breast pump rules: Think Green's trade dress claims against Medela proceed to trial

Think Green Ltd. v. Medela AG, 2025 WL 1826137, No. 21 CV5445 (N.D. Ill. Jul. 2, 2025)

Think Green sued Medela for infringing its trade dress in itsbreast pump, as well as false advertising claims that were quickly dismissed onsummary judgment because TG and Medela aren’t the only players in the marketand 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 whetherthere would be confusion and whether the trade dress is nonfunctional), survivefor a jury.

Think Green and Medela both sell manual, one-piece siliconebreast pumps. Think Green’s pump is on the left and Medela’s pump is on theright within each image: 

Think Green claims trade dress rights in the “three-partshield-collector-base configuration, wherein the collector is bulbous yet fitsunderneath the outer diameter of the shield and contains an ornamental rib inits top part, while the base flares out from the bottom of the collector bulbto meet the surface upon which the whole unit rests.” Medela previously wonsummary judgment on Think Green’s design patent claim.

Much of the opinion focuses on the expert reports aroundsecondary meaning and confusion. Think Green’s expert witness Harper opined that(1) among the relevant universe of consumers, there is a likelihood ofconfusion that Medela’s pump is sponsored or approved by Think Green due to theallegedly infringing trade dress; and (2) the relevant universe of consumerswould likely ascribe secondary meaning to Think Green’s trade dress. Hersurveys 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 ofthe respondents with photos of Think Green’s trade dress, pictured immediatelybelow, and asked those respondents whether they associated the pump with oneparticular company or brand, and if so, which brand and why. 

The control group saw a different pump and received the samequestions. 

Harper’s point-of-sale confusion survey showed the testgroup 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 thatincluded a lanyard and yellow stopper. 

The control group was presented with a similar image of adifferent, “wearable” breast pump: 

The survey ultimately asked respondents whether or not “themanufacturer or brand of the breast milk pump/collector [they] just reviewed …is sponsored or approved by another manufacturer or brand.” If a respondentanswered yes, they were asked who and why.

Medela’s criticism of the control was that it was wildlydifferent from the trade dresses at issue. But, first, a secondary meaningsurvey might not even need a control. As for the confusion survey, it containedadditional probes (why?), which the court thought helped (though thepsychological literature suggests that people are really bad at answering thatquestion), and anyway a bad control isn’t necessarily enough to kick out asurvey. Choosing a control is really hard, so a bad control should bear onweight rather than admissibility.

Medela objected that the survey also didn’t reflect real-worldconditions of online purchase, including images of the pump’s packaging,additional images of Medela’s “signature butter yellow,” a bullet point list ofthe 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 shoppingexperience.

There was also a post-sale confusion survey. [Here one realissue is that unlike point of sale confusion, post-sale confusion’s theory requiresthat the post-sale confusion negatively affect subsequent consumers—eitherby causing them to think poorly about the plaintiff or by making the plaintiff’sproduct seem too easily available to the hoi polloi. There’s no evidence ofthis in the survey, and if you leave out that part of the theory you remove oneof its few constraints.] Harper’s survey first screened for respondents whopurchased a pump in the last year or who would consider purchasing one in thenext year then showed them four images of Medela’s pump, collected fromMedela’s online retail product pages, less Medela’s name, design elements, andmeasurements. The control group saw the same control pump. 

control images test images

The survey asked respondents what company, companies, orbrand(s) they believed put out the pictured pump, assuming they had an opinionin that regard; why they had that belief; and whether they believed the pumpwas affiliated with, or sponsored or approved by, any other company or brand. Althoughthere were more similar noninfringing pumps out there, the control pump wasalso made of silicone, clear/white, and curved; whether the control was goodwas for cross-examination and the jury.

Plus, Medela objected that most people won’t encounter otherpeople’s pumps in the wild, just like they mostly won’t encounter other people’sunderwear, making post-sale confusion unlikely. The court was offended onbehalf of those who pump in public, wash out/pour bottles in public, etc.

The survey also sufficiently isolated the claimed tradedress, 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 wereequally unavailing. There’s a first time for every expert, so the fact thatthis was her first trade dress survey didn’t require exclusion. Medela’s surveyshowed Medela’s pump “as it had been displayed on the Amazon platform.” Withthe stimulus picture still on the screen, respondents were asked open-endedquestions such as, “if you have an opinion, what company or organization makesor puts out this breast milk collector” and whether the respondent “believe[d]that this breast milk collector is affiliated with or sponsored by any othercompany.” The court didn’t buy that keeping the stimulus on screen createduntoward demand effects. The court agreed that, because “[a] consumer would bestaring directly at the product, together with its packaging and description,at the moment he/she made the decision to purchase (e.g., clicked ‘Add toCart’),” the methodology underlying Cohen’s survey sufficiently mimickedmarketplace conditions.

With that out of the way, there was enough evidence of secondarymeaning to avoid summary judgment on that ground. Along with the survey, therewas at least a minimal showing of Think Green’s volume and history of sales,even with no contextualization of those sales or of its advertisingexpenditures. As for intentional copying, “[c]opying is only evidence ofsecondary meaning if the defendant’s intent in copying is to confuse consumersand pass off his product as the plaintiff’s,” and whether that happened was forthe jury.

And for confusion, “[i]t is a rare trade dress case wherethe ‘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 iseither trivial (a contested case generally means that both parties believe thatthey have a shot) or wrong (TM cases aren’t actually all that special in termsof evidence, much as we like to think TM is especially complicated). This claimcontributes to making TM doctrine worse in practice by making courts reluctantto grant summary judgment—usually for the defendant—which has systematiceffects on who gets to do what.]

Emails among Medela employees were not convincing evidenceof passing off. “In at least some of the quoted emails, the employees discusstheir desire to avoid copying Think Green’s pump and—crucially—never evince adesire to pass their pump off as Think Green’s,” the court concluded, citingphrases like “I do not believe this is a winning strategy,” “[W]e need to bemore innovative,” and discussions of potential advantages of Medela’s pump overThink Green’s. “Although other email excerpts appear to support Think Green’snarrative, in asking the Court to interpret this entire body of emails asunequivocal proof of Medela’s intent to pass off Think Green’s trade dress asits own, Think Green is asking the Court to ‘choose between competinginferences.’”

On functionality, once again a lower court relies on theexistence of alternative designs to deny summary judgment. The reason this issupposedly consistent with Traffix is that, if utility is shown by othermeans (in practice the only possibilities are patent claims, advertising that toutsutilitarian advantages, or maybe effects on quality/cost), then alternativedesigns 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, wayto do things to be considered functional: It only needs to represent one ofmany solutions to a problem,” then immediately proceeds to disregard thatstatement.

The court found that an international patent application involvingthe pump was not dispositive. Although the Federal Circuit held that “anapplied-for utility patent that never issued has evidentiary significance forthe statements and claims made in the patent application concerning theutilitarian advantages, just as an issued patent has evidentiary significance,”the court didn’t think that rules for the TTAB were relevant to “a court’sLanham Act analysis.” [??? They are interpreting the same statutory language?Why would you ever want the PTO and judicial analyses of functionality todiffer?] “A never-approved patent application … could include any number ofuseless features that would never have passed muster with the Patent andTrademark Office”; only approved or expired utility patents show functionality.[This seems wrong, including as a matter of applicant estoppel; it would alsomake evaluating the effect of foreign patents into a mini-trial on the relationshipbetween foreign and US patent law.]

Anyway, even considering the application, it wouldn’tpersuade the court that functionality was present. The court thought that therewas no evidence that the “central advance” application matched the “essentialfeature” of the claimed trade dress. “And although the absence of a utilitypatent does not preclude the functionality of a design, the lack of apresumption of functionality does make it considerably less likely thatfunctionality can be determined on summary judgment.”

Medela’s expert Faltum opines that the shape of ThinkGreen’s design was ideally suited for the human hand, while other shapes are“awkward to hold, difficult to manipulate, inferior in performance,” and lesseffective at creating a vacuum seal: 

The court was skeptical; 3D pumps shouldn’t be likened to 2Dshapes, and this analysis disregarded “the prominent breast shield topping thepumps.” Likewise, a jury should evaluate the claim that the bulb design wasmore effective, based on a study Faltum conducted that tested how much watervarious pumps could draw through a hose from a beaker when the bulb wascompressed and released. The court agreed with Think Green’s argument that thestudy merely “demonstrate[d] that there is a statistically significantdifference in the efficiency with which liquid is collected by one-piecesilicone breast milk collectors as a consequence of their shape.” But it didn’tevaluate other potential utilitarian features of a pump (such as adherence orcomfort), “whether this alleged difference in water-drawing efficiencytranslates into a more effective vacuum ‘essential for these collectors’remains a factual question.” [I really don’t get this logic—something doesn’thave to be comprehensively better to be functional; tradeoffs are a thing, andeach solution within the solution space should not be monopolizable. If you’d toldme “this pump will be more efficient but be less comfortable,” I probably wouldhave gone for speed. Perhaps there’s more to the story, but the explanationdoesn’t persuade me.]

And Think Green sufficiently countered Medela’s claim thatthe suction base is ideal for stability “by pointing to several other similarpumps that use different types of non-suction bases to provide stability.”[Alternative designs, in one of the factors that’s supposed to determinewhether alternative designs even need to be considered!]

Advertising didn’t unequivocally claim advantages to thedesign, only of the breast shield and suction base. (E.g., “Available in twolarger capacities of 100ml and 150ml, and with a new suction base that sticksto flat surfaces to prevent accidental spills, it is the easiest and mostsimple way to express breast milk.”) That just meant that having asuction 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.] “Inshort, none of these advertisements urge consumers to purchase the pump on thestrength of any particular utilitarian quality of the suction base’s design.”[It would be interesting to see what consumers actually thought was beingclaimed.]

different breast sizes suction base claim suction base claim

The court pointed to Think Green’s evidence of “numeroussuccessful, highly rated alternative silicone one-piece breast pumps that aredesigned differently than, but function the same as, Think Green’s pump.” “WhereThink Green has presented evidence that other non-infringing designs areavailable, a triable issue of fact exists on functionality.” [So much for Traffix.]