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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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:
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 4

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 5

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 6

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 8

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.
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 9

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 10

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 11

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

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 13

“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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 14

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 15

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;
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 17

(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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 20

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):
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 22

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 24

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 25

“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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 55

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.
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 56

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,
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 57

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).
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 58

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.
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 60

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
Nos. 12-3545/3576 Groeneveld Trans. v. Lubecore Int’l, Inc. Page 61

activities might impact commerce in this country, but that is not enough to extraterritorially
apply the Lanham Act.

III.

For these reasons, I dissent.