Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc.

GILMAN, J., delivered the opinion of the court, in which GRIFFIN, J., joined. WHITE, J. (pp. 521-37), delivered a separate dissenting opinion.

OPINION

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 Lube-core on all claims.

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 *501been 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:

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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 Lube-core 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 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-*502motions 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 Groene-veld 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 Groene-veld 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 Groene-veld 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 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 *503has 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, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The standard for judgment as a matter of law under Rule 50 is the same as the standard for summary judgment under Rule 56. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (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, 120 S.Ct. 1339, 146 L.Ed.2d 182 (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, 112 S.Ct. 2753, 120 L.Ed.2d 615 (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, 120 S.Ct. 1339. 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 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, 120 S.Ct. 1339. 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, 102 S.Ct. 2182, 72 L.Ed.2d 606 (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, *504Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (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, 102 S.Ct. 2182; Samara Bros., 529 U.S. at 211, 211 n. *, 120 S.Ct. 1339. 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 plaintiffs 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.

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; 15U.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. Ca-trett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (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, 102 S.Ct. 2182.

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 *505is 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 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 Groene-veld’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, 121 S.Ct. 1255, 149 L.Ed.2d 164 (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”).

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 Groene-veld’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 rever*506sion to the very standard that the Supreme Court unanimously rejected in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (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, 121 S.Ct. 1255. 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, 121 S.Ct. 1255. 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:

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, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995), and Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 102 S.Ct. 2182, 72 L.Ed.2d 606 (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, 121 S.Ct. 1255 (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, 121 S.Ct. 1255.

TrafFix Devices makes clear that Groe-neveld’s argument about the availability of alternative grease-pump designs is misguided. The issue is not whether Lube-core 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, 102 S.Ct. 2182. 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 *507into 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 plaintiffs “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 EPO 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 plaintiffs evidence of nonfunction-ality was insufficient as a matter of law where, “[ejxcept 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 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 Groe-neveld’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 *508mass-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 “[everybody 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 inquire into alternative designs when the design at issue is substantially influenced by functional considerations. See TrafFix Devices, 532 U.S. at 33-34, 121 S.Ct. 1255 (“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).

Qualitex Co. v. Jacobson Prods. Co., Inc., <