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.