9th Circuit swivels on trade dress functionality doctrine in favor of iconic Herman Miller office chairs

American furniture manufacturer Herman Miller sued Blumenthal Distributing, Inc. (d/b/a Office Star Products) for selling knockoff office chairs that closely resembled Herman Miller’s acclaimed Eames and Aeron office chairs, as shown below:

Eames Chairs		Aeron Chair

Herman Miller sued Office Star in the U.S. District Court for the Central District of California for infringement and dilution of its registered and unregistered trade dress in the Eames and Aeron chair designs. A jury trial returned a verdict in favor of Herman Miller for its Eames design, finding that the Eames trade dress was non-functional and awarded nearly $3.4 million for willful trademark infringement and $3 million for dilution. The jury, however, found against Herman Miller for its Aeron design, finding that trade dress to be functional and not protectable, with the district court ordering cancellation of the Aeron trade dress registration at the United States Patent & Trademark Office. Both parties appealed.

On appeal, the Ninth Circuit (1) affirmed the judgment in favor of Herman Miller on the infringement claim for the Eames trade dress, (2) reversed the judgment in favor of Office Star on the Aeron trade dress and remanded for a new trial, and (3) reversed the judgment in favor of Herman Miller on the dilution claim for the Eames trade dress.

• Eames Trade Dress Infringement – Limiting its analysis to just utilitarian functionality (per Office Star’s briefing), the Ninth Circuit found that just because the Eames chair contains some utilitarian features does not mean that the overall appearance of the chair is functional as a matter of law. Herman Miller also introduced much evidence, including advertising material touting the distinctive design of the chairs and testimony from the company's own industrial design expert, demonstrating that the overall appearance of the Eames chair resulted from non-utilitarian design choices and incorporated features chosen largely for their aesthetic impact.
• Aeron Trade Dress Infringement – The Ninth Circuit asserted that the district court misstated the law on aesthetic functionality in its jury instructions, clarifying that a feature is not functional merely by being “part of the actual benefit that consumers wish to purchase when they buy the product.” Although the jury instruction was based on model instructions for the circuit, the Ninth Circuit reversed and remanded for a new trial because the instruction did not accurately reflect existing case law on functionality and Office Star did not establish this error to be harmless.
• Eames Trade Dress Dilution – The Ninth Circuit pointed out that the Trademark Dilution Revision Act of 2006 eliminated niche fame as a basis for protection against dilution and established that a mark must be “widely recognized by the general consuming public of the United States as a designation of source." Despite Herman Miller’s evidence of roughly $550,000 per year in advertising spend and the chairs' appearance in several publications, museums, and television programs, including the hit show Mad Men, the court held that Herman Miller did not meet the high "household name" standard for establishing fame. One judge on the panel dissented from this finding, stating that she believed Herman Miller’s evidence sufficiently established “household fame,” particularly as there is no requirement that the general consuming public be able to name a trademark owner, as the majority’s opinion seemed to imply.

Key Takeaways

Appellate courts have recently seen an uptick in written opinions on trade dress functionality and this recent Ninth Circuit decision reaffirms the proposition that the mere inclusion of functional elements in trade dress does not make its overall appearance functional. This principle aligns with a 2019 decision from the Seventh Circuit - Bodum USA, Inc. v. A Top New Casting, Inc. – holding that assessment of functionality is not merely whether an element of trade dress is generally “functional,” but rather whether the design of that element is functional.

Additionally, the decision reveals the Ninth Circuit’s incredibly high standard to establish fame for dilution purposes, particularly when one panelist felt that “evidence of a trade dress’ cultural significance” may establish fame. Herman Miller provide ample evidence of its cultural impact, “ubiquity” in modern office environments, and prominent features in renowned museums and television shows, yet this was insufficient for the majority of the panel.

Authored by Anna Kurian Shaw and Brendan C. Quinn with significant contribution from Erica Brackett.