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

Herman Miller, Inc. v. Blumenthal Distributing, Inc., 2019
WL 1416472, No. LA CV17-04279 JAK (SPx) (C.D. Cal. Mar. 3, 2019)
Lots of stuff going on here. 
Herman Miller sued Blumenthal for infringing on the trade dress of one
of its office chairs, the Caper, with a “distinctive bowler-hat-like backrest.”  The court found a factual issue on
nonfunctionality, relying in part on the existence of design patents as
evidence of nonfunctionality even though that’s not right given the mismatch
between “functionality” for design patent and “functionality” for trademark
purposes.  The court found the other
evidence also admitted of different interpretations—the advertising touted
functional benefits, but a jury could find that the particular configuration of
the whole chair, especially the specific perforations in the backrest, was
distinctive and nonfunctional.

Caper chair

accused designs
Herman Miller whinily argued that it had applied to register
the trade dress, had the application published for opposition, and then had been opposed
by defendant.  If not for defendant’s
opposition, then the registration would have issued and Herman Miller would
have a presumption of validity/nonfunctionality in this infringement litigation.  So, Herman Miller reasoned, it should have a presumption of validity
and nonfunctionality.  This argument has
chutzpah, but little else to recommend it. 
As the court noted, the law requires the registration to issue before it
can provide favorable presumptions, and it provides for the mechanism of
opposition to prevent a registration from issuing.
The court also deemed it too late for Herman Miller to add,
after the close of discovery, unfair competition claims based on a defendant’s
alleged use of its reputation as a seller of “knock-off goods” to “position the
accused chairs as substitutes for real Caper chairs,” and that it “target[ed]”
and “interfere[d] with” Herman Miller dealers who were “contractually obligated
to not sell Caper knock-offs.” This was not a trade dress infringement theory
and it came too late.

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