Earlier today, in a 2-1 decision, the Sixth Circuit reversed a $1,225,000.00 jury award in a trade-dress case involving a relatively obscure and expensive industrial product: grease pumps used in automated lubrication systems (“ALS”) for commercial trucks. See Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., Case Nos. 12-3545/3576 (6th Cir.) (PDF). The competing products look like this:
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The lawsuit in this case pitted, on your left, the “oldtimer” in the industry (Groeneveld), which has been in the ALS business for over 40 years, versus, on your right, “the new kid on the block” (Lubecore), which started selling the grease pumps at issue in April 2008. The newcomer Lubecore was successful in convincing the Sixth Circuit that the jury’s award in this case was not supported by an evidentiary basis in the record. The majority reversed the district court’s denial of Lubecore’s Rule 50 motion on Groeneveld’s trade-dress claim, and it affirmed the district court’s dismissal of Groeneveld’s other claims, with instructions to the district court to enter judgment as a matter of law in favor of Lubecore on all claims. In short, Lubecore secured a knockout punch.
The “key issue” in this case, as framed by the majority, was “whether a company can use trade-dress law to protect its functional product design from competition with a ‘copycat’ design made by another company where there is no reasonable likelihood that consumers would confuse the two companies’ products as emanating from a single source.” The majority held that it could not, and it reaffirmed the principle that “trademark law is designed to promote brand recognition, not to insulate product manufacturers from lawful competition.” Among other things, the majority concluded that Groeneveld presented no evidence showing that the grease pump’s individual components or their individual configuration were nonfunctional, which Groeneveld needed to show in order to prevail on its claim for infringement of a product-design trade dress. The majority also concluded that the evidence did not support the conclusion that consumers 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. It noted that the two companies’ logos and trademarks appearing on their products were starkly different, and that “at about $2,500 apiece, ALS systems are expensive industrial products that are not likely to be purchased without substantial care and research.”
Judge Helene N. White dissented. She argued that the majority’s articulation of the “key issue” presented framed the issue on 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 acknowledgement that reasonable inferences to the contrary not only exist but were accepted by a jury and the district court.”
Is there a good chance that this case could be heard en banc? Probably not. Although the decision was 2-1, Judge White in dissent “agree[d] with the majority as to the basic legal standards governing copyright, patent, trademark, and trade-dress law,” and she simply disagreed with “the majority’s interpretation and application of the law.”