FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BLUMENTHAL DISTRIBUTING, INC., 

DBA Office Star,

Plaintiff-Counter-DefendantAppellant/Cross-Appellee,

v.

HERMAN MILLER, INC.,

Defendant-Counter-ClaimantAppellee/Cross-Appellant.

Nos. 18-56471

18-56493

D.C. No.

5:14-cv-01926-

JAK-SP

OPINION

Appeal from the United States District Court

for the Central District of California

John A. Kronstadt, District Judge, Presiding

Argued and Submitted March 3, 2020

Pasadena, California

Filed June 25, 2020

Before: Andrew D. Hurwitz and Michelle T. Friedland, 

Circuit Judges, and Edward R. Korman,

* District Judge.

Opinion by Judge Korman;

Partial Concurrence and Partial Dissent by Judge Friedland

* The Honorable Edward R. Korman, United States District Judge 

for the Eastern District of New York, sitting by designation.
2 BLUMENTHAL DISTRIB. V. HERMAN MILLER

SUMMARY**

Lanham Act

The panel affirmed in part and reversed in part the 

district court’s judgment after a jury trial on claims of 

infringement of trade dresses in Eames and Aeron chairs and 

remanded for a new trial.

The jury found that Henry Miller, Inc. (“HM”)’s 

registered and unregistered Eames trade dresses were 

protectable, and that Blumenthal Distributing, Inc. (“OSP”) 

willfully infringed and diluted them. HM was awarded 

infringement and dilution damages, and OSP was enjoined 

from continuing its unlawful activities. The jury found that 

HM’s registered and unregistered claimed Aeron trade 

dresses were unprotectable because they were “functional,” 

and the district court entered judgment holding invalid HM’s 

trademark registration for the Aeron chair.

In its opinion and a concurrently-filed memorandum 

disposition, the panel affirmed the judgment in favor of HM 

on its causes of action or the infringement of its registered 

and unregistered Eames trade dresses; reversed the judgment 

in favor of HM on its cause of action for dilution; and 

reversed the judgment in favor of OSP regarding the Aeron 

chair and remanded for a new trial.

In Part II of its opinion, addressing functionality, the 

panel held that for a product’s design to be protected under 

trademark law, the design must be nonfunctional. Utilitarian 

** This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
BLUMENTHAL DISTRIB. V. HERMAN MILLER 3

functionality is based on how well the product works, and 

aesthetic functionality is based on how good the product 

looks. A claimed trade dress has utilitarian functionality if 

it is essential to the use or purpose of a product or affects its 

cost or quality. Under the Disc Golf test, the court 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. A claimed trade dress has aesthetic 

functionality if it serves an aesthetic purpose wholly 

independent of any source-identifying function, such that the 

trade dress’s protection under trademark law would impose 

a significant non-reputation-related competitive 

disadvantage on its owner’s competitors. When a claimed 

dress is defined as the “overall appearance” of a product, the 

tests for utilitarian and aesthetic functionality must be 

applied with extra care. A product’s “overall appearance” is 

functional, and thus unprotectable, where the whole product 

is “nothing other than the assemblage of functional parts,” 

and “even the arrangement and combination” of those parts 

is designed to make the product more functional. The 

standard for whether a claimed trade dress consisting of an 

“overall appearance” is functional is whether protecting the 

trade dress threatens to eliminate a substantial swath of 

competitive alternatives in the relevant market.

As to the Eames chairs, the panel held that the utilitarian 

functionality of their various features did not make their 

overall appearances functional as a matter of law.

As to the Aeron chairs, the panel held that the jury erred 

in instructing the jury on functionality because being part of 

the actual benefit that consumers wish to purchase when they 
4 BLUMENTHAL DISTRIB. V. HERMAN MILLER

buy the product is not proof that a feature is functional. 

Further, the instruction did not capture the concepts that a 

feature that provides a utilitarian benefit is not functional 

unless the Disc Golf factors weigh in favor of finding it so; 

or that a feature that provides an aesthetic benefit is not 

functional unless that benefit is wholly independent of any 

source-identifying function and the feature’s protection 

would put competitors at a significant non-reputation-related 

disadvantage. The panel reversed and remanded for a new 

trial on HM’s Aeron-related claims.

In Part III, addressing fame, the panel held that to prevail 

on trade dress dilution, HM was required to prove that its 

claimed trade dresses were “famous” before OSP began 

selling its accused chairs. The panel held that the Trademark 

Dilution Revision Act of 2006 eliminated the concept of 

niche fame and defined fame as being “widely recognized 

by the general consuming public of the United States as a 

designation of source of the goods or services of the mark’s 

owner.” Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 

894 (9th Cir. 2002), interpreting the Federal Trademark 

Dilution Act of 1995, which preceded the TDRA of 2006, 

held that fame among the general consuming public requires 

“a household name.” Applying this standard, the panel held 

that HM fell short of its burden to supply legally sufficient 

evidence of the fame of its claimed Eames trade dresses. The 

panel therefore reversed the judgment against OSP for trade 

dress dilution.

Concurring in part and dissenting in part, Judge 

Friedland joined most of the majority’s opinion but dissented 

as to Part III because she disagreed with the conclusion that 

there was insufficient evidence to sustain the jury’s verdict 

in favor of HM on its claim for dilution of its Eames trade 

dresses.
BLUMENTHAL DISTRIB. V. HERMAN MILLER 5

COUNSEL

David A. Dillard (argued), Sami I. Schilly, and Michael 

A. Koplow, Lewis Roca Rothgerber Christie LLP,

Glendale, California, for Plaintiff-Counter-DefendantAppellant/Cross-Appellee.

Jonathan E. Moskin (argued), Foley & Lardner LLP, New 

York, New York; Jean-Paul Ciardullo (argued) and Eva K. 

Freel, Foley & Lardner LLP, Los Angeles, California; for 

Defendant-Counter-Claimant-Appellee/Cross-Appellant.

OPINION

KORMAN, District Judge:

Herman Miller, Inc. (“HM”) sells Eames chairs and 

Aeron chairs. On December 13, 2013, HM sent a cease-anddesist letter to Blumenthal Distributing, Inc., d/b/a Office 

Star Products (“OSP”), accusing OSP of selling “knockoff” 

chairs that look like HM’s Eames and Aeron chairs. The 

letter alleged infringement of HM’s rights in the EAMES 

and AERON trade dresses under the Lanham Act. Litigation 

ensued, culminating in a jury trial on HM’s claims for 

infringement of its registered claimed trade dresses under 

15 U.S.C. § 1114, for infringement of its unregistered 

claimed trade dresses under 15 U.S.C. § 1125(a), and for 

dilution of all its claimed trade dresses under 15 U.S.C.

§ 1125(c).

As to the Eames chairs, HM won: The jury found that 

HM’s registered and unregistered claimed EAMES trade 

dresses were protectable, and that OSP willfully infringed 

and diluted them. HM was eventually awarded $3,378,966 
6 BLUMENTHAL DISTRIB. V. HERMAN MILLER

in infringement damages and $3,000,000 in dilution 

damages, and OSP was enjoined from continuing its 

unlawful activities. As to the Aeron chair, HM lost: The jury 

found that HM’s registered and unregistered claimed 

AERON trade dresses were unprotectable because they were 

“functional.” OSP was thus not found liable for infringing or 

diluting those claimed trade dresses, and judgment was 

entered holding them unprotectable and holding invalid 

HM’s trademark registration for the Aeron chair, U.S. 

Trademark Registration No. 2,754,826. Both parties timely 

appealed.

For the reasons below and in the memorandum 

disposition concurrently filed today, we (1) affirm the 

judgment in favor of HM on its causes of action for the 

infringement of its registered and unregistered EAMES trade 

dresses; (2) reverse the judgment in favor of HM on its cause 

of action for dilution; and (3) reverse the judgment in favor

of OSP regarding the Aeron chair and remand for a new trial.

I. BACKGROUND

HM introduced the first Thin Pad Eames chair in 1958, 

and has sold hundreds of thousands of them in the United 

States, along with a related line of Soft Pad Eames chairs. 

The Aeron chairs were introduced in 1994 and were even 

more successful; by the time of trial, HM had sold 

6.5 million of them in the United States. The Eames and 

Aeron chairs come in a range of models, and versions of each 

have been exhibited in American art museums and made 

repeated appearances in American pop culture.

HM’s unregistered claimed EAMES trade dresses 

consist of the overall appearances of its Thin Pad and Soft 

Pad Eames chairs, excluding the chairs’ colors and all 

components beneath the chairs’ seats. HM’s registered 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 7

claimed EAMES trade dress is the same, except that it 

excludes the chairs’ upholstery. The nuances of the claimed 

trade dresses’ scopes, and the difference between the 

registered and unregistered ones, are not material to the 

parties’ dispute, and thus, consistent with the parties’ briefs, 

we discuss all of the claimed EAMES trade dresses 

collectively as the Eames chairs’ overall appearances. 

Examples of the Eames chairs appear below:

HM’s unregistered claimed AERON trade dress was the 

overall appearance of the Aeron chair with an oval-shaped 

lumbar support, excluding the portion of the chair beneath 

the seat and the chair’s color. HM’s registered claimed 

AERON trade dress was the same, except that it also 

included the control box under the seat. As with the Eames 

chairs, the nuances of the claimed AERON trade dresses’ 

scopes, and the difference between the registered and 

unregistered one, are not material to the parties’ dispute, so 

we discuss all of the claimed AERON trade dresses 
8 BLUMENTHAL DISTRIB. V. HERMAN MILLER

collectively as the Aeron chair’s overall appearance. The 

Aeron chair at issue appears below:

II. FUNCTIONALITY

A. Summary of the Law on Functionality

In addition to using distinctive names, logos, packages, 

or labels to identify its products, a seller can also design the 

products themselves to have distinctive, source-identifying 

appearances. Such appearances can receive protection under 

trademark law against infringement and dilution. See WalMart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209–

10 (2000) (holding that “trade dress constitutes a ‘symbol’ 

or ‘device’ for purposes of the” Lanham Act’s definition of 

“trademark”).

However, for a product’s design to be protected under 

trademark law, the design must be nonfunctional. See Secalt 

S.A. v. Wuxi Shenxi Constr. Mach. Co., 668 F.3d 677, 683 

(9th Cir. 2012), abrogated on other grounds by SunEarth, 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 9

Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179 (9th Cir. 

2016) (en banc). This requirement makes it very difficult for 

sellers to use trademark rights to monopolize designs of 

products. See Leatherman Tool Grp., Inc. v. Cooper Indus., 

Inc., 199 F.3d 1009, 1012–13 & n.6 (9th Cir. 1999). “It is 

the province of patent law, not trademark law, to encourage 

invention by granting inventors a monopoly over new 

product designs or functions for a limited time . . . .” 

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 

(1995) (citing 35 U.S.C. §§ 154, 173); see also 1 J. Thomas 

McCarthy, McCarthy on Trademarks and Unfair 

Competition § 8:5 (5th ed.) (hereinafter McCarthy).

The nonfunctionality requirement stops individual 

sellers from permanently monopolizing “functional” designs 

that they have not patented, or for which patents have 

expired. See Qualitex, 514 U.S. at 164–65. Allowing 

competitors to copy such designs has “salutary effects” for 

consumers. TrafFix Devices, Inc. v. Mktg. Displays, Inc.,

532 U.S. 23, 29 (2001). A competitor who copies a product 

might manufacture and distribute it more efficiently, lower 

its price, and make it easier for consumers to buy. See 

Millennium Labs, Inc. v. Ameritox, Ltd., 817 F.3d 1123, 

1127 (9th Cir. 2016).

But what makes a claimed trade dress “functional”? In 

this context, “functionality” is a legal term of art, undefined 

by statute, around which a complicated legal doctrine has 

developed.

1. Utilitarian and Aesthetic Functionality

In TrafFix Devices, Inc. v. Marketing Displays, Inc., the 

Supreme Court split functionality into two types, each with 

its own legal test. 532 U.S. 23, 32–33 (2001). The two types 

are “utilitarian functionality,” which is based on how well 
10 BLUMENTHAL DISTRIB. V. HERMAN MILLER

the product works, and “aesthetic functionality,” which is 

based on how good the product looks. See Au-Tomotive 

Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067 

(9th Cir. 2006) (‘“utilitarian’ functionality . . . relates to the 

performance of the product in its intended purpose); see id.

at 1073–74 (aesthetic functionality is based on “‘intrinsic’ 

aesthetic appeal”). If the claimed trade dress has either type 

of functionality, it is unprotectable. See id. at 1072.

A claimed trade dress has utilitarian functionality if it is

essential to the use or purpose of a product or affects its cost 

or quality. See Millennium, 817 F.3d at 1127–28 (citing 

Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 

(1982)). To determine whether this definition is satisfied, we 

use the four-factor test from Disc Golf Association, Inc. v. 

Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998). See 

Millennium, 817 F.3d at 1129. The Disc Golf factors are: 

“(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.” Id. at 1128 (quoting Disc Golf, 158 F.3d at 

1006). “No one factor is dispositive; all should be weighed 

collectively.” Id. at 1130 (quoting Disc Golf, 158 F.3d 

at 1006).

A claimed trade dress has aesthetic functionality if it 

serves “an aesthetic purpose wholly independent of any 

source identifying function,” such that the trade dress’s 

protection under trademark law “would impose a significant 

non-reputation-related competitive disadvantage” on its 

owner’s competitors. Id. at 1129, 1131 (quoting AuTomotive Gold, 457 F.3d at 1072, 1073). This requirement 

aims to ensure that trademark law protects fair competition 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 11

between sellers, and does not sanction sellers’ poaching their 

competitors’ superior reputations. See Au-Tomotive Gold,

457 F.3d at 1073–74. Thus, the inquiry is whether, if 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 (e.g., 

the alternative designs would not have as much intrinsic 

aesthetic appeal). If such competitive disadvantages would 

be significant, then this second requirement for aesthetic 

functionality is satisfied.

2. Functionality of Overall Appearances

A plaintiff may define its claimed trade dress as the 

“overall appearance” of its product.1In principle, such 

claimed trade dresses are subject to the tests for utilitarian 

and aesthetic functionality, just like any other claimed trade 

dresses. However, when the claimed trade dress is an 

“overall appearance,” these tests must be applied with extra 

care to prevent “semantic trickery” from obscuring the 

functionality of the design the plaintiff seeks to monopolize. 

See Secalt, 668 F.3d at 684 (quoting Leatherman, 199 F.3d 

at 1013). For example, if a particular combination of 

1 The scope of a “registered” claimed trade dress is defined by the 

seller in a registration filed with the United States Patent And Trademark 

Office, while the scope of an “unregistered” claimed trade dress, which 

does not depend on any registration, is typically defined through 

litigation. Compare Talking Rain Beverage Co. v. S. Beach Beverage 

Co., 349 F.3d 601, 602–03 (9th Cir. 2003) (trademark plaintiff claiming 

registered trade dress in federally registered bottle design), with Clicks 

Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1256–57 (9th Cir. 

2001) (trademark plaintiff claiming unregistered trade dress in a series 

of individual features of its billiard halls).
12 BLUMENTHAL DISTRIB. V. HERMAN MILLER

functional features is itself functional, referring to that layout 

of features as the “overall appearance” of a product does not

render it nonfunctional.

We have consistently held that, as a matter of law, a 

product’s “overall appearance” is functional, and thus 

unprotectable, where the whole product is “nothing other 

than the assemblage of functional parts,” and “even the 

arrangement and combination” of those parts is designed to 

make the product more functional. Leatherman, 199 F.3d at 

1013 (9th Cir. 1999); see also Tie Tech, Inc. v. Kinedyne 

Corp., 296 F.3d 778, 786 (9th Cir. 2002); Secalt, 668 F.3d 

at 687. Thus, if everything that affects a product’s 

appearance is functional, then its overall appearance is also 

functional. For example, in Leatherman, we held that the 

overall appearance of a multi-function pocket tool was not 

protectable as trade dress because there was no evidence that 

anything about its appearance—either its individual parts or 

their arrangement and combination—existed for any 

nonfunctional purpose. 199 F.3d at 1013.

Consistent with that rule, we have also held that the 

proper standard for whether a claimed trade dress consisting 

of an “overall appearance” is functional is whether 

“protecting the trade dress threatens to eliminate a 

substantial swath of competitive alternatives in the relevant 

market.” Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 

1252, 1261 n.5 (9th Cir. 2001) (quoting Taco Cabana Int’l, 

Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1119 n.6 (5th Cir. 

1991)). For example, in Clicks Billiards, we held that the 

plaintiff pool hall restaurant’s asserted trade dress in its total 

visual appearance, “examined as a whole,” was 

nonfunctional, noting that protecting that trade dress would 

leave a multitude of alternatives to the pool hall industry. Id.

at 1258–62; see also, e.g., Millennium, 817 F.3d at 1130–31 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 13

(evaluating the functionality of a graphical format of 

presenting data by looking to the “overall visual impression 

that the combination and arrangement” of its elements 

creates (quoting Clicks Billiards, 251 F.3d at 1259)).

HM argues that, because the examination must be 

holistic, the functionality of individual features is irrelevant. 

But that “cannot be the case.” Tie Tech, 296 F.3d at 785–86. 

Examining a product “as a whole” does not require any 

strained effort to look at its gestalt without seeing its 

individual features. Rather, to examine a product “as a 

whole” is to examine all of its features, including the ways 

in which its various parts are combined or arranged, and to 

recognize that nonfunctional combinations or arrangements 

of functional parts can create an overall appearance that 

should be deemed nonfunctional. See Leatherman, 199 F.3d 

at 1011 n.3, 1013.

B. The Eames Chairs

Against this legal backdrop, we now address the specific 

functionality-related issues on appeal, beginning with the 

Eames chairs. OSP argues that HM’s claimed EAMES trade 

dresses are functional (and thus unprotectable) as a matter of 

law. We review the issue de novo, determining “whether the 

evidence, construed in the light most favorable to the 

nonmoving party, permits only one reasonable conclusion, 

and that conclusion is contrary to that of the jury.” Estate of 

Diaz v. City of Anaheim, 840 F.3d 592, 604 (9th Cir. 2016) 

(citation and internal quotation marks omitted).

OSP argues that the Eames chairs’ overall appearances 

should be found functional as a matter of law because: (i) the 

undisputed fact that the chairs have some utilitarian 

functionality proves their overall appearances functional; 

and (ii) the utilitarian functionality of the chairs’ various 
14 BLUMENTHAL DISTRIB. V. HERMAN MILLER

features proves their overall appearances functional under 

the Disc Golf factors. Both arguments fail.

OSP’s first argument—that the chairs’ overall 

appearances are functional “because they include, in whole 

or in part, elements that are functional” (emphasis added)—

is a nonstarter. As we have long held, a product’s overall 

appearance is necessarily functional if everything about it is 

functional, not merely if anything about it is functional. See 

Clicks Billiards, 251 F.3d at 1259; Leatherman, 199 F.3d at 

1011 n.3, 1013. OSP’s proposed rule would wipe out 

trademark protection for all, or at least virtually all, 

consumer products’ overall appearances. For instance, every 

chair’s appearance is affected by having a backrest, as 

opposed to having no backrest, which serves the utilitarian 

function of providing back support. But that does not mean 

that every chair’s overall appearance is functional as a matter 

of law.

OSP’s second argument is that the Eames chairs’ overall 

appearances are functional as a matter of law because they 

have utilitarian functionality under the Disc Golf factors. 

Significantly, OSP argued in its opening brief that “aesthetic 

functionality . . . is not an issue in this case,” and “only” the 

test for utilitarian functionality “is relevant.” Thus, we limit 

our analysis to the consideration of utilitarian functionality 

and hold that the utilitarian functionality of the Eames 

chairs’ various features does not make the chairs’ overall 

appearances functional as a matter of law.

The Eames chairs are nothing like the thoroughly 

utilitarian products whose overall appearances were held 

functional as a matter of law in Leatherman (a pocket-knifelike tool), Tie Tech (a tool used in emergencies to quickly 

cut people out of wheelchairs), and Secalt (a piece of 

industrial machinery called a “traction hoist”). In each of 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 15

those cases, the product’s “form . . . follow[ed] its 

[utilitarian] function[s],” Secalt, 668 F.3d at 687, and there 

was no evidence of any non-utilitarian design choices. See 

Leatherman, 199 F.3d at 1013; Secalt, 668 F.3d at 686; Tie 

Tech, 296 F.3d at 786. In the present case, however, HM 

introduced abundant evidence that the Eames chairs’ overall 

appearances derive from non-utilitarian design choices.

The jury was shown images of the Eames chairs, from 

which it could have reasonably inferred that the chairs were 

designed largely to be distinctive and/or beautiful, even at 

some expense to their “utilitarian advantage,” Disc Golf, 

158 F.3d at 1006. For example, the jury could have 

reasonably concluded that the metal trapezoidal design of the 

Eames chairs’ armrests was motivated by design 

considerations, at the expense of the comfort that a softer 

surface could have provided.

HM’s expert furniture historian testified that the Eames 

chairs’ designers, Charles and Ray Eames, were “always 

working to find the exact right look of something” and “were 

as much sculptors as they were designers.” He also testified 

that the “aesthetics were one of the most important 

considerations” in the Thin Pad Eames chairs’ design and 

that the Soft Pad Eames chairs were “iconic pieces” whose 

“visual or aesthetic impact” was “significant.” A program 

manager for HM testified that he was not aware of any 

utilitarian purpose for several features of the Eames chairs, 

including the specific trapezoidal shape of the armrests, the 

one-piece construction of the seat and the back, and the 

specific horizontal stitching of the Thin Pad upholstery. 

HM’s industrial design expert also testified that those three 

features (among others) lacked utilitarian function and that 

their purposes were aesthetic. He also testified that the 
16 BLUMENTHAL DISTRIB. V. HERMAN MILLER

“overall design” of the Eames chairs is “distinctive and is 

not functional.”

A reasonable jury could have concluded that the 

remaining Disc Golf factors also showed utilitarian 

functionality. HM introduced testimony suggesting that a 

variety of alternative designs could have achieved the Eames 

design’s functional advantages, so competitors would not be 

unreasonably limited in their chair design options if the 

Eames trade dress were protected. HM also introduced 

advertising materials that emphasized the Eames chairs’ 

distinctive appearances through large, artistic photographs 

and statements touting their appearances as “unmistakable,” 

“bear[ing] the distinctive stamp of Charles and Ray Eames,” 

and being “totally different” from other chairs. And HM 

introduced some testimony suggesting that at least some of 

the manufacturing techniques it employed required 

specialized technical equipment.

OSP’s rebuttal to all of this evidence did not compel a 

different conclusion. For example, OSP attempts to show 

that the armrests’ trapezoidal shape has utilitarian 

functionality because it enables the “armrests to be attached 

to the [rest of the chair] at three points” rather than two 

points, but cites no evidence that the extra point of 

attachment has any utilitarian benefit. Similarly, OSP argues 

that the armrests’ rounded corners have utilitarian 

functionality because they “provide greater safety as 

compared to sharp corners,” but cites no evidence that the 

roundness of the corners was ever intended, advertised, or 

perceived as a safety feature. Thus, we reject OSP’s 

argument that the utilitarian functionality of the Eames 

chairs’ component parts renders their overall appearances 

functional as a matter of law.
BLUMENTHAL DISTRIB. V. HERMAN MILLER 17

C. The Aeron Chair

In a cross-appeal, HM challenges the judgment that its 

claimed AERON trade dresses were functional and thus 

unprotectable. HM argues that there must be a new trial 

because Jury Instruction 25 (the “Functionality Instruction”) 

used an erroneously broad definition of functionality. “We 

review a district court’s formulation of civil jury instructions 

for abuse of discretion, but we review de novo whether an 

instruction states the law correctly.” Peralta v. Dillard, 

744 F.3d 1076, 1082 (9th Cir. 2014) (en banc) (citations 

omitted).

HM’s challenge focuses on the following excerpt from 

the Functionality Instruction:

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.

We agree with HM that this excerpt misstates the law. It is 

not true that being “part of the actual benefit that consumers 

wish to purchase when they buy the product” is proof that a 

feature is functional. Indeed, we have stated that “the mere 

fact that [a] mark is the ‘benefit that the consumer wishes to 

purchase’ will not” suffice to establish its functionality. AuTomotive Gold, 457 F.3d at 1069 (emphasis added) (citation 

omitted); see also id. at 1073 ((rejecting suggestion that 

trademarks are functional when “the trademarks 
18 BLUMENTHAL DISTRIB. V. HERMAN MILLER

‘constitute[ ] the actual benefit the consumer wishes to 

purchase’” because it “flies in the face of existing caselaw” 

(alteration in original)). And the instruction does not capture 

the concepts, explained above, that a feature that provides a 

utilitarian benefit is not functional unless the Disc Golf 

factors weigh in favor of finding it so; or that a feature that 

provides an aesthetic benefit is not functional unless that 

benefit is wholly independent of any source-identifying 

function and the feature’s protection would put competitors 

at a significant non-reputation-related disadvantage. See 

Millennium, 817 F.3d at 1128–29. Due to this inaccuracy, 

the instructions, viewed as a whole, do not “fairly and 

correctly cover[]” the law of functionality. See Frost v. 

BNSF Ry. Co., 914 F.3d 1189, 1194 (9th Cir. 2019) (quoting 

Miller v. Republic Nat’l Life Ins. Co., 789 F.2d 1336, 1339 

(9th Cir. 1986)).

“An error in instructing the jury in a civil case requires 

reversal unless the error is more probably than not 

harmless.” Clem v. Lomeli, 566 F.3d 1177, 1182 (9th Cir. 

2009) (citation omitted). Because such errors are presumed 

harmful, the “burden shifts to the [prevailing party] to 

demonstrate that it is more probable than not that the jury 

would have reached the same verdict had it been properly 

instructed.” Id. (citation omitted). OSP did not address the 

issue of harmfulness in its answering brief, and thus did not 

overcome the presumption of harmfulness. See id.

Consequently, the error in the Functionality Instruction 

requires reversal and remand for a new trial on HM’s Aeronrelated claims.2

2 Without commenting on the merits of the issue, we vacate the 

district court’s ruling that the unregistered claimed AERON trade dress 

possesses secondary meaning as a matter of law, so that all of the issues 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 19

We recognize that the district court appears to have 

derived the Functionality Instruction from Ninth Circuit 

Model Civil Jury Instruction 15.12. But because that 

instruction does not accurately track our functionality 

caselaw, see Millennium, 817 F.3d at 1128–29; Au-Tomotive 

Gold, 457 F.3d at 1072 & n.8, its use was error and we must 

reverse. See United States v. Warren, 984 F.2d 325, 327 n.3 

(9th Cir. 1993) (“Use of a model jury instruction does not 

preclude a finding of error.”).

III. Fame

We now turn our focus to HM’s cause of action for 

dilution of its claimed EAMES trade dresses. To prevail on 

dilution, HM was required to prove that those claimed trade 

dresses were “famous” before OSP began selling its accused 

chairs. See 15 U.S.C. § 1125(c)(1). OSP challenges the 

district court’s denial of its Rule 50(b) motion, in which OSP 

argued that the evidence of the claimed EAMES trade 

dresses’ fame was legally insufficient.

From 1996 to 2006, the standard for determining fame 

was based on the Federal Trademark Dilution Act of 1995 

(“FTDA of 1995”), an amendment to the Lanham Act that 

set out a non-exhaustive list of eight factors that courts “may 

consider.” See Pub. L. No. 104-98, § 3(a), 109 Stat. 985 

(1996). We interpreted that statute to recognize two kinds of 

fame: fame within “only a limited geographic area or a 

specialized market segment” (or “niche fame”) and “fame 

among the general consuming public.” Thane Int’l, Inc. v. 

Trek Bicycle Corp., 305 F.3d 894, 908, 911 (9th Cir. 2002). 

related to HM’s Aeron-related claims can be decided in the new trial. See 

Pumphrey v. K.W. Thompson Tool Co., 62 F.3d 1128, 1133–34 (9th Cir. 

1995).
20 BLUMENTHAL DISTRIB. V. HERMAN MILLER

The FTDA of 1995 was replaced by the Trademark Dilution 

Revision Act of 2006 (“TDRA of 2006”), which eliminated 

the concept of niche fame, defining fame as being “widely 

recognized by the general consuming public of the United 

States as a designation of source of the goods or services of 

the mark’s owner,” 15 U.S.C. § 1125(c)(2)(A) (emphasis 

added), and omitting from its list of suggested factors the 

two from the FTDA of 1995 that related to niche markets.3

Thus, niche fame can no longer make a trademark eligible 

for protection against dilution; instead, the trademark must 

be “widely recognized by the general consuming public of 

the United States.” Id.

While the FTDA of 1995 was still in effect, we decided 

Thane, in which we applied a very high standard for 

establishing fame among the general consuming public. The 

issue in that case was whether a stationary exercise machine 

producer’s “OrbiTrek” mark infringed the Trek Bicycle 

Corporation’s “TREK” mark. We held that the requisite 

level of fame was that of “a household name.” Thane, 

305 F.3d at 911. The mark must be in a “select class” of 

those that are “truly prominent and renowned” and “part of 

the collective national consciousness.” Id. at 911–12 (first 

and second quoting Avery Dennison Corp. v. Sumpton, 

189 F.3d 868, 875 (9th Cir. 1999)). We held that Trek had 

failed as a matter of law to establish “household name” fame 

of its TREK mark, even though the mark was registered; the 

company spent “between $3 million and $5 million per year” 

3 The two omitted niche-related factors were “the channels of trade 

for the goods or services with which the mark is used” and “the degree 

of recognition of the mark in the trading areas and channels of trade used 

by the mark’s owner and the person against whom the injunction is 

sought.” See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875–78 

(9th Cir. 1999).
BLUMENTHAL DISTRIB. V. HERMAN MILLER 21

on advertising, including in mainstream publications such as 

Rolling Stone Magazine, Playboy, and Men’s Journal; had 

around 4.5 million visitors to its website per year; made over 

1,000 different products with the TREK mark that were sold 

by over 1,600 independent dealers in 2,000 locations across 

the nation; and sponsored superstar Lance Armstrong, who 

used TREK bicycles to win multiple Tour de France races, 

and appeared with a TREK bicycle on the front page of large 

circulation newspapers, at a press event with a sitting 

President, and even on a Wheaties box. Id. at 899, 912.

In holding that Trek Bicycle Corporation failed to make 

the necessary “showing of the requisite level of fame” for its 

mark, id. at 911, we reasoned that “incidental media 

coverage,” such as that connected to Lance Armstrong, did 

not “by itself constitute evidence” that the mark was famous, 

because “[m]any products receive broad incidental media 

coverage.” Id. at 912. We also reasoned that “[a]dvertising 

to a mass audience is not the same as achieving fame with a 

mass audience and, by themselves, such advertisements 

prove only that Trek desires widespread fame, not that it has 

achieved it.” Id. at 912 n.13. “On the other hand,” we 

explained, “surveys showing that a large percentage of the 

general public recognizes the brand, press accounts about the 

popularity of the brand, or pop-culture references involving 

the brand would provide evidence of fame.” Id. at 912.

Although Thane interpreted the FTDA of 1995, we do 

not interpret the TDRA of 2006 to have lowered the standard 

for whether a mark “has achieved fame among the general 

consuming public.” Id. at 911; see Coach Servs., Inc. v. 

Triumph Learning LLC, 668 F.3d 1356, 1372–73 (Fed. Cir. 

2012) (“By using the ‘general consuming public’ as the 

benchmark, the [TDRA of 2006] eliminated the possibility 

of ‘niche fame’ . . . . In other words, a famous mark is one 
22 BLUMENTHAL DISTRIB. V. HERMAN MILLER

that has become a ‘household name.’”); see also McCarthy 

§ 24:104. Applying Thane’s standard, we conclude that HM 

fell short of its burden to supply legally sufficient evidence 

of the fame of the claimed EAMES trade dresses.

Taken in the light most favorable to HM, the evidence 

establishes only that: HM spent, on average, $550,000 per 

year on advertising the Eames chairs from 2004 through 

2015 (and under $400,000 per year from 2004 through 

2009); the Eames chairs appeared in obscure publications 

such as Contract, Metropolis, and an “industry publication” 

called Monday Morning Quarterback; at the time of trial in 

2016, HM had, at the very most, around 875,000 unique 

followers on Facebook, Twitter, and Instagram combined; 

most of the Eames chairs are sold through a distribution 

channel consisting of only around 45 independently owned 

dealers with 130 locations across the country; and the Eames 

chairs were “very heavily” featured in the TV show Mad 

Men, have appeared in other TV shows and movies, and have 

been exhibited at several American museums, including the 

Museum of Modern Art and the Henry Ford Museum. 

Because the evidence of the claimed EAMES trade dresses’ 

fame is plainly weaker than the evidence that Thane held 

legally insufficient, we must hold that, as a matter of law, 

those trade dresses were not famous.

HM’s efforts to avoid Thane’s demanding standard fail. 

In Horphag Research Ltd. v. Garcia, a case on which HM 

relies to suggest a more modest standard, the appellant did 

not raise the issue of whether any mark was sufficiently 

famous, so we neither considered nor decided that issue. See

475 F.3d 1029, 1036, 1038 (9th Cir. 2007). HM also argues 

that we should not disturb the jury’s finding that the claimed 

EAMES trade dresses were famous because OSP did not 

object to the relevant jury instruction. But, even if the 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 23

instructions accurately stated the law, the legal question 

before us is whether HM offered evidence sufficient to allow 

a reasonable jury to conclude that the EAMES trade dress 

met the definition of fame. That legal definition, which we 

explicated in Thane, is fatal to HM’s dilution claims.4

Because there was legally insufficient evidence to find 

that the claimed EAMES trade dresses were famous under 

15 U.S.C. § 1125(c)(2)(A), the judgment against OSP for 

their dilution must be reversed.

IV. CONCLUSION

Based on this opinion and the simultaneously filed 

memorandum disposition, we affirm the judgment in favor 

of HM on its causes of action for the infringement of its 

registered and unregistered claimed EAMES trade dresses. 

We reverse the judgment in favor of HM on its cause of 

action for dilution.

We reverse the portion of the judgment regarding the 

Aeron chair in its entirety, and remand for a new trial.

AFFIRMED in part, REVERSED in part and 

REMANDED.

4 Although focusing on some practical differences between trade 

names and trade dresses, the dissent correctly recognizes that a dilution 

claim requires that the general consuming public recognize either type 

of mark “as a designation of source of the goods or services of the mark’s 

owner.” 15 U.S.C. § 1125(c)(2)(A). Even assuming that the shape of the 

Eames chair is more recognizable than the name “Trek,” there 

nonetheless was no basis from which the jury could reasonably infer that 

the general consuming public would link all Eames-shaped chairs to a 

single source of goods.
24 BLUMENTHAL DISTRIB. V. HERMAN MILLER

FRIEDLAND, Circuit Judge, concurring in part and 

dissenting in part:

Although I join most of the majority’s opinion, I disagree 

with the conclusion that there was insufficient evidence to 

sustain the jury’s verdict in favor of Herman Miller (“HM”) 

on its claim for dilution of its EAMES trade dresses. I 

therefore dissent as to Part III.

A jury’s verdict must be sustained on a renewed motion 

for judgment as a matter of law unless “the evidence, 

construed in the light most favorable to the nonmoving party, 

permits only one reasonable conclusion, and that conclusion 

is contrary to the jury’s verdict.” Harper v. City of Los 

Angeles, 533 F.3d 1010, 1021 (9th Cir. 2008) (quoting 

Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir. 2002)). Only 

in “rare cases” should we overturn a jury’s verdict under this 

deferential standard. Barnard v. Theobald, 721 F.3d 1069, 

1076 (9th Cir. 2013). This is not such a case.

For HM to prevail on its dilution claim, the jury was 

required to find that the EAMES trade dresses were 

sufficiently “famous”—that is, that they were “widely 

recognized by the general consuming public of the United 

States as a designation of source of the goods or services” of 

the trade dress owner. 15 U.S.C. § 1125(c)(2)(A). A trade 

dress is famous when the general consuming public 

recognizes the trade dress as associated with a singular 

owner; as is true throughout trademark law, whether the 

general consuming public could name that owner is 

irrelevant. See Maljack Prods., Inc. v. GoodTimes Home 

Video Corp., 81 F.3d 881, 887 (9th Cir. 1996) (explaining 

that the secondary meaning of a mark is established through 

proof that the public associates the mark “with a single 

source, even if that source is anonymous”); 1 J. Thomas 

McCarthy, McCarthy on Trademarks and Unfair 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 25

Competition § 3:12 (5th ed.) (explaining that “[a] trademark 

can identify a single, albeit anonymous source,” such that a 

buyer need not know “the corporate name of the producer or 

seller” (emphasis added)).

At trial, the jury heard expert testimony that Eames Thin 

Pad and Soft Pad chairs were “iconic” pieces that “had 

significant impact on the design world.” HM experts opined 

that the Eames chairs were “ubiquitous” in conference rooms 

and were often used as seating in lobbies or in other public 

spaces within office environments. Expert testimony further 

established that Eames chairs were depicted in “countless 

TV shows,” including the long-running series “Mad Men,” 

and in blockbuster movies. And the chairs were featured in 

“any museum in the United States” with “a collection of 

design.”

Construed in the light most favorable to HM, this 

evidence was sufficient to support the jury’s verdict. The 

jury was entitled to deem HM’s experts credible and to infer 

from their testimony that the general consuming public had 

become familiar with the Eames chairs through encounters 

in business environments, pop culture, and museums. And 

because HM presented evidence that the Eames chairs had a 

distinctive design, the jury was entitled to find that the 

consuming public recognized trade dresses central to that 

design as a signature of chairs made by a leading furniture 

manufacturer, even if they could not specifically name HM 

as that manufacturer. Although this was not the only finding 

the jury could have made based on the evidence, it was a 

reasonable one.

The majority’s contrary conclusion stems largely from a 

side-by-side comparison with the facts of Thane 

International, Inc. v. Trek Bicycle Corp., 305 F.3d 894 

(9th Cir. 2002), in which we held that the evidence at 
26 BLUMENTHAL DISTRIB. V. HERMAN MILLER

summary judgment was insufficient to establish that the Trek 

Bicycle Corporation’s “TREK” mark was famous enough to 

support a claim for dilution. Id. at 910–12. We noted that 

the “closest” Trek came to demonstrating recognition by “a 

large portion of the general consuming public” was to 

produce evidence depicting Lance Armstrong with a Trek 

bicycle on newspaper front pages and Wheaties boxes. Id. 

at 912. In so observing, we relatedly indicated that the other 

evidence in the record—such as the company’s $3 to 

$5 million in advertising expenditures, 4.5 million website 

visitors, and robust commercial sales—was insufficient to 

support a finding of fame. See id. at 899, 912.

There is stronger evidence here than there was in Thane 

of actual consumer recognition: the Eames chairs were 

“ubiquitous” in office environments and depicted in 

“countless” TV shows and movies. And the Eames chairs 

had an “iconic,” visually striking design deemed worthy of 

museum displays, whereas in Thane “TREK” was a nondistinctive four-letter term with multiple meanings. See id.

at 912 n.14 (explaining that “trek” is a “common English 

language word” used to refer to concepts and products other 

than Trek bicycles). Yet the majority nonetheless seems to 

require HM and its Eames chairs to have greater advertising 

expenditures, a more significant web presence, or a higher 

volume of commercial sales than Trek bicycles for there to 

be sufficient evidence supporting the EAMES trade dresses’ 

fame. See Maj. Op. at 22.

In my view, the majority’s analysis is misguided. It is 

not surprising that we concluded in Thane that Trek’s 

evidence was insufficient to prove the fame of the “TREK” 

mark. Given that the “TREK” mark was a non-distinctive 

word that received only some “incidental media coverage,” 

Thane reasonably suggested that consumers would not have 
BLUMENTHAL DISTRIB. V. HERMAN MILLER 27

recognized the mark absent more sales, more advertising, or 

more Internet engagement that familiarized the general 

public with the mark. See Thane, 305 F.3d at 912. But that 

conclusion has little bearing on what was required to cause 

the general public to recognize the trade dresses at issue 

here. Unlike the nondescript word “TREK,” the EAMES 

trade dresses consisted of a distinctive product design that 

the jury could have inferred was memorable to many 

consumers who saw the chairs. While members of the public 

can consume products or encounter advertisements for 

products without focusing on the marks they feature, it 

would be difficult for consumers to interact with a product 

without forming an impression of its overall appearance (its 

dress)—particularly when that appearance is distinctive.

Moreover, while the media portrayals of “TREK” did 

little to raise the mark’s profile, HM presented evidence that 

the general consuming public became familiar with the 

EAMES trade dresses through the chairs’ being widely 

depicted in pop culture, displayed in museums, and featured 

in business environments. And HM’s evidence suggested 

that, far from being “incidental,” see id., the design aspects 

of the Eames chairs—including their trade dresses—were 

the very reason the chairs were popular in business 

environments and displayed in museums. From this 

evidence, the jury could have concluded that many 

consumers who saw the chairs featured in such settings took 

note of them and their distinctive designs. By contrast, in 

Thane, the central focus of the Wheaties boxes and the 

newspaper stories was Lance Armstrong—not the mark on 

his bike, which consumers could easily have overlooked.

Accordingly, the jury could have inferred that a higher 

level of advertising or sales exposure was not required to 

render the Eames chairs’ design widely recognizable. Even 
28 BLUMENTHAL DISTRIB. V. HERMAN MILLER

if too few Eames chairs were sold for them to be present in 

most households or offices, and even if there was too little 

advertising for it to reach the average consumer, HM’s 

evidence nevertheless allowed the jury to conclude that 

many individual chairs reached a wide audience and were 

recognized on account of their distinctive design.1

In sum, HM’s failure to satisfy the metrics the majority 

identifies did not preclude the jury from finding that its trade 

dresses were famous. To the contrary, as Thane itself 

recognized, evidence of a trade dress’s cultural significance 

may provide evidence of fame. Id. at 912. In my view, HM 

introduced sufficient evidence of such significance to render 

the question of fame one for the jury. This is not one of the 

“rare cases” in which we should disturb the jury’s 

conclusion. See Barnard, 721 F.3d at 1076.

1

In overturning the jury’s fame finding, the majority also appears to 

rely on the fact that the number of people who follow HM on social 

media is lower than the number of people who visited Trek Bicycle’s 

website. See Maj. Op. at 21, 22–23. But there was no need for HM to 

present evidence of a high level of social media engagement with HM 

itself, given that the question whether the EAMES trade dresses were

widely recognized as a “designation of source,” see 15 U.S.C. 

§ 1125(c)(2)(A), does not depend on consumers’ actually being able to 

name HM as the source of those trade dresses, see Maljack Prods., 

81 F.3d at 887.