Bad argument of the day: potential registration should count as (R) because opposer is accused infringer

Herman Miller, Inc. v. Blumenthal Distributing, Inc., 2019 WL 1416472, No. LA CV17-04279 JAK (SPx) (C.D. Cal. Mar. 3, 2019)

Lots of stuff going on here.  Herman Miller sued Blumenthal for infringing on the trade dress of one of its office chairs, the Caper, with a “distinctive bowler-hat-like backrest.”  The court found a factual issue on nonfunctionality, relying in part on the existence of design patents as evidence of nonfunctionality even though that’s not right given the mismatch between “functionality” for design patent and “functionality” for trademark purposes.  The court found the other evidence also admitted of different interpretations—the advertising touted functional benefits, but a jury could find that the particular configuration of the whole chair, especially the specific perforations in the backrest, was distinctive and nonfunctional.

Caper chair

accused designs

Herman Miller whinily argued that it had applied to register the trade dress, had the application published for opposition, and then had been opposed by defendant.  If not for defendant’s opposition, then the registration would have issued and Herman Miller would have a presumption of validity/nonfunctionality in this infringement litigation.  So, Herman Miller reasoned, it should have a presumption of validity and nonfunctionality.  This argument has chutzpah, but little else to recommend it.  As the court noted, the law requires the registration to issue before it can provide favorable presumptions, and it provides for the mechanism of opposition to prevent a registration from issuing.

The court also deemed it too late for Herman Miller to add, after the close of discovery, unfair competition claims based on a defendant’s alleged use of its reputation as a seller of “knock-off goods” to “position the accused chairs as substitutes for real Caper chairs,” and that it “target[ed]” and “interfere[d] with” Herman Miller dealers who were “contractually obligated to not sell Caper knock-offs.” This was not a trade dress infringement theory and it came too late.