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lawsuitinjunctiontrademark
injunctiontrademarkcorporation

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I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 49 U.S.P.Q.2d 1225

Facts

Lund, a Danish manufacturer of bathroom and kitchen fixtures, introduced the VOLA faucet in 1969, which became its principal revenue product. Kohler, a major plumbing fixture supplier, designed a similar faucet called the Falling Water faucet after purchasing VOLA faucets for testing. Lund filed a lawsuit against Kohler for trade dress infringement and dilution under the Federal Trademark Dilution Act, claiming that Kohler's faucet diluted the identity of the VOLA faucet. The district court granted a preliminary injunction for the dilution claim but denied it for the infringement claim.

Lund, a Danish corporation, manufactures bathroom and kitchen fixtures and accessories, including faucets. Lund has been a family-owned corporation since its establishment in 1873. In 1969, Lund introduced the VOLA faucet, designed by the noted architect Arne Jacobsen. The faucet, which has received numerous awards over the past quarter-century, is Lund's principal revenue-producing product.

Issue

Whether Lund's VOLA faucet was entitled to protection under the Federal Trademark Dilution Act and whether Kohler's Falling Water faucet infringed Lund's trade dress.

Whether Lund's VOLA faucet was entitled to protection under the Federal Trademark Dilution Act and whether Kohler's Falling Water faucet infringed Lund's trade dress.

Rule

To establish a claim for trade dress protection, a party must demonstrate that the trade dress is non-functional and distinctive. Under the Federal Trademark Dilution Act, only famous and distinctive marks are eligible for protection against dilution. The burden of proving non-functionality lies with the party seeking protection, and the analysis of distinctiveness must consider whether the design serves primarily as a designator of product origin.

To establish a claim for trade dress protection, a party must demonstrate that the trade dress is non-functional and distinctive. Under the Federal Trademark Dilution Act, only famous and distinctive marks are eligible for protection against dilution.

Analysis

The court analyzed the distinctiveness of Lund's VOLA faucet design and found it was not inherently distinctive, as it did not primarily serve as a designator of origin. The court also noted that while the VOLA faucet had acquired secondary meaning, there was no likelihood of consumer confusion regarding the infringement claim. For the dilution claim, the court determined that the VOLA faucet was not famous enough to warrant protection under the FTDA, as it did not meet the rigorous standard for fame required for dilution claims.

The court analyzed the distinctiveness of Lund's VOLA faucet design and found it was not inherently distinctive, as it did not primarily serve as a designator of origin. The court also noted that while the VOLA faucet had acquired secondary meaning, there was no likelihood of consumer confusion regarding the infringement claim.

Conclusion

The court affirmed the district court's denial of the preliminary injunction on the infringement claim but vacated the injunction on the dilution claim, concluding that Lund was unlikely to succeed on the merits of either claim.

The court affirmed the district court's denial of the preliminary injunction on the infringement claim but vacated the injunction on the dilution claim, concluding that Lund was unlikely to succeed on the merits of either claim.

Who won?

Kohler prevailed on the infringement claim as the court found that Lund did not demonstrate a likelihood of consumer confusion, which is necessary for a trademark infringement claim. The court emphasized that the VOLA faucet, while having some recognition, did not meet the threshold of distinctiveness required for protection against infringement. Conversely, Lund's success on the dilution claim was limited, as the court found that the VOLA faucet was not sufficiently famous to warrant protection under the FTDA.

Kohler prevailed on the infringement claim as the court found that Lund did not demonstrate a likelihood of consumer confusion, which is necessary for a trademark infringement claim.

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