                    FOR PUBLICATION

   UNITED STATES COURT OF APPEALS
        FOR THE NINTH CIRCUIT


 BLUMENTHAL DISTRIBUTING, INC.,               Nos.    18-56471
 DBA Office Star,                                     18-56493
     Plaintiff-Counter-Defendant-
        Appellant/Cross-Appellee,                 D.C. No.
                                               5:14-cv-01926-
                   v.                             JAK-SP

 HERMAN MILLER, INC.,
    Defendant-Counter-Claimant-                   OPINION
       Appellee/Cross-Appellant.

        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 judge 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-Defendant-
Appellant/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-and-
desist 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 Wal-
Mart 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 Au-
Tomotive 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.1 In 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-knife-
like 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 non-
       functional.

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. Au-
Tomotive 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 Aeron-
related 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 non-
distinctive 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.
