Published 10/01/2021 by CIONCA IP TEAM (SE)
Trade dress is protection available for specific source-identifying products. Therefore, it falls among rights that enjoy trademark protection. However, this right is only limited to non-functional products to prevent monopolizing functional designs by sellers. Thus, patents are used for functional designs rather than trademarks. Utilitarian functionality and aesthetic functionality are the tests of functionality.
The Blumenthal case identified the differences between these functionalities. It also provided the necessary guidance for future trademark protection.
In 2013, Herman Miller (“HM”) sued Blumenthal Distribution (“OSP”) for infringement of their trademark. The basis of the suit was on the unauthorized replica of its Eames and Aeron chairs.
HM claimed trade dress rights on the overall appearances of the chairs. This came after HM sent a cease and desist letter to OSP. The district court held that there was an infringement on the registered and unregistered Eames chair. It resulted in an injunction against OSP for willingly infringing and diluting those rights.
The court held OSP liable for infringing the trade dress rights and awarded over 6 million dollars against OSP in damages. The trial jury found the Aeron trade dress rights to be functional. Thus, invalid and unprotected by the US Trademark Registration. This led to filing an appeal by both parties against the decision of the district court. The appeal was brought before the Ninth Circuit of the US Court of Appeals (the “Ninth Circuit”).
The Ninth Circuit first distinguished between the utilitarian functionality and the aesthetic functionality. In distinguishing between the two functionalities, the Ninth Circuit stated that the former deals with how the product works while the latter is on how it looks.
The court further stated that functionality would estop a product design from being protected by the trademark law. Thus, it is only when it is non-functional that it can be protected.
With regards to the Eames chair, the trial court’s decision was upheld. This is because it is only where a product appearance is functional that it would not be protected. Abundant evidence brought by HM showed the product to be a non-functional design. Thus, there was trademark infringement on the Eames chair.
However, on the Aeron chair, the Ninth Circuit reversed the decision and remanded for a new trial on the ground that the district judge erred in its instruction to the jury. The instruction was that a design product is functional if there is the actual benefit for the consumer after purchase. The court stated thus to be contrary to existing case laws.
The Ninth Circuit then held that this should not be a basis of proof that a product has a functional design feature. Thus, the instruction failed the utilitarian functionality test.
The decision of the Ninth Circuit in this case clarified the principle of functionality. Thus, it is easier to determine in trademark where the principle is applicable.
Another issue raised in court was that of fame on the cause of action for dilution. The court reversed this issue against HM. Although, there was a majority decision in favor of HM, Judge Friedland dissented on the claim for dilution and opined there was sufficient evidence in favor of HM.
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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