 (4th Cir. 1990), as quoted

in Herman Miller, 270 F.3d at 314.

The record amply supports a finding that “the unique exterior design and shape of” the

Groeneveld pump constitutes its trade dress and has acquired a secondary meaning, which

makes it distinguishable from other ALS pumps. Ferrari, 944 F.2d at 1240.

C.

Turning to the last element, the majority concludes that Groeneveld failed to prove

likelihood of confusion. We consider eight factors in determining whether the trade dresses of

competing products present a likelihood of confusion: “1. strength of the plaintiff’s [trade

dress]; 2. relatedness of the goods; 3. similarity of the [trade dresses]; 4. evidence of actual

confusion; 5. marketing channels used; 6. likely degree of purchaser care; 7. defendant’s intent

in selecting the [trade dress]; [and] 8. likelihood of expansion of the product lines.” Frisch’s

Rest., Inc. v. Shoney’s Inc., 759 F.2d 1261, 1264 (6th Cir. 1985) (formatting altered).

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 49

Although the ultimate determination whether a set of facts establishes a likelihood of

confusion is a legal conclusion subject to our de novo review, we have held that the issue of

confusion is more appropriately resolved by the fact-finder, rather than by the court as a matter

of law, when a case presents a factually-intensive close call and the factors are balanced.

Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 731, 733 (6th Cir. 2012).

The majority concludes that the “different branding of the two grease pumps and the

high degree of care presumably exercised by the pumps’ sophisticated consumers . . . compel

the conclusion that, as a matter of law, Groeneveld has failed to carry its burden of raising a

triable issue regarding the likelihood of confusion.” Maj. Op. 22. The majority begins its

analysis with a side-by-side comparison of the pumps: “The former is green with a large ‘G’

mark and says ‘GROENEVELD’; the latter is red with a maple-leaf mark and says ‘lubecore.’”

Id. at 19. Because of the label/branding differences that appear on the pumps and in

advertising, the majority finds that “no reasonable consumer would think that the two grease

pumps belong to the same company.” Id.

The similarity factor, however, “entails more than a simple side-by-side comparison of

the [trade dresses] in question.” Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 633 (6th

Cir. 2002). Accord Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100,

1109 (6th Cir. 1991) (“[I]t is axiomatic in trademark law that side-by-side comparison is not

the test.” (internal quotation marks omitted)). Instead, the trade dresses “must be viewed in

their entirety and in context. A court must determine, in the light of what occurs in the

marketplace, whether the [trade dress] will be confusing to the public when singly presented.”

Homeowners Grp., 931 F.2d at 1109 (internal quotation marks and alterations omitted). This

rule is “to account for the possibility that sufficiently similar [trade dresses] may confuse

consumers who do not have both [trade dresses] before them but who may have a general,

vague, or even hazy, impression or recollection of the other party’s [trade dress].” Daddy’s

Junky Music Stores v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 283 (6th Cir. 1997)

(internal quotation marks omitted); see AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 795 (6th

Cir. 2004) (confirming the “anti-dissection rule”). Record evidence supports a finding that the

pumps look similar despite the different labels. PID 4393–94 (consumer testimony: “Q. Does

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 50

anything about that label tell you that it was manufactured at a facility different than where

Groeneveld has its factory? A. No. It could be manufactured at the same place. I mean you

look at the base and everything is pretty much the same.”).

Abercrombie & Fitch Stores v. American Eagle Outfitters, 280 F.3d 619 (6th Cir. 2002),

does not compel a different result. In Abercrombie, we affirmed the district court’s grant of

summary judgment for American Eagle Outfitters (AE) on Abercrombie & Fitch’s (A & F)

trade-dress claim related to its catalog design, reasoning that AE’s catalog was, as a matter of

law, not confusingly similar to the A & F Quarterly. We summarized the following differences

between the two catalogs: 1) although A & F and AE use similar formats to display their

goods, AE “puts significantly fewer garments on each page than A & F does and presents its

clothes in a spare, as opposed to dense, fashion”; 2) AE “uses colorbars and design bars

underneath almost all its garments, while A & F does so occasionally”; 2) “[t]he most striking

visual difference between the catalogs lies in the photographs,” given that “A & F makes

extensive use of photographs depicting apparently college-aged people in often erotic or

homoerotic poses,” whereas AE’s photographs presented “people of various ages in

non-suggestive, often family-oriented situations”; 3) absent from AE’s catalog “is the sort of

campy sketchwork that dominates much of A & F’s editorial content”; 4) AE’s “makes sparing

use of lifestyle editorial content,” and its editorial subjects are “often radically different” from

A & F’s; and 5) each company displays its name and mark on nearly every page of its catalog.

Id. at 646–47.

Given these differences, we reasoned that “[n]o rational trier of fact could conclude that

the overall appearances created by the configuration of the two catalogs are similar” because

they “contain too many significant dissimilarities, in terms of both style, layout, and content,

along with the ubiquitousness of the producers’ respective trademarks constantly

indicating—on practically every page—the catalog’s origin[.]” Id. at 647–48. Abercrombie

thus does not hold that a distinction in labeling alone makes a competitor’s trade dress, as a

matter of law, not confusingly similar where it is otherwise an identical copy of the plaintiff’s

trade dress. Rather, Abercrombie reaffirms that we must examine the appearance of two

products as a whole and in context.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 51

The majority’s second basis for discarding the jury verdict is the “high degree of care

presumably exercised by” consumers of ALS pumps due to the price of such pumps. Maj. Op.

22 (emphasis added). Even when combined with label differences, this presumed fact does not

compel, as a matter of law, the conclusion that there can be no likelihood of confusion. In

Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., we affirmed the district court’s

judgment in favor of the Bourbon-distiller plaintiff in an infringement case where its competitor

used a similar trade-dress element—a red dripping wax seal—on its tequila bottles. 679 F.3d

410, 414 (6th Cir. 2012). With respect to likelihood of confusion, we upheld the district court’s

finding that the similarity factor narrowly favored the plaintiff and should be given considerable

weight, despite the fact that the competitor’s product included a house mark, i.e., a product

label “identifying the name of the manufacturer.” Id. at 422–23. We approved the district

court’s finding that such label differences are not dispositive and rejected the proposition that

our case-law “stand[s] for the proposition that the presence of a house mark always has

significant weight in the similarity analysis[.]” Id. at 422; see Therma-Scan, Inc., 295 F.3d at

634 (“The presence of [a] label on [a competitor’s product] . . . does not eliminate the similarity

between the [trade dresses]. Instead, this labeling diminishes the likelihood of confusion

created by the comparable [trade dresses] and reduces the importance of this factor.”). Further,

we emphasized that the district court’s finding was also supported by its reasoning that:

(1) “testimony in the record indicate[d] that many consumers are unaware of the affiliations

between brands of distilled spirits, and that some companies produce multiple types of distilled

spirits”; and (2) unlike a claim based on a simple palming-off theory, “when the two products

are related enough . . . one might associate with or sponsor the other and still use their own

house mark.” 679 F.3d at 422.

Moreover, we held that even though the factor of consumer care clearly favored the

competitor, this factor was “not dispositive” to override the district court’s findings because

“[c]onfusingly similar marks may lead a purchaser who is extremely careful and knowledgeable

. . . to assume nonetheless that the seller is affiliated with or identical to the other party.” Id.

at 423 (internal quotation marks omitted). We summarized that the plaintiff’s mark was

“extremely strong”; the “most important Frisch factors” are similarity and strength of the mark;

and the degree of consumer care, even though given substantial weight, could not overcome the

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 52

strength of the plaintiff’s mark and the similarity (despite apparent labeling differences). Id.

at 422, 424; see 4 McCarthy on Trademarks and Unfair Competition § 23:53 (“The majority

view is that labeling or use of a word mark does not avoid what would otherwise be an

infringing trade dress.”).4

Here, in denying Lubecore’s motion, the district court found:

[Although] Lubecore’s label and color are different than Groeneveld’s, there is

sufficient evidence from which the jury could have concluded that the products

were confusingly similar despite the difference in markings given the testimony

regarding corporate mergers and acquisitions in the industry; the fact that many

pumps bear multiple company names; and, the fact that labels may not be the

brand identifiers relied on in this industry.

Groeneveld Transp. Efficiency v. Lubecore Int’l, No. 1:10-cv-702, 2012 WL 1142512, at *4

(N.D. Ohio Apr. 4, 2012).

The majority rejects these points (which are reiterated by Groeneveld on appeal) as

irrelevant. To the contrary, facts that undermine presumed consumer care in differentiating

between products are relevant to the overall analysis, and dissimilarities in the trade dresses

based on labeling have less weight in the context of such industry-specific evidence. See

Maker’s Mark Distillery, 679 F.3d at 422.

Moreover, the majority errs in its conclusion that the record does not support a finding

that labels are not the primary brand identifiers in the industry. PID 4251 (“[M]y last thing that

I would say that I could tell them [(i.e., different pump models, namely the Bijur, Grease Jockey

or EcoStar)] all apart is the label.”), 8169 (“Q. There w[ere] questions about the labels and my

question to you is how do you recognize the different pumps that are in your market? A. They

all look much different than ours, than the Groeneveld pump. Q. Do you rely on the label to

make that assessment? A. No.”), 8201 (“Q. Do you identify it based on the label or some

4

Cf. Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 30 (1st Cir. 1989) (“[F]ew would be stupid

enough to make exact copies of another’s mark or symbol. It has been well said that the most successful

form of copying is to employ enough points of similarity to confuse the public with enough points of

difference to confuse the courts.”); Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 364–65

(6th Cir. 1984) (“It has been observed that the expertise of purchasers does not always assure the absence

of confusion. . . . Being skilled in their own art does not necessarily preclude [consumers from] mistaking

one trademark for another when the marks are as similar as those here in issue, and cover merchandise in

the same general field.” (internal quotation marks omitted)).

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 53

other feature that is visible to you? A. No. As far as the label, no, I wouldn’t. The -- it’s more

of the -- it’s just more of the design of it again.”); 8238 (“The core element of the brand

identification is the design of the product itself and then it’s [sic] labeling and the green color

and the identification plate.”).5

Lubecore is a new company with a minimal brand recognition in the United States. This

fact is relevant because it undercuts the weight placed on the different brand labeling; even a

sophisticated consumer cannot be expected to recognize brands that have little name

recognition or have been in existence only a short time. PID 8129–30 (testimony of

independent distributor about his first encounter with a Lubecore pump: “I really didn’t know

what was going on. I was shocked to see that it looked that close. Again, it looked to me like

they had taken a decal of the Lubecore and put it over the top of a Groeneveld pump, and I’ve

known these pumps for a long time and I mean looking at it, it was identical. . . . I didn’t know

there was such a thing as Lubecore, and this looked like the Groeneveld product.”). Further,

the lack of brand recognition undermines the weight the majority accords to the lack of

evidence of actual confusion. See Maker’s Mark Distillery, 679 F.3d at 423 (placing little

weight on the lack of evidence of actual confusion where the competitor’s product was sold for

a short time and in limited quantities).

Like the majority, I now turn to consider all of the Frisch factors to conduct an overall

assessment.

1. Lubecore’s intent in copying Groeneveld’s trade dress

I agree with the majority insofar as it holds that “[i]ntentional copying . . . is not

actionable under the Lanham Act absent evidence that the copying was done with the intent to

derive a benefit from the reputation of another.” Ferrari S.P.A., 944 F.2d at 1243 (internal

quotation marks omitted).

5

The majority opines that the “most that the cited testimony shows is that certain witnesses were

able to distinguish Groeneveld’s pumps from pumps other than Lubecore’s without even looking at the

labels, which says nothing about whether a consumer would be able to distinguish a Groeneveld pump

from a Lubecore pump with the labels.” Maj. Op. 21. But evidence that ALS pumps are identified based

on the overall design rather than the label does, indeed, say something about whether consumers would

be able to distinguish a Groeneveld pump from a Lubecore pump based on the labels alone where they are

otherwise similar; it supports the inference that labels are not necessarily indicative of the product’s

manufacturer as the consumer’s focus in this industry is on the design.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 54

[However, i]f a party chooses a mark with the intent of causing confusion, that

fact alone may be sufficient to justify an inference of confusing similarity.

Intent is relevant because purposeful copying indicates that the alleged

infringer, who has at least as much knowledge as the trier of fact regarding the

likelihood of confusion, believes that his copying may divert some business

from the senior user. Direct evidence of intentional copying is not necessary to

prove intent.

Daddy’s Junky Music Stores, 109 F.3d at 286 (internal quotation marks and citations omitted);

see Larsen v. Terk Techs. Corp., 151 F.3d 140, 149 (4th Cir. 1998) (“[C]ourts have almost

unanimously presumed a likelihood of confusion upon a showing that the defendant

intentionally copied the plaintiff’s trademark or trade dress.”); Frisch’s Rest., 670 F.2d at 648

(explaining that “[t]he intent of [a party] in adopting [another’s trade dress] is a critical factor”

(internal quotation marks omitted)); Ferrari S.P.A., 944 F.2d at 1243 (placing weight on the

“presumption of likelihood of confusion that follows from intentional copying”).

I also agree with the majority that copying is not per se illegal and that evidence of

intentional copying is not necessarily dispositive of the likelihood-of-confusion analysis. For

example, we have held that a plaintiff could not rely this factor where the plaintiff’s mark was

not strong and the competitor’s alleged copy was not very similar to the plaintiff’s trade dress.

Gray v. Meijer, Inc., 295 F.3d 641, 650–51 (6th Cir. 2002). Although “a presumption of intent

to confuse arises when evidence of copying is presented,” courts “recognize that if there is no

real issue of a likelihood of confusion [due to the lack of evidence supporting other factors],

evidence of copying is of no import.” Id. at 651 (internal quotation marks omitted)

However, unlike the majority, I do not read these precedents—or the broader policy

implications underlying the roles of copyright and patent law versus trademark law—to mean

that Lubecore’s intent to copy is “of no help” to Groeneveld. Eisses’s testimony established

that: 1) he instructed Martin Vermeulen (another former Groeneveld employee) to make a

pump for Lubecore, and told him what he “like[d] about the Groeneveld pump and other pumps

in the industry”; 2) the Lubecore pump looks similar to the Groeneveld pump; 3) “Groeneveld

is recognized” in the industry and certain versions of its pump have a good reputation; 5) he

would prefer that the Lubecore pump not look like the pump of a company with a bad

reputation; 6) the Lubecore website says it takes twenty years to build a reputation and that it

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would matter to him if the Lubecore pump looked like a Groeneveld pump if Groeneveld had

a bad reputation; and 7) he could identify a Groeneveld pump by the shape of it, but then

qualified “also because the name and the labeling on it.” PID 8725–30.

Eisses further testified on cross-examination:

Q. So, sir, you wanted it to look like the Groeneveld because you knew about

Groeneveld’s reputation, market presence, and place in the industry, didn’t you?

A. I have no objection with it looking like a Groeneveld.

Q. In fact, you like that, and you like enjoying the benefits of that, don’t

you?

A. It’s a good pump.

Q. Otherwise, you would make it differently, wouldn’t you?

A. It would have been up to Martin.

PID 8730 (emphasis added).

Eisses’s answers on cross-examination are compelling circumstantial evidence that

Lubecore intentionally copied the Groeneveld pump to benefit from Groeneveld’s established

reputation, which under our case-law supports the inference that Lubecore sought to confuse

consumers. In addition, Lubecore’s extended warranty program also specifically targets

Groeneveld customers and products, offering that “Lubecore will extend your current

Groeneveld grease warranty from five years to the Lubecore six years” and that “Lubecore will

honor the replacement of parts under the Groeneveld warranty from the original date of

purchase.” PID 8690. Lubecore represents to Groeneveld consumers that if they use Lubecore

grease, Lubecore will extend the warranty on the Groeneveld pump. (Eisses testified that

Lubecore would typically replace the Groeneveld pump with a Lubecore pump if something

went wrong with a component of the Groeneveld pump). PID 8692–93. Groeneveld is the only

competitor targeted by Lubecore’s warranty program. PID 8693–94. Drawing all inferences

in Groeneveld’s favor, Lubecore’s marketing practices also support the inference of its intent

to cause confusion among consumers in associating the two pumps, as an unaffiliated company

normally does not (and cannot) extend another company’s warranty.

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In any event, even if the record were devoid of evidence supporting the intent factor,

the majority incorrectly concludes that the absence of intent “cautions against allowing the

issue [of confusion] to go to the jury” and “weigh[s] in Lubecore’s favor.” Maj. Op. 31, 34.

Our case-law instructs:

[E]ven if the [d]istrict [c]ourt correctly had ruled as a matter of law that

defendant did not copy plaintiff’s marks intentionally, the [d]istrict [c]ourt

misunderstood the legal significance of this lack of intent by finding that it

decreased the likelihood of consumer confusion. As noted, the presence of

intent can constitute strong evidence of confusion. The converse of this

proposition, however, is not true: the lack of intent by a defendant is largely

irrelevant in determining if consumers likely will be confused as to source.

Intent therefore is an issue whose resolution may benefit only the cause of a

senior user, not of an alleged infringer.

Daddy’s Junky Music Stores, 109 F.3d at 287 (internal quotation marks and citations omitted).

2. Strength of Groeneveld’s trade dress

The majority acknowledges that “th[e] evidence is sufficient to support a factual finding

that Groeneveld’s trade dress is strong.” Maj. Op. 32. The majority, however, opines that

“such a finding is of no help to Groeneveld in the absence of any evidence that consumers are

likely to confuse the source of the competing grease pumps.” Id. But a finding that

Groeneveld’s trade dress is strong is evidence that bears on the overall likelihood-of-confusion

assessment. Our precedents instruct that the strength of Groeneveld’s trade dress is significant

to that assessment. See Maker’s Mark Distillery, 679 F.3d at 424 (“[W]e have said that the

‘most important Frisch factors’ are similarity and strength of the mark[.]” (quoting Gray,

295 F.3d at 646)).

3. Relatedness of the goods

The majority also acknowledges that “[t]he parties do not dispute that Groeneveld’s and

Lubecore’s grease pumps perform the same function and directly compete in the industry.”

Maj. Op. 32. But once again, the majority repeats its error by stating “[s]o this factor would

also favor Groeneveld if it had any proof of the likelihood of confusion.” Id. To the contrary,

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under Frisch, this factor bears on the overall assessment whether there is a likelihood of

confusion.

4. Similarity of the trade dresses

Despite the fact that the shapes of the two pumps are virtually identical, the majority

finds that this factor weighs “heavily” against Groeneveld because of the different labels. As

discussed supra, there is no clear error in the district court’s finding that different labels did not

render the products dissimilar given other industry-specific evidence. This factor, at minimum,

narrowly favors Groeneveld.

5. Evidence of actual confusion

The majority acknowledges that the lack of evidence of actual confusion is not

dispositive to this analysis. See Maker’s Mark Distillery, 679 F.3d at 422 (explaining that a

lack of evidence of actual confusion “is rarely significant,” and upholding the district court’s

finding that the lack of such evidence was non-determinative); Frisch’s Rest., Inc., 759 F.2d

at 1267 (explaining that “proof of actual confusion is not necessary”). Thus, a reasonable jury

could find for Groeneveld in the absence of this factor, depending on the evidence, or lack

thereof, supporting the other factors.

6. Marketing channels used

I agree with the majority that “[t]he record contains evidence that both parties often

attended the same industry trade shows, that they marketed their products over the Internet, and

that certain distributors sold both parties’ ALS systems. Such evidence is sufficient to show

that there is a commonality in how the ALS systems are marketed.” Maj. Op. 33–34. Unlike

the majority, however, I do not consider such evidence inconsequential, especially in

conjunction with the visual similarity of the trade dresses and weight of the other factors. See

Homeowners Grp., Inc., 931 F.2d at 1110 (explaining that “[t]his factor is very significant in

illuminating what actually happens in the marketplace and, where other factors are not

particularly probative, is of special importance,” but that other facts, such as dissimilarities,

may lessen the possibility of confusion).

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7. Likely degree of purchaser care

I cannot agree with the majority’s assessment that this factor “strongly favors Lubecore”

because, as discussed supra, Groeneveld presented evidence that undermines the presumption

of consumer care. Drawing inferences in Groeneveld’s favor, this factor, at most, only slightly

favors Lubecore. In any event, as already discussed, this factor is not dispositive.

8. Likelihood of market expansion

We have explained:

A strong possibility that either party will expand [its] business to compete with

the other or be marketed to the same consumers will weigh in favor of finding

that the present use is infringing. A geographic expansion or an increase in the

types of products or services offered can be relevant. A finding that the parties

will not expand their markets significantly, however, does not address the

ultimate issue of likelihood of confusion.

Daddy’s Junky Music Stores, 109 F.3d at 287 (internal quotation marks, citations, and alteration

brackets omitted). Witnesses for both parties testified that there was potential for growth in the

United States. PID 8244–45 (Jennifer Wolfe, IP lawyer and consultant), PID 8589 (Eisses:

“[W]e have plans to move into the United States and to build a company. It’s a big opportunity.

The market is ten times as large as Canada.”).

9. Summary

Except for the lack of evidence of actual confusion, and even weighing the consumer-

care factor in Lubecore’s favor, the remaining factors either favor Groeneveld or are neutral.

Moreover, even under the majority’s weighing of the factors, there is a three-to-four split which

militates in favor of a jury determination rather than a ruling as a matter of law. Innovation

Ventures, 694 F.3d at 733 (“[W]hen the factors, as found by the district court, were so evenly

balanced—a 4 to 3 split, with the eighth factor not at issue in this case—precedent counsels in

favor of not granting summary judgment.”). On this record, a reasonable jury could find that

the Lubecore pump is likely to confuse consumers.

Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 59

D.

Lubecore raises various challenges to the jury’s damages award. Its arguments were

rejected by the district court in a well-reasoned opinion, see Groeneveld Transport Efficiency,

2012 WL 1142512, at *4–5, and I discern no basis to hold that the district court abused its

discretion in finding the jury award reasonably supported. See Advance Sign Grp., LLC v.

Optec Displays, Inc., --- F.3d ---- , No. 12–3321, 2013 WL 3491277, at *7 (6th Cir. July 15,

2013) (“Our review of a jury’s damage award is extremely deferential, and we will not order

a remittitur or new trial unless the award is contrary to all reason.”).

II.

I now turn to Groeneveld’s cross-appeal.

A.

Groeneveld challenges the district court’s decision to grant Lubecore’s motion for

judgment as a matter of law (made before the case was submitted to the jury) on its federal

unfair-competition, Ohio common-law unfair-competition, and ODTPA claims.6 The district

court provided no explanation for its dismissal of these claims, beyond opining: “I’ve listened

to everything, believe me.” PID 8763. Both in Lubecore’s oral trial motion and on appeal, its

argument urging dismissal of these claims is coextensive with its argument that insufficient

evidence supported Groeneveld’s trade-dress infringement claim.

Because it is unclear from the record why Groeneveld’s remaining claims were

dismissed, I would remand.

B.

Groeneveld urges this court to broaden the scope of the district court’s permanent

injunction to include Canada. I do not find this issue moot because, unlike the majority, I

would not dissolve the injunction. Nevertheless, it is without merit.

6

Because Groeneveld abandons its other claims, I deem those waived.

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The district court did not expressly address Groeneveld’s request for the injunction to

proscribe conduct in Canada but limited relief to Lubecore’s infringing conduct in the United

States. To establish whether “circumstances call for extraterritorial application of the Lanham

Act,” courts have traditionally considered: “(1) whether the defendant’s conduct has a

substantial effect on commerce in the United States; (2) whether the defendant is a citizen of

the United States; and (3) whether there exists a conflict between defendant’s trademark rights

established under foreign law, and plaintiff’s trademark rights established under domestic law.”

Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp. 2d 720, 722 (N.D. Ohio 1999) (citing Vanity Fair

Mills v. T. Eaton Co., 234 F.2d 633, 641 (2d Cir. 1956)); see Steele v. Bulova Watch Co.,

344 U.S. 280 (1952) (holding that federal courts have jurisdiction to apply the Lanham Act

extraterritorially).

Lubecore is not a U.S. citizen but a Canadian corporation, which weighs heavily against

extraterritorial application of the Lanham Act. See Aerogroup Int’l, Inc. v. Marlboro

Footworks, Ltd., 955 F. Supp. 220, 227 (S.D.N.Y. 1997). On the other hand, the parties agree

that there is no conflict with foreign law (as Lubecore has no claim to the trade dress in

Canada) and thus there would be no interference with Canadian sovereignty if the Lanham Act

were applied against Lubecore in Canada.

Groeneveld’s central argument is that Lubecore’s Canadian activities have a substantial

effect on United States commerce, but its discussion rests on speculation—that it is “likely”

that Canadian trucks with installed Lubecore pumps will cross in and out of the United States

and that Lubecore pumps marketed and sold in Canada are “likely” to affect sales and

Groeneveld’s reputation in the United States. Even if (as Groeneveld asserts) U.S. consumers

can access Lubecore’s web sites and order products online, that does not prove that Lubecore’s

Canadian activities have a substantial effect on domestic commerce. Although it is true that

Eisses desired to expand his business in the United States, Groeneveld’s assertion that

Lubecore’s strategy is to “lay the groundwork in Canada for expansion into the U.S.”

presupposes that Lubecore will violate the district court’s injunction and is unsupported by

record evidence. The most Groeneveld has shown is the possibility that Lubecore’s foreign

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activities might impact commerce in this country, but that is not enough to extraterritorially

apply the Lanham Act.

III.

For these reasons, I dissent.