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Heller Inc. v. Design Within Reach

August 14, 2009

HELLER INCORPORATED, PLAINTIFF,
v.
DESIGN WITHIN REACH, INC., DEFENDANT.



The opinion of the court was delivered by: John G. Koeltl, District Judge

MEMORANDUM OPINION AND ORDER

The plaintiff, Heller Incorporated ("Heller"), has sued the defendant, Design Within Reach, Inc. ("DWR"), for various claims including trademark dilution and trade dress infringement, in violation of the Lanham Act § 43, 15 U.S.C. § 1125 and New York General Business Law § 360-l. The defendant moves pursuant to Federal Rules of Civil Procedure 12(b)(6) to dismiss some, but not all of the claims.

I.

On a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), the allegations in the Complaint are accepted as true. Grandon v. Merrill Lynch & Co., 147 F.3d 184, 188 (2d Cir. 1998). In deciding a motion to dismiss, all reasonable inferences must be drawn in the plaintiff's favor. Gant v. Wallingford Bd. of Educ., 69 F.3d 669, 673 (2d Cir. 1995); Cosmas v. Hassett, 886 F.2d 8, 11 (2d Cir. 1989). The Court's function on a motion to dismiss is "not to weigh the evidence that might be presented at a trial but merely to determine whether the complaint itself is legally sufficient." Goldman v. Belden, 754 F.2d 1059, 1067 (2d Cir. 1985). The Court should not dismiss a claim if the plaintiff has stated "enough facts to state a claim to relief that is plausible on its face." Twombly v. Bell Atl. Corp., 550 U.S. 544, 570 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009).

In deciding the defendant's motion to dismiss, the Court may consider documents attached to the Complaint or incorporated in it by reference, matters of which judicial notice may be taken, or documents that the plaintiff relied upon in bringing suit and either are in its possession or of which it had knowledge. See Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2000); see also Jofen v. Epoch Biosciences, Inc., No. 01 Civ. 4129, 2002 WL 1461351, at *1 (S.D.N.Y. July 8, 2002).

While the Court should construe the factual allegations in the light most favorable to the plaintiff, "the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions." Iqbal, 129 S.Ct. at 1940; see also Port Dock & Stone Corp. v. Oldcastle Ne., Inc., 507 F.3d 117, 121 (2d Cir. 2007); Smith v. Local 819 I.B.T. Pension Plan, 291 F.3d 236, 240 (2d Cir. 2002).

II.

The Court accepts the following factual allegations for the purposes of this motion. The plaintiff is a New York corporation with its principal place of business in New York. (Compl. ¶ 5.) The plaintiff is an international manufacturer, distributor, and wholesale and retail seller of furniture with production facilities in the United States and Europe. (Compl. ¶ 7.) In 1998, Mario Bellini, an Italian designer, designed an "ornamental and sculptural" chair known as the "Bellini Chair," for the plaintiff. (Compl. ¶ 8; Exs. A and C.) The plaintiff has continuously manufactured, promoted, and sold the Bellini Chair since 1998. (Compl. ¶ 9.) The Bellini Chair has won several prestigious 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. (Compl. ¶ 10.) Since 1998, the plaintiff has sold more than 180,000 units of the Bellini Chair, generating sales of over $9 million. (Compl. ¶ 11.) The plaintiff asserts that the design of the Bellini Chair has attained secondary meaning among the trade and the public as being identified exclusively with the plaintiff. (Compl. ¶ 12.)

On July 31, 2007, the United States Patent and Trademark Office ("USPTO") issued a registration for the design of the Bellini Chair to the plaintiff under Trademark Registration No. 3,270,850 (the "trademark"). (Compl. ¶ 13; Ex. A.) The plaintiff asserts that the USPTO recognized the secondary meaning of the design by issuing the trademark. (Compl. ¶ 13.) In support of the plaintiff's assertion of secondary meaning, Robert Forbes, the founder and former director of the defendant, submitted a declaration to the USPTO on behalf of the plaintiff in 2006 stating his opinion that "the relevant public interested in contemporary furniture understands the source of the Bellini Chair to be Heller Design, Inc." (Compl. ¶ 14; Ex. B.) Heller Design, Inc. was the former name of the plaintiff. (Compl. ¶ 14.)

The defendant is a Delaware corporation with its principal place of business in San Francisco, California. (Compl. ¶ 6.) The defendant operates retail furniture stores throughout the United States, including in New York. (Compl. ¶ 15.) In 1999, the defendant began selling Heller's Bellini Chair through its retail stores, catalog and the Internet and was the plaintiff's largest retail customer for the Bellini Chair for several years. (Compl. ¶¶ 16-17.)

The plaintiff alleges that the defendant recently began selling a chair that is confusingly similar to the Bellini Chair (the "DWR Chair"). (Compl. ¶ 2; Ex. D.) The plaintiff claims that the DWR Chair is identical to the Bellini Chair except for a small crescent-shaped opening in the back of the chair. (Compl. ¶¶ 18-19; Exs. C and D.) The plaintiff further alleges that the defendant has knowingly, willfully, intentionally and maliciously imitated the Bellini Chair trademark and trade dress. (Compl. ¶ 26.) The plaintiff believes that potential customers will mistakenly attribute the DWR Chair to the plaintiff based on the secondary meaning the Bellini design has achieved. (Compl. ¶¶ 23-25.) The DWR chair has a lower retail price than the Bellini Chair, and the plaintiff alleges that it is of inferior quality. (Compl. ¶ 22.) Furthermore, the plaintiff believes that the alleged inferior quality of the DWR chair may damage the goodwill and high-quality reputation of the plaintiff with respect to its Bellini Chair. (Compl. ¶¶ 23-25.)

III.

The plaintiff alleges nine causes of action in the Complaint, four of which are at issue in this partial motion to dismiss. First, the plaintiff asserts a federal dilution claim as to the Bellini Chair trademark. (See Compl. ¶¶ 44-48 (Pl.'s Fourth Claim for Relief.)) Second, the plaintiff asserts three claims related to the Bellini Chair trade dress, namely: federal unfair competition, state injury to business reputation, and common law trade dress infringement and unfair competition. (See Compl. ¶¶ 38-43, ...


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