In General Motors Corp. v. Lanard Toys Inc., 80 U.S.P.Q.2d 1608 (6th Cir. 2006), the Sixth Circuit addressed whether a toy depicting a car infringes the car’s distinctive trade dress and registered marks.
In 1997, Lanard Toys sold “The Corps! ATK” toy vehicle, which resembled AM General’s “Humvee”, and General Motors’ “Hummer.” While originally designed by AM General for use by the military under the Humvee name. AM General later created the Hummer as a civilian version of the Humvee. The brands were ultimately transferred to GM. As part of the brand, GM owned a trademark for the distinctive grille design of the Humvee/Hummer.
In a related 1992 dispute regarding a different toy depicting the Humvee, Lanard had agreed to stop using the “Humvee” name on its packaging. After a series of communications between GM and Lanard and AM General and Lanard regarding cessation of production of the newer toys using the trademarked grille design, GM filed suit for trademark infringement, trade dress infringement, dilution and common law trademark infringement regarding the toy vehicle and its use of the trademarked grille design. Lanard sought a declaratory judgment on the right to use the term “Humvee” and the grille design for toys. Both parties moved for summary judgment at the district court level. The district court granted summary judgment for GM.
Likelihood of Confusion
On appeal, the Sixth Circuit held that, to show trademark infringement, plaintiffs must apply the “likelihood of confusion” test, as laid out in 15 U.S.C. §1114, which can be determined by looking at the eight “Frisch factors.” Lanard contested the District Court’s summary judgment since these factors were not explicitly analyzed in holding that Lanard‘s toy infringed the Hummer Nose Design, Trademark No. 1,959,544. The Sixth Circuit court engaged in de novo review, holding that the weight of the factors favored General Motors regarding the likelihood of confusion and affirmed the district court’s ruling of summary judgment for GM, despite the failure to discuss the factors.
The Sixth Circuit reviewed the record in light of the Frisch factors. The eight Frisch factors are “(1) strength of the plaintiff’s mark, (2) relatedness of the goods or services, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) likely degree of purchaser care, (7) the defendant’s intent in selecting its mark, and (8) likelihood of expansion of the product lines.” Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 548, 76 U.S.P.Q. 2d 1372 (6th Cir. 2005) (citing Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648, 214 USPQ 15 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982)).
In reviewing the factors, the Sixth Circuit found that the first factor (“strength of mark”) was in favor of GM since the mark was registered and heavily promoted. The second factor (“relatedness of goods and services,) favored GM since the toy car directly related to actual vehicle. For the third factor (“similarity of the marks”) and the seventh factor (“defendant’s intent in selecting the mark”), the Sixth Circuit found these factors favored GM since Lanard copied the design directly. The sixth factor (“likely degree of purchaser care”) also favored GM since a purchaser of the toy would not necessarily know whether the toy was made by GM or by another, but would make the purchase based on recognition of the trademarked grille.
The remaining factors, (“marketing channels used”, “likelihood of expansion of product lines” and “evidence of actual confusion”) did not favor either party from the evidence of record. As such, the Sixth Circuit found that the balance of the Frisch factors favored GM and upheld the District Court’s finding of infringement.
Trade dress refers to the secondary meaning associated with the design/packaging of a product, enabling one to identify the product’s manufacturer or source. The Sixth Circuit held that GMs’ identification of the vehicle’s exterior appearance and styling, as well as specific reference to the grille, hood, windshield, doors and edges sufficiently fulfilled the “discrete elements” requirement for trade dress claims and overcame any issues of vagueness with respect to mention of mere appearance.
Lanard also challenged the non-functionality determination of the district court. Lack of trade dress functionality is a requisite element a plaintiff must show by preponderance of the evidence, to prevail on an infringement claim. Lanard had claimed that the trade dress at issue was functional and thus ineligible for protection. Despite the district court’s error in stating that Lanard had the burden of proving functionality, the Sixth Circuit relied on testimony of a product development executive for AM General, that the Humvee’s appearance was not essential to the use/purpose of the vehicle, and allowed General Motors to prevail on the functionality issue.
Citing application of the seven-factor test to ascertain secondary meaning, from Marketing Displays, Inc. v. TrafFix Devices, Inc., 200F.3d 929, 937 (6th Cir. 2000), the Court affirmed the district court’s summary judgment ruling. Test elements include: 1) direct consumer testimony, 2) consumer surveys, 3) exclusivity, length and manner of use, 4) amount and manner of advertising, 5) amount of sales/number of customers, 6) established place in the market and 7) proof of intentional copying. The Sixth Circuit focused on GMs’ use of consumer surveys and proof of Lanard’s intentional copying of the grille design to aid its analysis. Although such surveys should ideally be conducted pre-infringement (not post-infringement as in this case) to show acquired secondary meaning, the Sixth Circuit considered the strength of brand recognition given the elapsed time between the surveys and the alleged infringement. These surveys indicated about 96% brand recognition of Hummer and 77% secondary meaning for trade dress. In addition, Lanard failed to present any contrary evidence on any of the seven factors. Thus, Sixth Circuit found that there was evidence that the trade dress of the Humvee had acquired secondary meaning and that the District Court’s granting of summary judgment on this issue was proper.