Author(s): Kevin Weise

In this Commfax, a recent decision from the US Sixth Circuit Court of Appeals involving trademark and trade dress infringement issues is examined.

GM PREVAILS ON ITS TRADEMARK AND TRADE DRESS INFRINGEMENT LAWSUIT INVOLVING TOY VEHICLES CLOSELY RESEMBLING HUMVEES AND HUMMERS.

On October 25, 2006, the 6th Circuit Court of Appeals decided a trademark and trade dress infringement lawsuit, General Motors Corporation & AM General, LLC v Lanard Toys, Inc. & Lanard Toys Ltd.

GM filed this trademark and trade dress infringement suit against Lanard Toys based upon a dispute over a series of toy vehicles produced by Lanard called “The Corps! ATK”. This toy vehicle closely resembles the Hummer/Humvee vehicle produced by GM and is famous as the vehicle of the Army and Marines. The District Court granted GM summary judgment and the Court of Appeals affirmed.

First, the Court discussed the trademark infringement suit noting that General Motors had to prove that Lanard’s use of the infringing trademark was likely to cause confusion among consumers regarding the origin of the goods offered by the parties.

In order to determine whether confusion had been caused among consumers by introduction of the toy, the Court examined eight factors. Those 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 in selecting the goods; (7) the defendant’s intent in selecting its mark; and (8) the likelihood of expansion of the product lines. The Court noted that the toys produced by Lanard substantially resembled the Hummer/Humvee, including the signature grille design – a protected trademark.

The Court noted that the “strength of the mark” heavily favored GM as the trademark in question was federally registered and that GM puts the grille of the Hummer/Humvee prominently within a number of its advertisements for the vehicle. The “similarity of the mark” and the “defendant’s intent in selecting the mark” also heavily favored General Motors as an observation of the toy vehicles shows that the grille was directly copied from the Hummer/Humvee.

The Court noted that the “likely degree of purchaser care” factor strongly favored GM in that consumers would merely recognize the shape of the grille, the shape of the vehicle, and purchase the toy on that recognition without taking into consideration whether the toy was manufactured by the Plaintiff or the Defendant. The Court also noted the “relatedness of the goods and services” factor weighed in favor of General Motors as the toy car was substantially identical to the actual vehicle which has a registered trademark for the grille.
The Court found that the last three factors did not favor either party, but that the weight of the factors that applied weighed in favor of finding a likelihood of confusion among purchasers. Thus, the Court found affirmed summary judgment on the trademark infringement in favor of GM.

In discussing the trade dress claim, the Court noted that trade dress has been described as the design or packaging of a product which has acquired a secondary meaning sufficient to identify the product with its manufacturer or source. Trade dress involves the total image of the product and may include features such as size, shape, color, or color combinations. The Court reasoned that for GM to recover for trade dress infringement, it had to prove that (1) the trade dress was not functional within the product, (2) the trade dress was distinctive within the marketplace and had acquired “secondary meaning” which would indicate the source of the goods, and (3) that the trade dress of the offending product is confusingly similar to the Hummer/Humvee built by GM.

GM identified the trade dress elements of the Hummer/Humvee as “the exterior appearance and styling of the vehicle design, including the grille, slanted and raised hood, split windshield, rectangular doors, and squared edges of the vehicle”.

The issues involved whether the Court and the parties could (1) coherently define exactly what the trade dress consisted of, (2) whether the trade dress was valid, and (3) whether what the accused was doing could be considered an infringement. The Court found that it could be understood exactly what GM was looking to protect.

The Court held that both the Humvee and the Hummer shared common appearance items – a trade dress. The Court found that the plain appearance and unique characteristics of the Hummer/Humvee showed that the elements comprising its trade dress were inherently non- functional. The Court found that GM had significantly altered the height, length and width of the Humvee in creating its newer models of the Hummer while maintaining the same trade dress as the original military version of the Humvee.

On the issue of whether the trade dress was distinctive in the marketplace and had acquired secondary meaning, the Court noted that the evidence must show that “in the minds of the public, the primary significance of the trade dress is to identify the source of the product, rather than the product itself.” This involves a seven factor test determined by analyzing: (1) direct consumer testimony; (2) consumer surveys; (3) exclusivity, length and manner of use; (4) amount and manner of advertising; (5) amount of sales and number of customers; (6) established place in the market; and, (7) proof of intentional copying.

Of the seven factors, the Court noted that there was only evidence of two, i.e. consumer surveys and evidence of intentional copying. Even though all of the people involved in the survey could not specifically identify General Motors as the maker of the Hummer/Humvee, they were able to identify the various versions of the Hummer and attribute them to one manufacturer. This was sufficient to meet this factor.

The Court also found that there was strong evidence that Lanard Toys intentionally copied the Humvee trade dress. The Court went on to indicate that there was very little evidence of the remaining factors. However, the Court found that GM presented exceptionally strong survey evidence of the brand recognition and the intentional copying by Lanard which was sufficient to be successful on a motion for summary judgment on trade dress infringement.

To discuss this article in further detail, contact Kevin Weise, an attorney with GARAN LUCOW MILLER, P.C.’s Lansing Office at: Office Park West, 504 S. Creyts Road, Ste. A, Lansing, MI 48917- 8265; Kweise@garanlucow.com.