Heller | The Bellini Chair® - Mario Bellini http://www.helleronline.com/tbc_main.

php

Model Number
1000

Designer
Mario Bellini

Date of Design
1998

Model Description
Injection molded stacking chair appropriate for indoor/outdoor
commercial, institutional and residential use. The flexing action
of the back provides a high degree of comfort. Lightly textured,
fully washable surface. The legs provided with pads for hard surface
flooring. Stacks 6 high.

Awards / Press
Recipient of the 2001 Compasso d'Oro ADI Italy's most prestigious
design award, The 1999 ID Annual Design Review Design Distinction
Award, The 1999 Bronze IDEA Industrial Design Excellence Award
and featured in the 1999 International Design Yearbook, Read what
the international design press has to say about The Bellini Chair

Views

Select a view and combine it with the color of your choice.

Colors
1000-01 White
1000-06 Black
1000-12 Dark Grey
1000-14 Cream
1000-17 Light Grey
1000-28 Sage

Downloads
The Bellini Chair datasheet (pdf)
The Bellini Chair linedrawing (pdf)
The Bellini Chair CAD files (zip)
The Bellini Chair product image (72dpi)
The Bellini Chair product image (300dpi)

Dimensions
Height: 84cm - 33 1/16"
Seat Height: 46cm - 18 1/8"
Width: 44cm - 17 5/16"
Depth: 46cm - 18 1/8"
Weight: 3,4 kilos - 7.5 lbs
Pack: 6/carton per color

Construction
One piece injection molding of modified, fiberglass reinforced
polypropylene.

Tests
BIFMA

Imprint/Disclaimer © 2009 Heller Inc. All Rights Reserved.

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 Bellini Chair
[Allegedly Protected]

US Trademark Reg. 3,270,850 and US Design Patent 426,972

Alonzo Chair
[Allegedly Infringing]

Trade dress issues: (1) If, as Heller asserts, the entire chair is the chair’s trade dress, and we assume that
the chair functions as a chair, then isn’t Heller simply ignoring the fact that trade dress does not protect
functional designs? (2) Does its chair really have secondary meaning? Test for trade dress infringement:
Would the use of the allegedly infringing trade dress [in this case the entire Bellini Chair] create a
likelihood of confusion in the minds of ordinary consumers as to the source of the goods or services?

Design patent issues: (1) Would an average observer take the Bellini Chair for a different, and not a
modified, already-existing design? (2) Was the ornamental design of the Bellini Chair “created for the
purpose of ornamenting” or is it “merely a by-product” of functional or mechanical considerations? Test
for design patent infringement: Would a person who is aware of “closely similar prior art designs”
conclude that the allegedly infringing design is “substantially the same” as the patented design?
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

HELLER INCORPORATED,

Plaintiff, Case No. 09 Civ. 1909 (JGK)

v.

DESIGN WITHIN REACH, INC.,

RAY BRUNNER, CAROL FRANKSEN, and
DAVID WISE,

Defendants.

MEMORANDUM OF LAW IN SUPPORT OF DEFENDANT DESIGN WITHIN REACH,

INC.’S MOTION TO DISMISS THE THIRD, SIXTH, SEVENTH AND EIGHTH
CLAIMS IN PLAINTIFF’S AMENDED COMPLAINT

Darren S. Cahr (admitted pro hac vice)

Darren.Cahr@dbr.com
David J. Moorhead (admitted pro hac vice)
David.Moorhead@dbr.com
DRINKER BIDDLE & REATH LLP
191 N. Wacker Drive, Suite 3700
Chicago, IL 60606-1698
Tel: (312) 569-1000
Fax: (312) 569-3000

James G. Murphy
James.Murphy@dbr.com
Marsha J. Indych
Marsha.Indych@dbr.com
DRINKER BIDDLE & REATH LLP
140 Broadway, 39th Floor
New York, NY 10005
Tel: (212) 248-3140
Fax: (212) 248-3141
 TABLE OF CONTENTS

Page

I. INTRODUCTION ............................................................................................................. 1

II. FACTUAL BACKGROUND............................................................................................ 1

A. Procedural History ................................................................................................. 1

B. Plaintiff’s New Attempt to Define The “Bellini Chair Trade Dress.”................... 2

C. Plaintiff’s Third, Sixth, Seventh, and Eighth Claims Rely On Its Alleged
Bellini Chair Trade Dress ...................................................................................... 3

III. LEGAL STANDARDS ..................................................................................................... 3

A. Standards Under Rule 12(b)(6).............................................................................. 3

B. Standards for Trade Dress Claims ......................................................................... 4

IV. ARGUMENT..................................................................................................................... 5

A. Plaintiff Still Does Not Allege a Precise Expression of Its Claimed Trade
Dress ...................................................................................................................... 5

1. Plaintiff Must Articulate The Specific Elements That Comprise Its

Claimed Trade Dress.................................................................................. 5

2. Plaintiff Still Has Not Identified With Precision The Specific

Elements That Comprise Its Alleged Trade Dress..................................... 6

B. Plaintiff Still Does Not Allege That Its Claimed Trade Dress Is Non-
Functional .............................................................................................................. 9

1. Plaintiff Has Not Registered Its Bellini Chair Trade Dress..................... 10

2. The Amended Complaint Neither Limits The Trade Dress To The

Registration Nor Alleges The Trade Dress Is Non-Functional................ 11

C. Plaintiff’s Failure To Plead Its Trade Dress Dooms Its Third, Sixth,
Seventh, and Eighth Claims................................................................................. 13

V. CONCLUSION................................................................................................................ 14
 TABLE OF AUTHORITIES
CASES
Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009) ........................................................................................ 4

Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217 (S.D.N.Y. 2004)...... 4, 14

Gant v. Wallingford Bd. of Educ., 69 F.2d 669 (2d Cir. 1995)....................................................... 3

Grandon v. Merrill Lynch & Co., 147 F.3d 184 (2d Cir. 1998) ..................................................... 3

Imig, Inc. v. Electrolux Home Care Prods., CV 05-0529, 2007 WL 900310 (E.D.N.Y. Mar. 22,
2007) ..................................................................................................................................... 9, 11

Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373 (2d Cir. 1997)......... 4, 5, 6, 7, 11

Malaco Leaf AB v. Promotion In Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003) ............... 12

Nat'l Lighting Co., Inc. v. Bridge Metal Indus., LLC, 601 F. Supp. 2d 556 (S.D.N.Y. 2009) .........
......................................................................................................................................... 5, 6, 7, 8

Port Dock & Stone Corp. v. Oldcastle Ne., Inc., 507 F.3d 117 (2d Cir. 2007) .............................. 4

S. Cherry St. LLC v. Hennessee Group LLC (In re Bayou Hedge Fund Litig.), 534 F. Supp. 2d
405 (S.D.N.Y. 2007) ............................................................................................................... 3, 4

Sherwood 48 Assocs. v. Sony Corp. of Am., 76 Fed. Appx. 389 (2d Cir. 2003)......................... 4, 7

Shevy Custom Wigs, Inc. v. Aggie Wigs, 2006 WL 3335008 (E.D.N.Y. Nov. 17, 2006)........... 5, 7

Sports Traveler, Inc. v. Advance Magazine Publishers, Inc., 25 F. Supp. 2d 154 (S.D.N.Y. 2008)
............................................................................................................................................... 4, 13

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) ................................... 9, 12

Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998) .................................... 4, 14

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) ................................................ 6

Yurman Design, Inc. v. PAJ Inc., 262 F.3d 101 (2d Cir. 2001).............................................. 11, 12

Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471 (S.D.N.Y. 2008)............................... 4, 13

STATUTES
15 U.S.C. § 1125(a)(3).................................................................................................................... 9

RULES
Fed. R. Civ. P. 12(b)(6)................................................................................................................... 3

- ii -
 TABLE OF ABBREVIATIONS

Amended Complaint Amended Complaint and Jury Demand, [Dkt. # 24] (Aug. 24, 2009)
Bellini Chair Trade Dress See Amended Complaint, ¶ 18 (reproduced on page 2 infra)
DWR Defendant Design Within Reach, Inc.
Defendants Defendants DWR, Ray Brunner, Carol Franksen, and David Wise
Individual Defendants Defendants Ray Brunner, Carol Franksen, and David Wise
Plaintiff Plaintiff Heller Incorporated

- iii -
I. INTRODUCTION

Plaintiff has once again failed to identify its claimed “Bellini Chair Trade Dress.” In its

original Complaint, Plaintiff identified its purported trade dress with only a vague description of

an “ornamental and sculptural” chair. After this Court found that description deficient, Plaintiff

amended its Complaint to provide a laundry list detailing every feature of its chair, including a

“substantially flat” seat surface and a “back of the chair [that] curves upwardly from the seat

surface.” This list of features common to many chairs still fails to identify the character and

scope of the claimed trade dress with the requisite precision. Despite Plaintiff’s long-winded

description of a chair, neither this Court nor Design Within Reach can possibly know what

elements actually constitute Plaintiff’s claimed trade dress.

Moreover, now that Plaintiff has attempted to distinguish its trade dress rights apart from

its trademark registration, Plaintiff has failed to allege that the unregistered Bellini Chair Trade

Dress is non-functional. A critical element of establishing trade dress rights is establishing that

the trade dress is non-functional to ensure that monopolies are not granted on functional

elements. Plaintiff’s Amended Complaint is understandably devoid of any such allegation, as

much of the purported “Bellini Chair Trade Dress” described by Plaintiff is, in fact, functional.

Accordingly, Plaintiff’s Third, Sixth, Seventh, and Eighth claims must be dismissed.

II. FACTUAL BACKGROUND

A. Procedural History

Plaintiff Heller Incorporated (“Plaintiff”) originally filed this suit against just Defendant

Design Within Reach, Inc. (“DWR”) seeking a perpetual, state-sanctioned monopoly on the

vague design of a chair. After the Court granted DWR’s motion to dismiss Plaintiff’s trademark

dilution and trade dress infringement claims, Plaintiff responded by filing an amended complaint

on August 24, 2009.

 Plaintiff’s Amended Complaint [Dkt. # 24] names not just DWR as a defendant, but it

also names three individuals, Ray Brunner, Carol Franksen, and David Wise (collectively, the

“Individual Defendants”), as defendants. The Individual Defendants have filed a separate

motion to dismiss under Rules 12(b)(2) and 12(b)(6) of the Federal Rules of Civil Procedure.

B. Plaintiff’s New Attempt to Define The “Bellini Chair Trade Dress.”

Although Plaintiff did not attempt to replead its previously dismissed dilution claims, it

did attempt to address some of the deficiencies in its trade dress claims. Most notably, Plaintiff’s

Amended Complaint now identifies the Bellini Chair Trade Dress as:

18. Plaintiff’s Bellini Chair Trade Dress is illustrated in the images of Exhibit
C. It consists of a substantially seamless chair with seat, a back and four
legs integrally formed as a single part. The seat surface has opposing
edges that gradually taper inwardly from the front portion of the seat
toward the rear portion and then flare slightly outwardly at the point where
the seat meets the back of the chair. The seat surface is substantially flat
with rounded front corners. The seat is supported by front and side walls
which meet the seat surface at a relatively sharp edge and incline
downwardly and inwardly from the edge. The walls extend between and
meet the legs in concave interior corners. The back of the chair curves
upwardly from the seat surface. It has side sections which blend upwardly
from the rear legs which gradually taper inwardly from the lower portion
of the chair back toward the upper portion. Between the side sections is a
generally arcuate section, as viewed from the top of the chair. The front
legs are generally triangular in cross-section and have rounded upper
sections matching the shape of the rounded front corners of the seat
surface to which they are attached to form a smooth transition between the
exterior surfaces of the legs and the seat surface.

Amended Complaint, ¶ 18. Plaintiff also attaches four pictures of its chair. Amended Complaint,

Ex. C. The pictures are from different angles, but they do not indicate which angle they were

taken from. Plaintiff offers no further identification, description, or detail of its alleged “Bellini

Chair Trade Dress.”

-2-
 C. Plaintiff’s Third, Sixth, Seventh, and Eighth Claims Rely On Its Alleged
Bellini Chair Trade Dress.

In the Amended Complaint, Plaintiff asserted several claims that are based on its claimed

Bellini Chair Trade Dress. Specifically, Plaintiff’s Third Claim asserts a Federal unfair

competition claim as to the Bellini Chair Trade Dress, its Sixth Claim asserts a state claim for

injury to business reputation as to the Bellini Chair Trade Dress, and its Eighth Claim asserts a

common law trade dress infringement and unfair competition claim. Each of these claims

expressly relies on Plaintiff’s claimed Bellini Chair Trade Dress. In addition, Plaintiff’s Seventh

Claim for common law trademark infringement and unfair competition also appears to rely, at

least in part, on Plaintiff’s Bellini Chair Trade Dress.

III. LEGAL STANDARDS

A. Standards Under Rule 12(b)(6)

Rule 12(b)(6) of the Federal Rules of Civil Procedure mandates dismissal of a complaint

that “fails to state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). See also

S. Cherry St. LLC v. Hennessee Group LLC (In re Bayou Hedge Fund Litig.), 534 F. Supp. 2d

405, 413 (S.D.N.Y. 2007). A court considering a motion to dismiss must accept the material

facts alleged by the non-moving party and draw all reasonable inferences in its favor. Grandon

v. Merrill Lynch & Co., 147 F.3d 184, 188 (2d Cir. 1998); Gant v. Wallingford Bd. of Educ., 69

F.2d 669, 673 (2d Cir. 1995); Hennessee Group, 534 F. Supp. 2d at 413.

At the same time, the non-moving party must provide “more than labels and

conclusions.” Hennessee Group, 534 F. Supp. 2d at 413 (quoting Bell Atl. Corp. v. Twombly,

550 U.S. 544, 555 (2007)). A “formulaic recitation of the elements of a cause of action will not

do.” Hennessee Group, 534 F. Supp. 2d at 413 (quoting Bell Atl., 550 U.S. at 555). The non-

moving party must assert enough facts “to state a claim to relief that is plausible on its face.”

-3-
Hennessee Group, 534 F. Supp. 2d at 413. A claim will be dismissed if the allegations in the

complaint do not nudge the claim “across the line from conceivable to plausible.” Bell Atl., 550

U.S. at 570. Moreover, “the tenet that a court must accept as true all of the allegations contained

in a complaint is inapplicable to legal conclusions.” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1940

(2009); Port Dock & Stone Corp. v. Oldcastle Ne., Inc., 507 F.3d 117, 121 (2d Cir. 2007).

B. Standards for Trade Dress Claims

Federal law provides that a plaintiff who alleges infringement of trade dress in a product

design must: (1) “offer a precise expression of the character and scope of the claimed trade

dress;” (2) allege that “the claimed trade dress has secondary meaning;” (3) allege “a likelihood

of confusion between the plaintiff’s good and the defendants’;” and (4) allege that “the claimed

trade dress is non-functional.” Sherwood 48 Assocs. v. Sony Corp. of Am., 76 Fed. Appx. 389,

391 (2d Cir. 2003) (citing Yurman Design, Inc. v. PAJ Inc., 262 F.3d 101, 115-16 (2d Cir. 2001)

and quoting Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir.

1997)).

In all significant respects, trade dress protection is coextensive under New York state

common law and federal law. See Sports Traveler, Inc. v. Advance Magazine Publishers, Inc.,

25 F. Supp. 2d 154, 166 (S.D.N.Y. 2008) (“The analysis for trade dress infringement is the same

under both the Lanham Act and New York State common law”); Yurman Studio, Inc. v.

Castaneda, 591 F. Supp. 2d 471, 488 (S.D.N.Y. 2008) (“The elements necessary to prevail on

common law causes of action for trademark infringement mirror the Lanham Act claims”)

(internal quotations omitted); Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 363 (S.D.N.Y.

1998) (“It is well recognized that the standards for Section 43(a) claims of the Lanham Act and

unfair competition claims under New York law are almost indistinguishable”); Cartier, Inc. v.

Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217, 251 (S.D.N.Y. 2004) (“The standards

-4-
for Section 43(a) Lanham Act claims are virtually indistinguishable from unfair competition

claims under New York law”).

IV. ARGUMENT

Plaintiff’s Amended Complaint fails to allege the first and fourth elements of the test for

infringement of an unregistered product design. Specifically, Plaintiff’s Amended Complaint

lacks a “precise expression of the character and scope of [the] claimed trade dress,” and it fails to

allege that the Bellini Chair Trade Dress is not functional. Therefore, all claims depending on

Plaintiff’s “Bellini Chair Trade Dress” must be dismissed.

A. Plaintiff Still Does Not Allege a Precise Expression of Its Claimed Trade
Dress.

1. Plaintiff Must Articulate The Specific Elements That Comprise Its

Claimed Trade Dress.

A plaintiff seeking to protect a product design as trade dress must articulate “the specific

elements which comprise its distinct dress.” Landscape Forms, 113 F.3d at 381. And it must do

so at the outset of the case. See, e.g., Landscape Forms, 113 F.3d at 373 (vacating a preliminary

injunction); Nat’l Lighting Co., Inc. v. Bridge Metal Indus., LLC, 601 F. Supp. 2d 556 (S.D.N.Y.

2009) (granting motion to dismiss). A plaintiff must specify “not just which features are

distinctive, but also how they are distinctive.” Shevy Custom Wigs, Inc. v. Aggie Wigs, 2006 WL

3335008, at 5 (E.D.N.Y. Nov. 17, 2006) (emphasis in original). Sweeping and conclusory

statements about the look of a product are insufficient. Shevy Custom Wigs, 2006 WL 3335008,

at *5; Nat’l Lighting, 601 F. Supp. 2d at 562. In fact, a “conclusory reliance on the ‘entire look

of a product’ does not fulfill the plaintiff’s obligation to offer ‘a precise expression of the

character and scope of the claimed trade dress’ under Sherwood and Landscape Forms.” Nat’l

Lighting, 601 F. Supp. 2d at 562.

-5-
 The requirement that a plaintiff specifically articulate the precise character and scope of

the claimed trade dress serves to: (1) preclude “the question of design and configuration” from

“degenerat[ing] into a question of quality, or beauty, or cachet;” (2) assure that jurors know

“precisely what the plaintiff is trying to protect;” (3) allow courts to “winnow[] out claims that

are overbroad as a matter of law;” (4) enable courts to shape relief that is “narrowly tailored” to

the “distinctive combination of ingredients deserv[ing] protection;” and (5) provide defendants

(and competitors) with “fair notice” of how to defend against (and avoid) allegations of

infringement. Yurman Design, Inc. v. PAJ Inc., 262 F.3d at 116-17 (quoting Landscape Forms,

113 F.3d at 381).

This requirement also exists to limit perpetual product monopolies. See Yurman Design,

Inc. v. PAJ Inc., 262 F.3d at 115; Nat’I Lighting, 601 F. Supp. 2d at 561. See also Wal-Mart

Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 213 (2000) (“[A]lmost invariably, even the most

unusual of product designs . . . is intended not to identify the source” of the product, “but to

render the product itself more useful or more appealing”); Landscape Forms, 113 F.3d at 379

(“[T]he Lanham Act must be construed in the light of a strong federal policy in favor of

vigorously competitive markets”).

2. Plaintiff Still Has Not Identified With Precision The Specific Elements
That Comprise Its Alleged Trade Dress.

Despite being granted leave by this Court to amend its original Complaint to correct the

“plainly insufficient” description of its purported trade dress, Plaintiff has still failed to identify

“the specific elements which comprise its distinct dress.” Landscape Forms, 113 F.3d at 381.

Plaintiff originally identified its trade dress as an “ornamental and sculptural chair” and attached

pictures to the original Complaint. Complaint, ¶ 8 and Exs. A and C. Now, Plaintiff provides a

verbose but woefully imprecise description to identify its trade dress in its Amended Complaint.

-6-
This description, however, still fails to define the claimed trade dress with the requisite precision.

Sherwood 48 Assoc., 76 Fed. Appx. at 391. Critically, the description fails to identify “not just

which features are distinctive, but also how they are distinctive.” Shevy Custom Wigs, 2006 WL

3335008, at *5 (emphasis in original). Indeed, the description is chock full of phrases that would

describe almost any chair, such as the “seat surface is substantially flat” and the “back of the

chair curves upwardly from the seat surface.” Plaintiff’s amended description is nothing more

than a laundry list of a chair’s features. It never identifies which of them are its claimed trade

dress or how they are distinctive.

Plaintiff cannot rely on the look of the entire product because a “conclusory reliance on

the ‘entire look of the product’ does not fulfill the plaintiff’s obligation to offer ‘a precise

expression of the character and scope of the claimed trade dress’ under Sherwood and Landscape

Forms.” Nat’l Lighting, 601 F. Supp. 2d at 562. As the Second Circuit noted, a “focus on the

overall look of a product does not permit a plaintiff to dispense with an articulation of the

specific elements which comprise its distinct dress.” Landscape Forms, 113 F.3d at 381.

“Without such a precise expression of the character and scope of the claimed trade dress,

litigation will be difficult, as courts will be unable to evaluate how unique and unexpected the

design elements are in the relevant market.” Landscape Forms, 113 F.3d at 381.

This case is analogous to the situation in National Lighting, a 2009 case decided in this

District. In National Lighting, as here, the original complaint (1) offered “a vague description”

of the plaintiff's claimed trade dress, a line of lighting fixtures, and (2) exhibited “promotional

materials for some of its lighting fixtures and photos of defendants’ showroom.” Nat’l Lighting,

601 F. Supp. 2d at 561. The court found the complaint to be deficient and provided the plaintiff

with leave to amend.

-7-
 The plaintiff in National Lighting then tried to correct the deficiencies by amending its

complaint, but the court found that the amended complaint was likewise deficient. Nat’l

Lighting, 601 F. Supp. 2d at 562-63. Instead of describing “which of plaintiff’s trade dress

design elements [were] distinctive and how they [were] distinctive,” the amended complaint

provided “a laundry list of the elements that constitute a lighting fixture’s design.” Nat’l

Lighting, 601 F. Supp. 2d at 562. The “mere attachment of brochures, photographs and

specifications” did not cure its deficiency. Nat’l Lighting, 601 F. Supp. 2d at 562. The court

explained that it could not be “expected to distill from a set of images those elements that are

common to a line of products and both distinctive and non-functional.” It also noted that the

plaintiff had failed to explain “which actual designs were encompassed in its trade dress claim.”

Nat’l Lighting, 601 F. Supp. 2d at 563. Accordingly, the court dismissed the trade dress

infringement claim with prejudice. Nat’l Lighting, 601 F. Supp. 2d at 563.

Here, Plaintiff first tried to rely on a vague description of an “ornamental and sculptural

chair” with a few images attached. As in National Lighting, when this Court found Plaintiff’s

description insufficient, Plaintiff responded with more pictures and a laundry list description of

the trade dress. Plaintiff’s 10-sentence description of a chair is nothing more than a summary of

the entire look of a chair without an explanation of which features are distinctive and how.

Similarly, in National Lighting, as here, the plaintiff exhibited images of the defendant's

sales practices—there, photos of its showroom; here, photos of its catalog and website. There, as

here, the plaintiff had not specified which designs were allegedly protected, and the court could

not distill the “distinctive and non-functional” elements. The National Lighting court dismissed

the plaintiff’s vague description of its claimed trade dress as deficient, as this Court did. When

the plaintiff there responded with a laundry list description, the court there found the description

-8-
insufficient and ultimately dismissed the trade dress claims with prejudice. This Court should do

the same.

Because Plaintiff has failed to articulate its claimed trade dress with the requisite

precision, the Third, Sixth, Seventh, and Eighth Claims of its Amended Complaint should be

dismissed.

B. Plaintiff Still Does Not Allege That Its Claimed Trade Dress Is Non-
Functional.

Even if Plaintiff could have successfully articulated the specific elements that comprise

its distinct trade dress, it failed to allege that any unregistered elements are non-functional. See

15 U.S.C. § 1125(a)(3) (“In a civil action for trade dress infringement under this Chapter for

trade dress not registered on the principal register, the person who asserts trade dress protection

has the burden of proving that the matter sought to be protected is not functional”). A product

feature is functional if either (1) it is “essential to the use or purpose of the article” or (2) it

“affects the cost or quality of the article.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532

U.S. 23, 32 (2001) (internal quotations omitted). Even an aesthetic feature should be deemed

functional if conferring an exclusive right to its use “would put competitors at a significant non-

reputation-related disadvantage.” TrafFix, 532 U.S. at 32 (internal quotations omitted). A

functional design, regardless of whether it has acquired secondary meaning, is simply not

protectable trade dress. Imig, Inc. v. Electrolux Home Care Prods., CV 05-0529(CJ), 2007 WL

900310, at *6 (E.D.N.Y. Mar. 22, 2007).

DWR raised this issue in its earlier motion to dismiss. See Memo. of Law in Support of

Defendant’s Motion to Dismiss [Dkt. # 13], pp. 13-14. Plaintiff responded by affirmatively

stating in its opposition brief that “plaintiff’s trade dress is registered on the principal register,”

Plaintiff’s Memo. of Law in Opp. To Defendants’ Motion to Dismiss, [Dkt. # 14], p. 12 (emphasis

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in original). Plaintiff’s Amended Complaint, however, contains no such allegation, which would

be contradicted by the words of the Amended Complaint itself.1

1. Plaintiff Has Not Registered Its Bellini Chair Trade Dress.

In its Amended Complaint, Plaintiff now provides a description of its claimed Bellini

Chair Trade Dress, a description that was never submitted to the PTO. Plaintiff can no longer

claim that its trade dress is covered by a U.S. trademark registration because a trademark

registration asserted as the basis for claiming trade dress must identify what is being registered.

The Trademark Manual of Examining Procedure states that “[i]f an acceptable statement

describing the mark is not in the record, the examining attorney must require the applicant to

submit a description to clarify what the applicant seeks to register.” TMEP, § 1202.02(d)

(emphasis in original). An applicant trying to register trade dress with the PTO “must include a

concise description of a configuration mark” because “competitors would not know from a

registration drawing of the whole shape, exactly which particular design features were registered

as a mark.” J. Thomas McCarthy, MCCARTHY ON TRADEMARKS (4th Ed. 2008), § 7.94. “To be

registerable as a trademark or service mark, the elements of the trade dress must be capable of

being listed and defined so that the public will know the exact parameters of the claimed

exclusive right.” J. Thomas McCarthy, MCCARTHY ON TRADEMARKS (4th Ed. 2008), § 8.7.

Here, the Certificate of Registration that Plaintiff submitted as Exhibit A to the

Complaint contains no articulation of what elements constitute its allegedly registered trade

dress. Plaintiff has offered nothing from its correspondence with the PTO to demonstrate that it

ever provided a concise description of the claimed features registered with the PTO. In

1
If Plaintiff were relying solely on a registration for the entirety of its claimed trade dress, it would not need to
plead that the trade dress is non-functional. However, it is expressly not relying on a registration, and it must
therefore plead that the trade dress is not functional.

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comparison, for example, the registration for the world famous hourglass shape of the Coca-

Cola® bottle includes a written description “the mark consists of a drawing of the outline of a

curved contour shaped bottle.” See U.S. Trademark Reg. No. 2,085,197.

There is nothing in the registration certificate or the record to indicate that the PTO even

understood that Plaintiff sought a registration for the design as trade dress and not simply as a

design mark or logo. In fact, the description in Plaintiff’s Amended Complaint contains a variety

of features that are not visible in the image in its registration certificate. For example, the

description that Plaintiff now provides states that “[b]etween the side sections [of the back of the

chair] is a generally arcuate section, as viewed from the top of the chair.” Amended Complaint, ¶

18. There is no view from the top of the chair in the trademark registration. Amended

Complaint, Ex. A. The back does not appear arcuate in any way. It appears flat. What Plaintiff

now claims is its “Bellini Chair Trade Dress” has not been registered in the PTO.

2. The Amended Complaint Neither Limits The Trade Dress To The

Registration Nor Alleges The Trade Dress Is Non-Functional.

As discussed in DWR’s earlier motion, the rule that trade dress must be non-functional

“protects competition, even at the cost of potential consumer confusion.” Landscape Forms, Inc.

v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997). The non-functional requirement is

“even more critical” when applied to alleged product design trade dress (as opposed to packaging

trade dress) “because a monopoly right in the design of the product” more likely “preclude[s]

competition.” Yurman Design, Inc. v. PAJ Inc., 262 F.3d 101, 116 (2d Cir. 2001). See also

Landscape Forms, 113 F.3d at 379 (“[T]he Lanham Act must be construed in the light of a

strong federal policy in favor of vigorously competitive markets”); Imig, Inc., 2007 WL 900310,

at *5 (protection for functional designs “comes too near a monopoly in the products

themselves”). Courts must rigorously apply the rule that trade dress be non-functional “to avoid

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undermining the carefully circumscribed statutory regimes for the protection of useful and

ornamental designs under federal patent and copyright law.” Yurman Design, Inc. v. PAJ Inc.,

262 F.3d 101, 116 (2d Cir. 2001) (internal citation omitted). Accordingly, courts must

rigorously require plaintiffs to plead that unregistered alleged trade dress is non-functional. See

TrafFix, 532 U.S. at 29 (“This burden of proof gives force to the well-established rule”).

Malaco Leaf AB v. Promotion In Motion, Inc., a case from this District, appropriately

documents the non-functionality rule. 287 F. Supp. 2d 355 (S.D.N.Y. 2003). In Malaco Leaf,

the maker of the original “Swedish Fish” gummy candy sued the producer of a similarly branded

gummy fish candy, alleging, among other claims, product design trade dress infringement.

Malaco Leaf, 287 F. Supp. 2d at 361-62. Reviewing the evidence on a motion for summary

judgment, the court first observed that the Swedish Fish design was: (1) a “classic example” of a

design “not used to identify source,” (2) used “extensively throughout the confectionery

industry,” and (3) as such, “weak” and without “acquired distinctiveness.” Malaco Leaf, 287 F.

Supp. 2d at 364-65. Turning to the issue of functionality, the court remarked that (a) protecting

“a common, fish-shaped candy design” would unjustifiably eliminate competition, (b) certain of

plaintiff s alleged trade dress elements “like a distinct head and tail” and “a molded eye and

scales”—were actually necessary elements of any fish candy, and (c) another alleged trade dress

element, the “flat back” of the fish, was in fact “a functional result of the manufacturing process,

whereby the liquid is poured into a starch impression.” Malaco Leaf, 287 F. Supp. 2d at 366.

Not surprisingly, the court held that the alleged trade dress was functional and rejected the

plaintiff’s trade dress and related claims.

Like the fish in Malaco Leaf, Plaintiff’s alleged trade dress consists of countless elements

that are “actually necessary elements” of any chair. The description in paragraph 18 of the

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Amended Complaint includes numerous features that are necessary and functional elements of a

chair, including, among others, “seat surface [that] is substantially flat,” “seat is supported by

front and side walls,” “[t]he back of the chair curves upwardly from the seat surface,” and a back

that is “generally arcuate section, as viewed from the top of the chair.” Moreover, other features,

such as a seat surface with “opposing edges that gradually taper inwardly from the front portion

of the seat toward the rear portion and then flare slightly outwardly at the point where the seat

meets the back of the chair” are entirely functional. This taper-and-flare design enables the

chairs to be stacked by providing a nook for another chair’s rear legs to fit when the chairs are

stacked. To that end, Plaintiff has touted that these chairs can “stack[] up to 6 high.” Complaint,

Ex. C. Plaintiff’s failure to allege that its unregistered trade dress is non-functional is

detrimental to every claim based on the unregistered trade dress.

C. Plaintiff’s Failure To Plead Its Trade Dress Dooms Its Third, Sixth, Seventh,
and Eighth Claims.

This Court should dismiss Plaintiff’s Third, Sixth, and Eighth Claims, as they clearly

depend upon the purported Bellini Chair Trade Dress. Moreover, this Court should dismiss

Plaintiff’s Seventh Claim to the extent that it is also based on the Bellini Chair Trade Dress.

Plaintiff’s claims that rely on the Bellini Chair Trade Dress—whether they are the federal

claims (Third), state law claims (Sixth), or common law claims (Seventh and Eighth)—must be

dismissed because of the deficiencies identified in this Motion. The standards under the Lanham

Act, New York state law, and the common law are virtually indistinguishable because in all

significant respects, trade dress protection under each is coextensive. See Sports Traveler, 25 F.

Supp. 2d at 166 (“The analysis for trade dress infringement is the same under both the Lanham

Act and New York State common law”); Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d at

488 (“The elements necessary to prevail on common law causes of action for trademark

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infringement mirror the Lanham Act claims”) (internal quotations omitted); Tri-Star Pictures, 14

F. Supp. 2d at 363 (“It is well recognized that the standards for Section 43(a) claims of the

Lanham Act and unfair competition claims under New York law are almost indistinguishable”);

Cartier, 348 F. Supp. 2d at 251 (“The standards for Section 43(a) Lanham Act claims are

virtually indistinguishable from unfair competition claims under New York law”). Without the

allegation of the Bellini Chair Trade Dress, these claims are a nullity. Thus, they should be

dismissed.

V. CONCLUSION

For the foregoing reasons, Defendant Design Within Reach respectfully requests that this

Court dismiss Plaintiff’s Third, Sixth, Seventh, and Eighth claims for relief.

Dated: October 9, 2009 /s/ Darren S. Cahr

Darren S. Cahr (admitted pro hac vice)
Darren.Cahr@dbr.com
David J. Moorhead (admitted pro hac vice)
David.Moorhead@dbr.com
DRINKER BIDDLE & REATH LLP
191 N. Wacker Drive, Suite 3700
Chicago, IL 60606-1698
Tel: (312) 569-1000
Fax: (312) 569-3000

James G. Murphy
James.Murphy@dbr.com
Marsha J. Indych
Marsha.Indych@dbr.com
DRINKER BIDDLE & REATH LLP
140 Broadway, 39th Floor
New York, NY 10005
Tel: (212) 248-3140
Fax: (212) 248-3141

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 CERTIFICATE OF SERVICE

The undersigned attorney certifies that on October 9, 2009, a copy of the following

documents:

 Notice of Defendant Design Within Reach, Inc.’s Motion to Dismiss the Third,
Sixth, Seventh and Eight Claims in Plaintiff’s Amended Complaint; and

 Memorandum of Law in Support of Defendant Design Within Reach, Inc.’s

Motion to Dismiss the Third, Sixth, Seventh and Eight Claims in Plaintiff’s
Amended Complaint

were served via ECF on the following counsel for Plaintiff Heller Incorporated

Robert L. Epstein, Esq.

Jason M. Drangel
William C. Wright
EPSTEIN DRANGEL BAZERMAN & JAMES LLP
60 E. 42nd Street, Suite 320
New York, NY 10165

Dated: October 9, 2009 /s/ Darren S. Cahr

Darren S. Cahr
D R I N K E R B I D D L E & R E A T H LL P
191 N. Wacker Dr. #3700
Chicago, IL 60606
312.569.1000

CH01/ 25402678