Confusion in the Sixth Circuit over the TrafFix Functionality Standard and the Value of Copying

Confusion in the Sixth Circuit over the TrafFix Functionality Standard and the Value of Copying


The extension of trademark law protection to product configurations has led to complications and confusion. The Supreme Court's attempts to clarify the law of trade dress protection have been insufficient, as we see in this Sixth Circuit opinion, in which the majority and dissenting opinions disagree over the Court's analysis in this area. Groeneveld v. Lubecor, 2013 U.S. App. LEXIS 18897 (6th Cir. 2013) [an enhanced version of this opinion is available to subscribers] is noteworthy for its divergent interpretations of the Supreme Court's less-than-crystal-clear opinion in TrafFix as well as for the majority's declaration that product copying can be pro-competitive and not infringing.

This Expert Commentary describes the different interpretations of TrafFix reached by the majority and dissenting opinions in this case and explains which is ultimately correct. It also looks at the issue of copying product designs and why such copying is often good for competition even if it might be bad for the plaintiff's business.

Facts & Procedural History

Plaintiff Groeneveld Transport Efficiency makes the grease pump on the left, and defendant Lubecore International makes the grease pump on the right:

 The pumps are used in automatic lubrication systems for commercial trucks. Plaintiff Groeneveld's unpatented pump has been sold in the United States for over thirty years. The founder of defendant Lubecore had run Groeneveld's North American business for several years and had distributed Groeneveld's products in Canada before that. The defendant began selling its grease pump in the United States in 2009.

Groeneveld sued for infringement of unregistered trade dress under Section 43(a) (15 U.S.C. § 1125(a) [an annotated version of this statute is available to subscribers]), as well as for unfair competition, false advertising, and Ohio state claims of deceptive trade practices, unfair competition and unlawful interference with contractual and business relationships. At the close of all the evidence at trial, the district court granted defendant's motion for judgment as a matter of law as to all claims except the trade dress infringement claim. The infringement claim went to the jury, which found that the trade dress of Groeneveld's pump was nonfunctional and had secondary meaning. It further found a likelihood of confusion as to the source of the two pumps and determined that Lubecore's infringement was willful. The jury awarded Groeneveld $1.225 million in damages, and the district court permanently enjoined Lubecore from selling its pump in the United States. Lubecore appealed the district court's denial of its motion for judgment as a matter of law as to the trade dress infringement claim and Groeneveld appealed the lower court's dismissal of its other claims.

The majority opinion highlights what it sees as the main issue in the case: "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." The answer it reaches is no. [footnotes omitted]

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