Category Archives: Functional

Groeneveld v. Lubecore: Trademarks Protect Brands, Not Product Functions

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Groeneveld_v_Lubecore

Groeneveld sued Lubecore arguing that Lubecore was selling a grease pump that was “virtually identical” to its own pump.  According to Groeneveld, Lubecore was attempting “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 alleged that Lubecore was its only competitor which sold a nearly identical looking pump.

Groeneveld 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).”

The case proceed to trial where the district judge dismissed as a matter of law Counts 2-6, but allowed the jury to consider Count 1, the trade dress claim.  The jury found in favor of Groeneveld on that claim and awarded Groeneveld more than $1 million in damages.  Lubecore appealed to the Court of Appeals for the Sixth Circuit.

On appeal, Groeneveld argued that the shape of its pump was protected by trade dress.  Lubecore argued that the overall configuration of the pump was functional and therefore not protected by trade dress.  The Court of Appeals noted that in order to prevail on a trade dress claim, three requirements must be met:

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 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).
. . .
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.*.
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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).
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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.

The Court of Appeals held that because both the individual components and the overall configuration of the pump were functional, Groeneveld failed the first prong of the test.

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 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”).

The fact that Groeneveld’s competitors all used very different designs was not persuasive to the Court.  The Court reasoned that the question is not whether Lubecore could have used a different design, the question is whether Groeneveld’s design, “was substantially influenced by functional imperatives or preferences.”

The Court of Appeals also held that ordinary consumers would not likely confuse Groeneveld’s tradedress with Lubecore’s, in part because both products have their respective logos prominently displayed on the products.

One judge from the three judge Court of Appeal panel dissented finding that there was sufficient evidence for a reasonable jury to find in favor of  Groeneveld, and, in fact, a jury did find in its favor.

Looking at the pictures of the two pumps side-by-side, it is difficult to see what portion would be considered “non-functional.”  One aspect which may have influenced the jury in this case is that Lubecore is owned by a former employee of  Groeneveld who likely intentionally copied the design.  The dissent seemed particularly persuaded by the evidence of intentional copying.  However, “intentional copying” of functional aspects of a product is more often than not, simply competition, not trade dress infringement.  Under U.S. law, outside of patents, monopolies are not allowed on functional aspects of a product.

Louboutin Red Sole Trademark Partially Reinstated on Appeal

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And then the other shoe dropped.  As blogged about previously here, the United States District Court for the District of New York denied a motion for preliminary injunction requested by high fashion shoemaker Christian Louboutin holding that Louboutin’s red sole trademark was not enforceable.

Louboutin appealed this adverse decision to the United States District Court for the Second Circuit which reversed, in part, the District Court’s ruling.  In its ruling, the Second Circuit reversed the District Court’s determination that a single color cannot serve as a trademark in the fashion industry.  The trial court had previously ruled that a single color is always functional in fashion.  The trial court reasoned that giving Louboutin a monopoly on red soles would put Louboutin’s competitors at a competitive disadvantage.  The Second Circuit disagreed holding that a single color could be used as a trademark.

We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―if it is used so consistently and prominently by a particular designer that it becomes a symbol, “the primary significance” of which is “to identify the source of the product rather than the product itself.” Inwood Labs., 456 U.S. at 851 n.11; see also Mana Prods., Inc., 65 F.3d at 1071 (“In light of the Supreme Court’s decision in Qualitex, color is today capable of obtaining trademark status in the same manner that a descriptive mark satisfies the statutory definition of a trademark, by acting as a symbol and attaining secondary meaning.”).

“The crucial question in a case involving secondary meaning always is whether the public is moved in any degree to buy an article because of its source.”23 Genesee Brewing Co., 124 F.3d at 143 n.4. “Factors that are relevant in determining secondary meaning include ‘(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark’s use.'” Id. (quoting Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 1222 (2d Cir. 1985)).

The appeals court further held that Louboutin’s trademark of a red sole on high end women’s shoes has, in fact, acquired limited secondary meaning.  The court did find an exception, however.  Louboutin has not acquired secondary meaning of a red sole when the entire shoe is red.  Since the defendant in this case was sued for making an all red shoe, the court held the defendant did not violate Louboutin’s trademark.

 In light of the evidence in the record, including extensive consumer surveys submitted by both parties during the preliminary injunction proceedings, and of the factual findings of the District Court, we think it plain that Louboutin’s marketing efforts have created what the able district judge described as “a . . . brand with worldwide recognition,” Louboutin, 778 F. Supp. 2d at 448. By placing the color red “in [a] context [that] seems unusual,” Qualitex, 514 U.S. at 162, and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand which, “to those in the know,” “instantly” denotes his shoes’ source, Louboutin, 778 F. Supp. 2d at 448. These findings of fact by the District Court in addressing a motion for a preliminary injunction are not clearly erroneous. We hold that the lacquered red outsole, as applied to a shoe with an “upper”25 of a different color, has “come to identify and distinguish” the Louboutin brand, Qualitex, 514 U.S. at 163, and is therefore a distinctive symbol that qualifies for trademark protection.

We further hold that the record fails to demonstrate that the secondary meaning of the Red Sole Mark extends to uses in which the sole does not contrast with the upper―in other words, when a red sole is used on a monochromatic red shoe.

The Second Circuit went on to modify the Louboutin’ trademark registration to be consistent with the court’s ruling,

Because we conclude that the secondary meaning of the mark held by Louboutin extends only to the use of a lacquered red outsole that contrasts with the adjoining portion of the shoe, we modify the Red Sole Mark, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119,26 insofar as it is sought to be applied to any shoe bearing the same color “upper” as the outsole. We therefore instruct the Director of the Patent and Trade Office to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe.

Because the defendant’s shoe at issue in this dispute was all-red, the Appeal’s Court went on to find in favor of the defendant and uphold the denial of the preliminary injunction.  In sum, Louboutin had its trademark reinstated, but lost this case because its trademark does not apply to all-red shoes.

Miller’s Ale House v. Carolina Ale House – Is copying a competitor’s name, décor, and layout fair competition or infringement?

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Miller’s Ale House has approximately fifty locations primarily in Florida.  Each location has a geographically determined name (e.g. a street, a town, a district) followed by the phrase Ale House.  One location located in Boynton Beach, Florida is named Boynton Ale House.  About a mile from the Boynton Ale House a competitor opened a bar named Carolina Ale House.  Apart from merely copying the name, Miller’s Ale House argued that Carolina Ale House copied the décor, layout, and styling of its Boynton Ale House.

Miller’s Ale House sued Carolina Ale House for common law trademark infringement of the term “ale house,” trade dress infringement for copying the décor, and copyright infringement for copying its copyrighted restaurant layout.

Regarding the common law trademark infringement claim for the term “ale house” the court found that Miller’s Ale House and Carolina Ale House had already litigated this claim ten years earlier.  In that case, the Fourth Circuit Court of Appeals held that the term “ale house” was generic for bar and tavern services.  Despite the passage of time and the fact that Miller’s Ale House had spent significant advertising funds promoting its Ale Houses, the Eleventh Circuit Court of Appeals held that Miller’s Ale House was bound by the prior fourth circuit decision.  The Eleventh Circuit further found that “ale house” is a generic term for a facility that serves beer and ale.

we agree with the District Court that Miller’s is bound by the Fourth Circuit’s decision. Miller’s still has “no protectable interest in the words ‘ale house’ [because] [t]hey are generic words for a facility that serves beer and ale, with or without food.” Ale House Mgmt., 205 F.3d at 141. Because a generic name may not receive trademark protection, the District Court properly granted summary judgment on Miller’s trademark infringement claim.

While Miller’s did present some evidence of consumer confusion, the court found the evidence irrelevant.

 The prominent use of a generic term by two competitors may understandably confuse consumers; however, this does not make the term any less generic. See Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 801 (11th Cir. 2003) (“[C]onfusion . . . is irrelevant unless the mark is protectible in the first instance.”); Boston Duck Tours, 531 F.3d at 21 (“[T]rademark law . . . is not intended to prevent confusion between two similar, generic marks.”).

Miller’s also argued that Carolina Ale House infringed its trade dress in its décor.  Miller pointed out that Carolina Ale House copied its external red lettering, it severs dress of Khaki’s and polo shirts, its center bar, its open kitchen, and its wood paneling.  In order to be protective trade dress, however, the décor must be unique or otherwise distinctive.  The court held that Miller’s claimed trade dress was not “distinctive” and was therefore unprotectable.

We find nothing particularly unique in a restaurant fixing its name in red letters on the outside of its building and on its menu, branding items it sells with that name, dressing its staff in khakis and a polo shirt, featuring a center bar with a soffit, offering seating at “high-top” tables, and paneling its walls with wood. These are the prototypical features—what we might call the “common . . . design,” Brooks Shoe, 716 F.2d at 858—of a standard sports bar or brew pub. The particular name affixed on the wall and to menu items, the specific color of the polo shirts, the type of wood on the walls, the placement of the “high-top” tables, and the openness of the kitchen,14 “even if they in combination could be deemed unique,” Wiley v. American Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985), are all “mere refinement[s]” of this “commonly-adopted and well-known form of ornamentation,” Brooks Shoe, 716 F.2d at 858.

Miller’s last argument was that Carolina Ale House’s infringed its copyrighted floor plan.  The court was equally unimpressed with this argument.  In order to establish copyright infringement, “protectable” elements must be copied.  Here Miller’s argued that Carolina Ale House copied its center bar design, its booth seating to the left of the bar, its high-top tables to the right of the bar, the location of its kitchen and the location of its restrooms.  The court held that these elements, even in combination, was not sufficient to support a claim of copyright infringement.

Because there are only a limited number of ways to turn a rectangular building into a sports bar and restaurant, “similarities in the general layout of rooms can easily occur innocently.”
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After an examination of the respective floor plans, we agree with the District Court “that the differences here are dramatic and overwhelming, and that the similarities between [Boynton Carolina’s] layout and Miller’s floor plan exist only at the broad conceptual level.”

So despite the similarities between the two ale houses, the Eleventh Circuit found that there was no infringement, merely fair competition.

Maker’s Mark Locks Up Dripping Red Wax as a Trade Dress for Alcohol

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In Maker’s Mark Distillery, Inc. v. Diageo North America, Inc.,  ___ F.3d. ___ (6th Cir. 2012), Marker’s Mark sued Jose Cuervo for trade dress infringement for including a red wax seal on its Reserva de la Familia tequila bottles.  The Sixth Circuit affirmed the district court’s ruling that Maker’s Mark’s registered trademark consisting of  a red dripping wax seal was infringed by Jose Cuervo.

Maker’s Mark has used its distinctive red dripping wax trade dress since 1958.  In 2001, Jose Cuervo decided to follow suit and began using a similar red dripping wax to accent its Reserva de la Famalia premium brand tequila.  In 2003 Maker’s Mark sued Cuevro.  After a bench trial, the district court found the red dripping wax of Maker’s Mark a valid trademark and held that Cuevero had infringed the trademark.

On appeal, Jose Cuervo argued that the red dripping wax was “aesthetically functional” and therefore not protectable as a trademark.

Cuervo appeals only the district court’s ruling as to aesthetic functionality, arguing that the red dripping wax seal is aesthetically functional, and therefore the mark is not enforceable. The Supreme Court has discussed the concept of aesthetic functionality in dicta, noting that “[i]t is proper to inquire into a significant non-reputation-related disadvantage in cases of [aesthetic] functionality.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001) (internal quotation marks omitted). We have interpreted this dicta to propose that, “where an aesthetic feature (like color), serves a significant function . . . courts should examine whether the exclusive use of that feature by one supplier would interfere with legitimate competition.” Antioch Co. v. W. Tramming Corp., 347 F.3d 150, 155 (6th Cir. 2003).

The Court noted that in the Sixth Circuit there are two different tests for aesthetic functionality, “comparable alternatives” and “effective competition.”

The test for comparable alternatives asks whether trade-dress protection of certain features would nevertheless leave a variety of comparable alternative features that competitors may use to compete in the market. If such alternatives do not exist, the feature is functional; but if such alternatives do exist, then the feature is not functional . . . . The effective competition test asks . . . whether trade dress protection for a product’s feature would hinder the ability of another manufacturer to compete effectively in the market for the product. If such hindrance is probable, then the feature is functional and unsuitable for protection. If the feature is not a likely impediment to market competition, then the feature is nonfunctional and may receive trademark protection.

The Court held that under either test Cuervo’s appeal failed.  Regarding the “comparable alternatives” test, the court noted the district court’s finding that there is more than one way to seal a bottle with wax to make it look appealing.  Regarding the “effective competition” test, the Court noted the District Court’s finding that “red wax is not the only pleasing color of wax.”  The Court of Appeals held that the District Court’s findings were not clearly erroneous and therefore upheld the appeal.

The Court seemed to have a fondness for bourbon, spending considerable time in the opinion discussing its history which began with Dr. James Crow’s original formulation and the history of the name ‘bourbon.”

The name “bourbon” itself is easier to trace: one of the original nine counties of Kentucky was Bourbon County, WILLKIE, supra, at 20, named in honor of the French royal family. Charles K. Cowdery, How Bourbon Whiskey Really Got Its Famous Name, BOURBON COUNTRY READER, July 1996. “[Kentucky] whiskey was shipped from Limestone, a riverside port in Bourbon County,” down the Ohio river to the Mississippi, bound for New Orleans. REGAN &REGAN, supra, at 14. Whiskey shipped from the port in Bourbon County came to be known as “Old Bourbon,” and later, simply “Bourbon,” to distinguish it from Pennsylvania Rye or other whiskeys. Cowdery, How Bourbon Whiskey Really Got Its Famous Name, supra. The name “bourbon” at that time meant whiskey made from mostly corn in Kentucky or points west. But it was likely not until “sometime between 1823 and . . . 1845” that Dr. James Crow “perfect[ed] the sour-mash method of whiskey-making”—the dominant process in use today that, when coupled with aging in charred new oak barrels, produces modern bourbon’s familiar caramel color and distinctive taste. REGAN & REGAN, supra, at 15.

While in the early years “[w]hiskey was whiskey, as everybody knew,” some bourbon distillers began to brand their bourbons to capitalize on the differences between “[g]ood Kentucky Bourbon” and all the rest. WILLKIE, supra, at 22. Dr. Crow, a Kentuckian by way of Scotland, “insist[ed] upon strict sanitation in his manufacture,” and branded his bourbon with his name; other Kentucky families followed suit in an effort to differentiate their products. Id. Crow’s branding tactics seem to have worked, as his bourbon accumulated prominent fans. For example, bourbon drinker Ulysses S. Grant preferred Old Crow over other bourbons, Julia Reed, Bourbon’s Beauty, NEWSWEEK, Dec. 21, 2008, as did all three of Congress’s “Great Triumvirate,” Henry Clay, John C. Calhoun, and Daniel Webster. GERALD CARSON & MIKE VEACH, THE SOCIAL HISTORY OF BOURBON 47 (2010).

The court, however, did not discuss the history of red wax used to seal liquor bottles, instead it focused on the reality of today’s liquor market where something once common is now uncommon and therefore protectable as a trademark.