Fate of Barcelona Chair Still In Air

As previously reported on here, the legal protections afforded the Barcelona Chair were moving towards a jury decision in August 2009. It appears that the case, Alphaville Design, Inc. v. Knoll, Inc., Civil No. 07-cv-5569 (N.D. Cal.), is still headed for trial after denial of summary judgment motions and an apparently failed settlement conference.

With Furniture Market Comes A New Round Of Suits (And One Settlement!)

For this Fall 2009 Furniture Market, we have nice variety of cases involving intellectual property and furniture (I'll save the settlement news for last):

1. Hillsdale Furniture, LLC v. Trade Masters, LLC, Civil No. 09-cv-798 (M.D.N.C.) (filed Oct. 13, 2009) - In its complaint, Hillsdale Furniture alleges copyright infringement, breach of contract, unfair/unfair competition/palming off under North Carolina common law, and violation of North Carolina Unfair and Deceptive Trade Practices Act. Hillsdale alleges that Trade Master infringes its rights in its "Milan Collection." The breach of contract claim arises out of Trade Master's alleged breach of an agreement to cease selling alleged infringements in March 2008. The Milan Collection includes dining tables, chairs, and bar stools, an example of which is shown below:

2. Amini Innovation Corporation v. Acme Furniture Industries, Inc., Civil No. 09-cv-7427 (C.D. Cal.) (filed Oct. 13, 2009) - In its complaint, Amini alleges that Acme is engaging in trademark infringement under the Lanham Act, federal and state common law trademark infringement, federal unfair competition, and state unfair competition among other allegations. Amini's complaint centers around Acme's use of the names "Monte Carlo," "Eden," "Tuscan," "Tuscany," "Torino," and "Venetian" in conjunction with Acme's furniture collections. Amini owns federal trademark registrations for "Monte Carlo Collection," "Torino Collection," "Tuscano Collection," and "Venetian Collection" (with "Collection" having been disclaimed).


3. Knoll, Inc. v. Richard Racana, Jr. & Associates, Inc. d/b/a European Furniture Importers, Civil No. 09-cv-8585 (S.D.N.Y.) (filed Oct. 8, 2009) - In its complaint, Knoll accuses Racana of trademark infringement and false designation of origin under the Lanham along with the usual New York state law claims. The thrust of Knoll's allegations is that Racana is importing infringing versions of the Barcelon Chair, Barcelona Stool, Barcelona Couch, Barcelona Table, the Flat Brno Chair. Knoll has federal trademark registrations on the Barcelona Chair, Barcelona Couch, and the Barcelona Table. Images of the Barcelona collection and Brno Chair are below:

And, now for the settlement:

Furniture Today reports that Casana Furniture and Coaster Co. have settled a patent infringement lawsuit filed in the United States District Court for the Middle District of North Carolina. In the complaint, Casana alleged patent infringement, trade dress infringement, unfair competition, and unfair and deceptive trade pratices. Interestingly, the settlement allows Coaster to continue making the accused designs without change. More information on the settlement may be found here.

Pew Patent Reminder Of Usefulness Of Utility Patents For Furniture

On October 7, 2009 Sauder Manufacturing Company of Archbold, Ohio sued Souter, Inc. d/b/a Covenant Church Manufacturing ("Covenant") of Ozark, Missouri for infringement of U.S. Patent No. 5,890,761 entitled "Pew Having Discrete Seating Portions" ("the ''761 Patent"). (See Case No. 3:09-cv-2325 (N.D. Ohio)). The '761 patent claims a standard church pew having two removable seating portions positioned on the bench. Each seating portion has a predetermined width. Covenant has yet to respond.

The '761 Patent is a good reminder that utility patents serve a vital role in protecting furniture design. In the case of the Sauder pew, the improvement is modest but Sauder nonetheless took the time and expended the resources necessary to secure a utility patent. The furniture company that uses the correct mix of utlity and design patents, in combination with copyright and trade dress, will have the upper hand in the marketplace. Of course, for those companies already using intellectual property to protect their furniture I'm merely preaching to the choir.

No word from the clergy or from the man upstairs on the merits of this case.

Figure 4 from Sauder's '761 Patent is below:

The New Pleading Standards And Furniture Trade Dress Cases

It was only a matter of time before the new pleading standards set forth in Twombly v. Bell Atl. Corp., 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009) were interpreted through the lens of a furniture trade dress case. That is what happened recently in Heller Inc. v. Design Within Reach, No. 09 Civ. 1909 (JGK), 2009 WL 2486054 (S.D.N.Y. Aug. 14, 2009). In Heller, the plaintiff Heller Inc. sued defendant Design Within Reach ("DWR") for various claims including trademark dilution and trade dress infringement, in violation of the Lanhan Act § 43, 15 U.S.C. § 1125 and New York Gen. Bus. Law § 360-l. DWR moved to dismiss Heller's federal dilution claim and trade dress claims as they relate to federal unfair competition, state injury to business reputation, and common law trade dress infringement and unfair competition.

Heller makes and sells the "Bellini Chair" and has done so since 1998. The Bellini Chair has won several prestiguous awards, including the Compasso d'Oro in 2001, and is part of the permanent collection of the Metropolitan Museum of Art in New York City. Since 1998, Heller sold more than 180,00 units of the Bellini Chair, generating sales of over $9 million. Heller asserted that the Bellini Chair acquired secondary meaning among the trade and the public as being identified exclusively with Heller.
In 2007 Heller received a trade dress registration from the United States Patent and Trademark Office. The PTO issued the registration without requiring Heller to show proof of acquired secondary meaning. DWR's founder and former director submitted a declaration in support of Heller's trade dress application in which he stated that "the relevant public interested in contemporary furniture understands the source of the Bellini Chair to be Heller Design, Inc."


DWR sells a chair that is identical to the Bellini Chair except for a small crescent-shaped opening in the back of the chair. The DWR chair has a lower retail price than the Bellini Chair and, according to Heller, is of inferior quality.

The court examined the history and requirements of the Trademark Dilution Revision Act before turning its attention to the sufficiency of Heller's pleadings. In considering the TDRA, the court held that the act "reject[ed] dilution claims based on 'niche' fame." The court continued by questioning how a plaintiff can sufficiently plead "fame" under the new pleading standard:

It remains unclear whether the plaintiff may be capable of pleading in goodfaith that its mark is 'famous' within the meaning of the statute, with sufficient factual allegations to make such a claim plausible.

2009 WL 2486054, at * 4.


In its complaint, Heller alleged that the Bellini Chair trademark is wellk known to the "relevant public interested in contemporary furniture." The court pointed out that the TDRA requires that a trademark must be famous to the "general consuming public of the United States," not merely the contemporary furniture nich of the population. The court concluded that Heller did not make an adequate showing on teh question of fame and dismissed the federal dilution cause of action with leave to file an amended claim.


As to Heller's trade dress claims, the court dismissed them for only offering a vague description of the the trade dress; describing it merely as an "ornamental and sculptural chair" and appending two images of the chair as exhibits, one of which was the image in Heller's trade dress registration. The court stated that the "plaintiff includes no additional details regarding which elements of the plaintiff's trade dress design are distinctive, much less how certain elements are distinctive." Id. at *6. The court rejected Heller's "a picture is worth a thousand words" argument, requiring that a plaintiff articulate the dinstinctive features of claimed trade dress. Id. The court furhter rejected Heller's argument that the trade dress registration provides the necessary details. Here, the court held that while the registration may be prima facie evidence of the validity of the registered mark, it does not provide clarity of its scope. Id. The court granted Heller leave to amend the trade dress claims as well.


The take-away lesson is that the trade dress plaintiff must certainly articulate the scope of its alleged trade dress and not merely rely on images. Likewise, the wise plaintiff pursuing a dilution claim will correctly pleading the level of fame required by the TDRA.