Photo by Federica Campanaro on Unsplash
Mike Chernoff, Blog Chair, University of Cincinnati Law Review
I. Introduction
Trade dress protection is available for products with distinctive, source-identifying appearances,[1] but these products cannot be functional to receive this protection.[2] Recently, the Ninth Circuit discussed different types of functionality in trade dress cases and provided guidance on the application of utilitarian functionality. The results of this case may limit how often utilitarian functionality prevents trade dress protection in the future.
II. Trademark and Trade Dress
Any word, name, symbol, or device which are used to identify products in commerce may receive federal trademark protection.[3] This protection may also apply to the products themselves if the products have distinctive, source-identifying appearances in the form of trade dress protection.[4] However, this protection on products is limited to only nonfunctional designs.[5] This limit on functionality prevents sellers from monopolizing “functional” designs with trademark protection rather than utilizing patent protection, which offers protection for functional inventions.[6]
Functionality does not have a statutorily defined standard, but two tests have developed for determining if a trade dress claim is claiming a “functional” design.[7] The two tests are “utilitarian functionality” and “aesthetic functionality.”[8] “Utilitarian functionality” refers to functionality that is related to “the performance of the product in its intended purpose”[9] and is “essential to the use or purpose of a product or affects its cost or quality.”[10] In other words, this test considers whether the trade dress seeks to protect the utility of the product rather than the appearance of the product. The balancing test to determine utilitarian functionality considers “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.”[11] “Aesthetic functionality” is related to the “intrinsic aesthetic appeal” of the design.[12] A hypothetical example of aesthetic functionality is provided by the Restatement (Third) of Unfair Competition, which considers the hypothetical first seller of heart shaped candy boxes for Valentine’s Day.[13] In this example, “[e]vidence establishes that the shape of the box is an important factor in the appeal of the product to a significant number of customers. Because there are no alternative designs capable of satisfying the aesthetic desires of these prospective purchasers, the design of the box is functional . . . .”[14] The “aesthetic functionality” test considers:
[I]f one seller were given exclusive rights to use the claimed trade dress, other sellers would be forced to use alternative designs that make their products more costly to sell, or for which consumers’ willingness to pay would be lower for reasons having nothing to do with the reputation of any source.[15]
While trade dress may apply to the “overall appearance” of a product, a combination of functional parts assembled in a way to make the product more functional, either utilitarianly or aesthetically, are considered “functional” in the Ninth Circuit regardless of the actual appearance of the product.[16] Applying this rule, the Ninth Circuit considers whether the “overall appearance” utilizes trade dress protection to threaten to eliminate “a substantial swath of competitive alternatives in the relevant market.”[17]
III. Blumenthal Distributing, Inc. v. Herman Miller, Inc.
Herman Miller (“HM”) produces the Eames chair, which is available in Thin Pad and Soft Pad varieties, and the Aeron chair.[18] HM claimed trade dresses, both registered and unregistered, on the overall appearance of all the chairs.[19] All of these chairs had been sold on a large scale and appeared in art museums and in American pop culture.[20] On December 13, 2013, HM accused Blumenthal Distributing Inc., d/b/a Office Star Products (“OSP”) as selling “knockoff” copies of the chairs and sent a cease and desist letter claiming OSP violated HM’s trade dresses.[21] HM subsequently sued OSP for infringement of its claimed trade dresses.[22] In a jury trial, OSP was found to have willfully infringed and diluted the Eames chair trade dresses and HM was awarded over six million dollars in damages.[23] However, the jury found the Aeron trade dresses to be utilitarianly functional and OSP was not liable for infringing or diluting the claimed Aeron trade dresses.[24] The jury instruction on the topic of functionality stated:
A product feature . . . is non-functional if its shape or form makes no contribution to the product’s function or operation. If the feature is part of the actual benefit that consumers wish to purchase when they buy the product, the feature is functional. However, if the feature serves no purpose other than as an assurance that a particular entity made, sponsored or endorsed the product, it is nonfunctional.[25]
Both parties appealed the decision and the case was heard by the Ninth Circuit.[26]
On appeal, OSP argued that the Eames chairs should not have had trade dress protection as the chairs had utilitarian functionality that proved their overall appearances were functional.[27] OSP believed that the Eames chairs overall appearances included elements that were functional, and therefore were functional as a whole.[28] The Ninth Circuit disagreed, stating that an overall appearance is functional if “everything about it is functional, not merely if anything about it is functional.”[29] For example, the designers of the chair chose to use metal arm rests when the arm rests could have been padded to increase functionality.[30] A key consideration discussed in the decision was how the Eames chair could have been designed compared to how it was designed.[31] The Ninth Circuit also held that OSP failed to prove that the Eames chairs met the utilitarian functionality test factors.[32] OSP believed aesthetic functionality was not an issue and did not pursue an argument on these grounds, however this doctrine may be important in the future of this case.[33] The Ninth Circuit affirmed the district court’s ruling of infringement on the Eames chair.[34]
HM challenged the district court’s functionality instruction as an overly broad definition of functionality.[35] The Ninth Circuit agreed with HM that the instruction misstated the law.[36] A mark being the “benefit the consumer wishes to purchase” is not enough to establish functionality of that mark.[37] This instruction also failed to properly relay the factors from the utilitarian functionality test or the concepts from the aesthetic functionality test.[38] Accordingly, the Ninth Circuit reversed the judgment about the Aeron chair and remanded for a new trial.[39]
IV. Discussion
In the opinion of Blumenthal Distrib., Inc. v. Herman Miller, Inc., the Ninth Circuit provided further clarity on the doctrine of trademark functionality.[40] In future cases, fact finders will be forced to consider whether an entire product was designed with utility in mind. If a product designer makes any design choices concerning the overall appearance that are not directly related to making the product more functional, then the product should not be considered functional under the utilitarian functionality doctrine after this decision. For example, if the designer of a table added curvature to the table legs to enhance the appearance of an otherwise basic table, then utilitarian functionality would not prevent the table from receiving trade dress protection. Following this decision, very few products will be prevented from gaining trade dress protection due to utilitarian functionality. Any design choices made without utility in mind would preclude utilitarian functionality from preventing trade dress protection.
While the Blumenthal court did not discuss aesthetic functionality in great detail, this doctrine may affect the outcome of the case on remand. Due to the popularity, it is entirely possible that HM has developed a reputation around these chairs. A portion of this reputation may be due to the professional and advanced appearance that the Aeron chair provides. If this is the case, and other manufacturers will have to use a less professional and advanced appearance in their design design, then the Aeron chair may rely on aesthetic functionality and would not have a valid trade dress claim. Without this reputation, there seems to be little opportunity for OSP to have HM’s trade dress claims rejected for the Aeron chair.
V. Conclusion
The Ninth Circuit clarified the doctrine of functionality in trade dress suits. However, the opinion may have made the utilitarian functionality test much more difficult to satisfy and may allow small design choices to prevent the invalidation of a trade dress claim. Moving forward, more emphasis may be placed on aesthetic functionality as a method to invalidate a trade dress claim.
[1] Blumenthal Distrib., Inc. v. Herman Miller, Inc., Nos. 18-56471, 18-56493, 2020 U.S. App. LEXIS 19811, at *8 (9th Cir. June 25, 2020)
[2] TrafFix Devices, Inc. v. Mktg. Displays, Inc. 532 U.S. 23, 29 (2001) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-165 (1995); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992)).
[3] 15 U.S.C.S. § 1127 (LexisNexis 2020).
[4] Blumenthal Distrib., Inc. v. Herman Miller, Inc., Nos. 18-56471, 18-56493, 2020 U.S. App. LEXIS 19811, at *8 (9th Cir. June 25, 2020)
[5] TrafFix Devices, Inc. v. Mktg. Displays, Inc. 532 U.S. 23, 29 (2001) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-165 (1995); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992)).
[6] Qualitex, 514 U.S. at 164-65.
[7] Blumenthal, 2020 U.S. App. LEXIS 19811, at *10.
[8] Id. (citing Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067 (9th Cir. 2006)).
[9] Au-Tomotive Gold, 457 F.3d at 1073-74.
[10] Blumenthal, 2020 U.S. App. LEXIS 19811, at *10.
[11] Disc Golf Association, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1128 (9th Cir. 1998).
[12] Au-Tomotive Gold, 457 F.3d at 1072.
[13] 1 Gilson on Trademarks § 2A.04(5)(a)(1) (2020) (quoting Restatement (Third) of Unfair Competition § 17, cmt. c, illus. 8 (Am. Law Inst. 1995))).
[14] Id.
[15] Blumenthal, 2020 U.S. App. LEXIS 19811, at *11.
[16] Id. at *12 (citing Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013 (9th Cir. 1999)).
[17] Blumenthal, 2020 U.S. App. LEXIS 19811, at *13 (quoting Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1261 n.5 (9th Cir. 2001)).
[18] Blumenthal, 2020 U.S. App. LEXIS 19811, at *7.
[19] Id. at *7-8.
[20] Id. at *7.
[21] Id. at *5-6.
[22] Id. at *6. HM also brought forth claims for trademark dilution.
[23] Id.
[24] Id.
[25] Id. at *19-20.
[26] Id. at *6.
[27] Id. at *14-15.
[28] Id. at *15.
[29] Id. (citing Clicks Billiards, 251 F.3d at 1259; Leatherman, 199 F.3d at 1011 n.3, 1013).
[30] Blumenthal, 2020 U.S. App. LEXIS 19811, at *17.
[31] Id.
[32] Id. at *15.
[33] Id. at *16.
[34] Id. at *7.
[35] Id. at *19.
[36] Id. at *20.
[37] Id. (citing Au-Tomotive Gold, 457 F.3d at 1069).
[38] Blumenthal, 2020 U.S. App. LEXIS 19811, at *20-21 (citing Millennium Labs, Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1128-29 (9th Cir. 2016); Disc Golf, 457 F.3d).
[39] Blumenthal, 2020 U.S. App. LEXIS 19811, at *7.
[40] Id.
