Think Green Ltd. v. Medela AG, 2025 WL 1826137, No. 21 CV
5445 (N.D. Ill. Jul. 2, 2025)
Think Green sued Medela for infringing its trade dress in its
breast pump, as well as false advertising claims that were quickly dismissed on
summary judgment because TG and Medela aren’t the only players in the market
and the advertising didn’t disparage TG, meaning that TG couldn’t show harm.
The trade dress claims, though they seem extremely weak to me (both in whether
there would be confusion and whether the trade dress is nonfunctional), survive
for a jury.
Think Green and Medela both sell manual, one-piece silicone
breast pumps. Think Green’s pump is on the left and Medela’s pump is on the
right within each image:
Think Green claims trade dress rights in the “three-part
shield-collector-base configuration, wherein the collector is bulbous yet fits
underneath the outer diameter of the shield and contains an ornamental rib in
its top part, while the base flares out from the bottom of the collector bulb
to meet the surface upon which the whole unit rests.” Medela previously won
summary judgment on Think Green’s design patent claim.
Much of the opinion focuses on the expert reports around
secondary meaning and confusion. Think Green’s expert witness Harper opined that
(1) among the relevant universe of consumers, there is a likelihood of
confusion that Medela’s pump is sponsored or approved by Think Green due to the
allegedly infringing trade dress; and (2) the relevant universe of consumers
would likely ascribe secondary meaning to Think Green’s trade dress. Her
surveys were not among the “rare” ones where fundamental flaws render them
“completely unhelpful to the trier of fact and therefore inadmissible.”
Harper’s secondary meaning online survey presented half of
the respondents with photos of Think Green’s trade dress, pictured immediately
below, and asked those respondents whether they associated the pump with one
particular company or brand, and if so, which brand and why.
The control group saw a different pump and received the same
questions.
Harper’s point-of-sale confusion survey showed the test
group an image of Medela’s pump, captured from the website buybuybaby.com,
which included the “MEDELA” brand name; the product’s name, the Medela®
Silicone Breast Milk Collector; its price; and an image of the pump that
included a lanyard and yellow stopper.
The control group was presented with a similar image of a
different, “wearable” breast pump:
The survey ultimately asked respondents whether or not “the
manufacturer or brand of the breast milk pump/collector [they] just reviewed …
is sponsored or approved by another manufacturer or brand.” If a respondent
answered yes, they were asked who and why.
Medela’s criticism of the control was that it was wildly
different from the trade dresses at issue. But, first, a secondary meaning
survey might not even need a control. As for the confusion survey, it contained
additional probes (why?), which the court thought helped (though the
psychological literature suggests that people are really bad at answering that
question), and anyway a bad control isn’t necessarily enough to kick out a
survey. Choosing a control is really hard, so a bad control should bear on
weight rather than admissibility.
Medela objected that the survey also didn’t reflect real-world
conditions of online purchase, including images of the pump’s packaging,
additional images of Medela’s “signature butter yellow,” a bullet point list of
the pump’s features, and the ability to click on the pump’s image to expand it.
Again, that went to weight; these were not core components of the shopping
experience.
There was also a post-sale confusion survey. [Here one real
issue is that unlike point of sale confusion, post-sale confusion’s theory requires
that the post-sale confusion negatively affect subsequent consumers—either
by causing them to think poorly about the plaintiff or by making the plaintiff’s
product seem too easily available to the hoi polloi. There’s no evidence of
this in the survey, and if you leave out that part of the theory you remove one
of its few constraints.] Harper’s survey first screened for respondents who
purchased a pump in the last year or who would consider purchasing one in the
next year then showed them four images of Medela’s pump, collected from
Medela’s online retail product pages, less Medela’s name, design elements, and
measurements. The control group saw the same control pump.
 |
| control images |
 |
| test images |
The survey asked respondents what company, companies, or
brand(s) they believed put out the pictured pump, assuming they had an opinion
in that regard; why they had that belief; and whether they believed the pump
was affiliated with, or sponsored or approved by, any other company or brand. Although
there were more similar noninfringing pumps out there, the control pump was
also made of silicone, clear/white, and curved; whether the control was good
was for cross-examination and the jury.
Plus, Medela objected that most people won’t encounter other
people’s pumps in the wild, just like they mostly won’t encounter other people’s
underwear, making post-sale confusion unlikely. The court was offended on
behalf of those who pump in public, wash out/pour bottles in public, etc.
The survey also sufficiently isolated the claimed trade
dress, even though it included the “distinctive ridge around the breast shield”
visible in the test stimulus, which Think Green disclaimed as its trade dress. Again,
this went to weight rather than admissibility.
Think Green’s objections to Medela’s expert Cohen were
equally unavailing. There’s a first time for every expert, so the fact that
this was her first trade dress survey didn’t require exclusion. Medela’s survey
showed Medela’s pump “as it had been displayed on the Amazon platform.” With
the stimulus picture still on the screen, respondents were asked open-ended
questions such as, “if you have an opinion, what company or organization makes
or puts out this breast milk collector” and whether the respondent “believe[d]
that this breast milk collector is affiliated with or sponsored by any other
company.” The court didn’t buy that keeping the stimulus on screen created
untoward demand effects. The court agreed that, because “[a] consumer would be
staring directly at the product, together with its packaging and description,
at the moment he/she made the decision to purchase (e.g., clicked ‘Add to
Cart’),” the methodology underlying Cohen’s survey sufficiently mimicked
marketplace conditions.
With that out of the way, there was enough evidence of secondary
meaning to avoid summary judgment on that ground. Along with the survey, there
was at least a minimal showing of Think Green’s volume and history of sales,
even with no contextualization of those sales or of its advertising
expenditures. As for intentional copying, “[c]opying is only evidence of
secondary meaning if the defendant’s intent in copying is to confuse consumers
and pass off his product as the plaintiff’s,” and whether that happened was for
the jury.
And for confusion, “[i]t is a rare trade dress case where
the ‘evidence is so one-sided that there can be no doubt about how the question
[of whether likelihood of confusion exists] should be answered.’” [This is
either trivial (a contested case generally means that both parties believe that
they have a shot) or wrong (TM cases aren’t actually all that special in terms
of evidence, much as we like to think TM is especially complicated). This claim
contributes to making TM doctrine worse in practice by making courts reluctant
to grant summary judgment—usually for the defendant—which has systematic
effects on who gets to do what.]
Emails among Medela employees were not convincing evidence
of passing off. “In at least some of the quoted emails, the employees discuss
their desire to avoid copying Think Green’s pump and—crucially—never evince a
desire to pass their pump off as Think Green’s,” the court concluded, citing
phrases like “I do not believe this is a winning strategy,” “[W]e need to be
more innovative,” and discussions of potential advantages of Medela’s pump over
Think Green’s. “Although other email excerpts appear to support Think Green’s
narrative, in asking the Court to interpret this entire body of emails as
unequivocal proof of Medela’s intent to pass off Think Green’s trade dress as
its own, Think Green is asking the Court to ‘choose between competing
inferences.’”
On functionality, once again a lower court relies on the
existence of alternative designs to deny summary judgment. The reason this is
supposedly consistent with Traffix is that, if utility is shown by other
means (in practice the only possibilities are patent claims, advertising that touts
utilitarian advantages, or maybe effects on quality/cost), then alternative
designs need not be considered, even though that’s not what Traffix says.
Thus, the court says “[a] design does not need to be the only, or the best, way
to do things to be considered functional: It only needs to represent one of
many solutions to a problem,” then immediately proceeds to disregard that
statement.
The court found that an international patent application involving
the pump was not dispositive. Although the Federal Circuit held that “an
applied-for utility patent that never issued has evidentiary significance for
the statements and claims made in the patent application concerning the
utilitarian advantages, just as an issued patent has evidentiary significance,”
the court didn’t think that rules for the TTAB were relevant to “a court’s
Lanham Act analysis.” [??? They are interpreting the same statutory language?
Why would you ever want the PTO and judicial analyses of functionality to
differ?] “A never-approved patent application … could include any number of
useless features that would never have passed muster with the Patent and
Trademark Office”; only approved or expired utility patents show functionality.
[This seems wrong, including as a matter of applicant estoppel; it would also
make evaluating the effect of foreign patents into a mini-trial on the relationship
between foreign and US patent law.]
Anyway, even considering the application, it wouldn’t
persuade the court that functionality was present. The court thought that there
was no evidence that the “central advance” application matched the “essential
feature” of the claimed trade dress. “And although the absence of a utility
patent does not preclude the functionality of a design, the lack of a
presumption of functionality does make it considerably less likely that
functionality can be determined on summary judgment.”
Medela’s expert Faltum opines that the shape of Think
Green’s design was ideally suited for the human hand, while other shapes are
“awkward to hold, difficult to manipulate, inferior in performance,” and less
effective at creating a vacuum seal:
The court was skeptical; 3D pumps shouldn’t be likened to 2D
shapes, and this analysis disregarded “the prominent breast shield topping the
pumps.” Likewise, a jury should evaluate the claim that the bulb design was
more effective, based on a study Faltum conducted that tested how much water
various pumps could draw through a hose from a beaker when the bulb was
compressed and released. The court agreed with Think Green’s argument that the
study merely “demonstrate[d] that there is a statistically significant
difference in the efficiency with which liquid is collected by one-piece
silicone breast milk collectors as a consequence of their shape.” But it didn’t
evaluate other potential utilitarian features of a pump (such as adherence or
comfort), “whether this alleged difference in water-drawing efficiency
translates into a more effective vacuum ‘essential for these collectors’
remains a factual question.” [I really don’t get this logic—something doesn’t
have to be comprehensively better to be functional; tradeoffs are a thing, and
each solution within the solution space should not be monopolizable. If you’d told
me “this pump will be more efficient but be less comfortable,” I probably would
have gone for speed. Perhaps there’s more to the story, but the explanation
doesn’t persuade me.]
And Think Green sufficiently countered Medela’s claim that
the suction base is ideal for stability “by pointing to several other similar
pumps that use different types of non-suction bases to provide stability.”
[Alternative designs, in one of the factors that’s supposed to determine
whether alternative designs even need to be considered!]
Advertising didn’t unequivocally claim advantages to the
design, only of the breast shield and suction base. (E.g., “Available in two
larger capacities of 100ml and 150ml, and with a new suction base that sticks
to flat surfaces to prevent accidental spills, it is the easiest and most
simple way to express breast milk.”) That just meant that having a
suction base is good, nothing about its size or shape or overall design. [This seems particularly anti-Traffix — that suction base looks like the size and shape of a suction base you’d make if you wanted a suction base; a circle uses less material than anything else of the same size, and surely they shouldn’t be forced to use a different shape or cover up the suction base.] “In
short, none of these advertisements urge consumers to purchase the pump on the
strength of any particular utilitarian quality of the suction base’s design.”
[It would be interesting to see what consumers actually thought was being
claimed.]
 |
| different breast sizes |
 |
| suction base claim |
 |
| suction base claim |
The court pointed to Think Green’s evidence of “numerous
successful, highly rated alternative silicone one-piece breast pumps that are
designed differently than, but function the same as, Think Green’s pump.” “Where
Think Green has presented evidence that other non-infringing designs are
available, a triable issue of fact exists on functionality.” [So much for Traffix.]
from Blogger http://tushnet.blogspot.com/2025/07/breast-pump-rules-think-greens-trade.html
Rebecca Tushnet 