Sixth Circuit Rules that Trade Dress Law Does Not Prevent Copying of Functional Design

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

In Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 2013 U.S. App. LEXIS 18897 (6th Cir. Sept. 12, 2013), an industry veteran and a relative newcomer battled over the appearance of  a rather specialized product: automatic lubrication pumps for commercial trucks.

The plaintiff, Groeneveld, began making its pump in the 1980s.  Lubecore, the defendant, began selling its own pump roughly 20 years later.  As shown below, the external design of the companies’ respective pumps is quite similar:

GroeneveldIn April, 2010, Groeneveld brought suit against Lubecore in the U.S. District Court for the Northern District of Ohio.  Groeneveld alleged trade-dress infringement – essentially a claim that Lubecore’s similar external design was intended to confuse consumers into believing that the two pumps were made by the same company.  Thus, according to Groeneveld, Lubecore was attempting to profit by misappropriating Groeneveld’s established goodwill in the marketplace.  The jury found in Groeneveld’s favor, resulting in a damages award in excess of $1 million.

On appeal, Lubecore argued that the evidence could not have proved the necessary elements of trade-dress infringement, specifically that the product’s external appearance (1) is nonfunctional; (2) has acquired distinctiveness (“secondary meaning”); and (3) is confusingly similar to the alleged infringing design.  The Sixth Circuit agreed.

The Sixth Circuit concluded that the overall shape of Groeneveld’s pump was functional.  The Court noted that features such as the shape of the base, the height and volume of the reservoir, and the use of transparent material are all “closely linked to the grease-pumping function.”  Interestingly, although Groeneveld argued that non-functionality was proved by the fact that “it could have designed a grease pump with a different appearance,” the Court refused inquire about the availability of alternative designs.  Rather, in the Court’s view, the only question was “whether the overall shape of Groeneveld’s grease pump was substantially influenced by functional imperatives or preferences.”

The Court also found no likelihood of confusion between the two pumps, largely based on its view that the presence of the parties’ respective logos on the pumps created “a stark visual difference in branding.”  Notably, the Court reached this conclusion while acknowledging circumstantial evidence that Lubecore intended to copy Groeneveld’s design.  The Court reasoned that where a product is distinctly labeled so as to prevent consumer confusion, the use of an external design similar to that of an existing product “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.”  Thus, in the Court’s view, any intentional copying by Lubecore was a perfectly legitimate attempt to “specifically target consumers who are familiar with the Groeneveld pump and offer them a competitive option.”

In sum, the Sixth Circuit has wholeheartedly adopted the principle that “using a functional product’s look to promote a competitive offering is a procompetitive practice” that is not generally actionable under trade-dress principles.  It remains to be seen how far this approach will migrate into disputes arising out of products which are less obviously mechanical.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.