26 - oppn re pi

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DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC sf-3216486

WESLEY E. OVERSON (CA SBN 154737)[email protected] JENNIFER LEE TAYLOR (CA SBN 161368) [email protected] NATHAN B. SABRI (CA SBN 252216) [email protected] JULIA D. KRIPKE (CA SBN 267436) [email protected] MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: 415.268.7000 Facsimile: 415.268.7522

Attorneys for Defendants RESTORATION HARDWARE, INC. and GARY FRIEDMAN

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

EMECO INDUSTRIES, INC.,

Plaintiff,

v.

RESTORATION HARDWARE, INC., GARY FRIEDMAN, and Does 1-10,

Defendants.

Case No. 3:12-cv-5072 MMC

DEFENDANTS RESTORATION HARDWARE AND GARY FRIEDMAN’S OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Date: Dec. 14, 2012 Time: 9:00 a.m. Ctrm: 7 Hon. Maxine M. Chesney

Case3:12-cv-05072-MMC Document26 Filed11/16/12 Page1 of 33

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TABLE OF CONTENTS

Page

DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC isf-3216486

INTRODUCTION .......................................................................................................................... 1

STATEMENT OF FACTS ............................................................................................................. 2

ARGUMENT .................................................................................................................................. 6

I. PLAINTIFF CANNOT DEMONSTRATE LIKELIHOOD OF SUCCESS ...................... 6

A. Plaintiff’s Asserted Rights Are Not Protectable. .................................................... 7

1. Plaintiff’s THE NAVY CHAIR mark and chair trade dress are generic. ........................................................................................................ 8

a. Plaintiff’s THE NAVY CHAIR mark is generic. ........................... 8

b. Plaintiff’s trade dress is generic. ................................................... 10

c. Plaintiff’s trade dress is functional. ............................................... 11

B. Plaintiff Has Not Shown a Likelihood of Confusion. ........................................... 14

1. Key Sleekcraft factors establish that confusion between Plaintiff’s trade dress and trademarks and Restoration Hardware’s chairs is not likely. ......................................................................................................... 15

a. Plaintiff’s trade dress and trademarks are very weak.................... 15

b. There is no evidence of significant actual confusion. ................... 16

c. The parties use different trade channels. ....................................... 17

d. Consumers exercise a high degree of care. ................................... 18

e. Restoration Hardware did not intend to cause confusion with Plaintiff’s chairs. ................................................................... 18

f. The word marks are not sufficiently similar to cause confusion ....................................................................................... 18

2. Defendants’ accused phrases are protected by the defense of fair use. ............................................................................................................ 19

II. PLAINTIFF CANNOT DEMONSTRATE THAT IT IS LIKELY TO SUFFER IRREPARABLE HARM WITHOUT AN INJUNCTION ............................................... 21

III. THE BALANCE OF HARDSHIPS DOES NOT FAVOR ISSUANCE OF A PRELIMINARY INJUNCTION ....................................................................................... 23

IV. THE PUBLIC INTEREST DOES NOT REQUIRE A PRELIMINARY INJUNCTION ................................................................................................................... 25

CONCLUSION ............................................................................................................................. 25


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DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC iisf-3216486

TABLE OF AUTHORITIES

Page(s) CASES

Advertise.com, Inc. v. AOL Adver., Inc., 616 F.3d 974 (9th Cir. 2010) ..................................................................................................... 8

Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127 (9th Cir. 2011) ................................................................................................... 6

Am. Cyanamid Corp. v. Connaught Labs., Inc., 800 F.2d 306, 308 (2d Cir. 1986) .............................................................................................. 8

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) ................................................................................................... 14

Aria Diagnostics, Inc. v. Sequenom, Inc., Case No. C 11-06391 SI, 2012 U.S. Dist. LEXIS 93124 (N.D. Cal. July 5, 2012) .................. 6

Aurora World, Inc. v. TY Inc., 719 F. Supp. 2d 1115 (C.D. Cal. 2009) .................................................................................. 25

Beats Elecs., LLC v. Fanny Wang Headphone Co., Case No. C-10-5680 MMC, 2011 U.S. Dist. LEXIS 2228 (N.D. Cal. Jan. 5, 2011) ............. 18

BoomerangIt, Inc. v. ID Armor, Inc., Case No. 5:12-cv-0920 EJD, 2012 U.S. Dist. LEXIS 86382 (N.D. Cal. June 21, 2012) ....... 21

Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008) ......................................................................................................... 8

Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) ....................................................................................... 6, 18, 21

Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013 (C.D. Cal. 1998) .............................................................................. 16, 17

Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500 (8th Cir. 1987) ................................................................................................... 25

Caribbean Marine Services Co. v. Baldridge, 844 F.2d 668 (9th Cir. 1988) ................................................................................................... 22

Cazet v. Epps, Case No. C 10-02460 JSW, 2010 U.S. Dist. LEXIS 67924 (N.D. Cal. June 11, 2010) ........... 7

Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181 (C.D. Cal. 2007) .................................................................................... 8


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DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC iiisf-3216486

ConocoPhillips Co. v. Gonzalez, Case No. 5:12-cv-00576-LHK, 2012 U.S. Dist. LEXIS 20972 (N.D. Cal. Feb. 17, 2012) ....................................................................................................................................... 21

Cytosport v. Vital Pharm., Inc., 617 F. Supp. 2d 1051 (E.D. Cal. 2009) ................................................................................... 25

Disc Golf Ass’n v. Champion Discs, 158 F.3d 1002 (9th Cir. 1998) ........................................................................................... 12, 14

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) ................................................................................................................ 21

Elantech Devices Corp. v. Synaptics, Inc., Case No. C 06-1839 PVT, 2008 U.S. Dist. LEXIS 116997 (N.D. Cal. Aug. 27, 2008) .......... 6

Entrepreneur Media v. Smith, 279 F.3d 1135 (9th Cir. 2002) ...................................................................................... 14-15, 19

Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165 (C.D. Cal. 2010) ............................................................................. 14-15

Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143 (9th Cir. 1999) ................................................................................................... 7

First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987) ................................................................................................. 16

Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir. 2011) ..................................................................................................... 7

Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993) ................................................................................................. 18

Gen. Conference Corp. of Seventh-Day Adventists v. Seventh-Day Adventists Congregational Church, 887 F.2d 228 (9th Cir. 1989) ..................................................................................................... 7

Genovese Drug Stores v. TGC Stores, 939 F. Supp. 340 (D.N.J. 1996) .............................................................................................. 24

GMT Productions, L.P. v. Cablevision of New York City, Inc., 816 F. Supp. 207 (S.D.N.Y. 1993) ............................................................................................ 8

Groupion, LLC v. Groupon, Inc., 826 F. Supp. 2d 1156 (N.D. Cal. 2011) .................................................................................. 21

Groupion, LLC v. Groupon, Inc., 859 F. Supp. 2d 1067 (N.D. Cal. 2012) .................................................................................. 19


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DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC ivsf-3216486

Henri’s Food Prods. Co. v. Kraft, Inc., 717 F.2d 352 (7th Cir. 1983) ................................................................................................... 17

Heptagon Creations, Ltd. v. Core Grp. Mktg. LLC, 2011 U.S. Dist. LEXIS 147102 (S.D.N.Y. Dec. 22, 2011) ..................................................... 13

Herman Miller Inc. v. Alphaville Design Inc., Case No. C 08-03437 WHA, 2009 U.S. Dist. LEXIS 103384 (N.D. Cal. Oct. 22, 2009) ...... 15

Hypoxico Inc. v. Colorado Altitude Training LLC, Case No. 02 Civ. 6191 (TPG), 2012 U.S. Dist. LEXIS 122830 (S.D.N.Y. Aug. 28, 2012) ....................................................................................................................................... 23

In re Capri Macaroni Corp., 173 U.S.P.Q. 630 (T.T.A.B. 1972) ......................................................................................... 11

In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d 1460 (9th Cir. 1993) ................................................................................................... 20

JL Bev. Co., LLC v. Beam, Inc., 2012 U.S. Dist. LEXIS 137076 (D. Nev. Sept. 25, 2012) ................................................. 24-25

Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998) ................................................................................................. 11

Koon Chun Hing Kee Soy & Sauce Factory, Ltd. v. Eastimpex, Case No. C 04-4146 MMC, 2007 U.S. Dist. LEXIS 7880 (N.D. Cal. Feb. 2, 2007) ............. 15

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005) ..................................................................................................... 7

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) ........................................................................................................... 19-20

Leatherman Tool Group, Inc. v. Coast Cutlery Co., 823 F. Supp. 2d 1150 (D. Or. Oct. 2011) ........................................................................... 21-22

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) ......................................................................................... 19

M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) ................................................................................................. 17

Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137 (9th Cir. 2011) ................................................................................................. 16

New Eng. Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878 (Fed. Cir. 1992) ................................................................................................... 6


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DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC vsf-3216486

Nichia Corp. v. Seoul Semiconductor, Ltd., Case No. 06-0162 MMC, 2008 U.S. Dist. LEXIS 12183 (N.D. Cal. Feb. 7, 2008) ............... 23

OG Int’l, Ltd. v. Ubisoft Entm’t, Case No. C 11-04980 CRB, 2011 U.S. Dist. LEXIS 124020 (N.D. Cal. Oct. 26, 2011) ....... 22

Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303 (5th Cir. 2008) ................................................................................................... 22

Philip Morris USA Inc. v. Felizardo, Case No. 03 Civ. 5891 (HB), 2004 U.S. Dist. LEXIS 11154 (S.D.N.Y. June 18, 2004) ....... 15

Phillip Morris USA Inc. v. Shalabi, 352 F. Supp. 2d 1067 (C.D. Cal. 2004) .................................................................................. 15

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) ................................................................................................................ 12

Rovio Ent’mt Ltd. v. Royal Plush Toys, Inc., Case No. C .............................................................................................................................. 21

Rudolph Int’l, Inc. v. Realys, Inc., 482 F.3d 1195 (9th Cir. 2007) ................................................................................................... 8

Stormans, Inc. v. Selecky, 586 F.3d 1109 (9th Cir. 2009) ................................................................................................. 22

Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003) ..................................................................................... 16

Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 U.S.P.Q.2d 1549 (T.T.A.B. 2009) ..................................................................................... 11

Stuhlbarg Intl’ Sales Co., Inc. v. Brush and Co., Inc., 240 F.3d 832 (9th Cir. 2001) ................................................................................................... 22

SunEarth, Inc. v. Sun Earth Solar Power Co., 846 F. Supp. 2d 1063 (N.D. Cal. 2012) .................................................................................. 22

Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999) ................................................................................................. 7

Supelco, Inc. v. Alltech Assocs., 1986 U.S. Dist. LEXIS 21236 (E.D. Pa. 1986) ....................................................................... 24

Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625 (9th Cir. 2005) ................................................................................................... 17

Tempur-Pedic Int’l, Inc. v. Waste to Charity, Inc., Case No. 07-2015, 2007 U.S. Dist. LEXIS 11435 (W.D. Ark. Feb. 16, 2007) ...................... 22


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DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC visf-3216486

TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) ............................................................................................................ 12, 14

Tyco Healthcare Group LP v. Applied Med. Res. Corp., Case No. 9:09-cv-176, 2011 U.S. Dist. LEXIS 154686 (E.D. Tex. Sept. 23, 2011) .............. 23

Ubiquiti Networks, Inc. v. Kozumi USA Corp., Case No. C 12-2582 CW, 2012 U.S. Dist. LEXIS 85665 (N.D. Cal. June 20, 2012) ............ 15

Vision Sports, Inc. v. Melville Corp., 888 F.2d 609 (9th Cir. 1989) ................................................................................................... 16

Walker & Zanger, Inc. v. Paragon Indus., Inc., 465 F. Supp. 2d 956 (N.D. Cal. 2006) .............................................................................. 10, 12

Winter v. Natural Res. Def. Council, 555 U.S. 7 (2008) .................................................................................................... 6, 21, 22, 24

STATUTES

15 U.S.C. § 1115(b)(8) .............................................................................................................. 7, 19

15 U.S.C. § 1119 ............................................................................................................................. 8

15 U.S.C. § 1127 ........................................................................................................................... 19

OTHER AUTHORITIES

Fed. R. Civ. P. 65(c) ...................................................................................................................... 26


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DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC 1sf-3216486

INTRODUCTION

In 1944, the U.S. Navy asked Emeco to build a chair for use on Navy ships. According to

Emeco’s director of product management, at that time, Emeco’s founder “basically took a generic

wood chair, took the design over, and made it in aluminum.” (Declaration of Nathan Sabri, Ex.

1.) Now, 68 years later, Emeco claims that it owns that generic chair design. However, Emeco

cannot sweep the generic nature of the chair’s trade dress under the rug. What was generic then

remains generic now. Because generic designs cannot be protected, Emeco’s so-called

“incontestable” trade dress registration is invalid. Emeco cannot show that it is likely to prove

that it has valid and protectable rights in its chair’s trade dress.

Emeco also overreaches as to its claim regarding the NAVY CHAIR trademark. A Navy

or naval chair is a generic reference to the type of chair used by the Navy. Emeco cannot own all

use of “Navy” or “naval” with “chair” any more than a company could own all use of “lawn”

with “chair.” A generic term cannot be protected, and Emeco’s THE NAVY CHAIR registration

is invalid. As with the chair’s trade dress, Emeco has not shown that it is likely to be successful

in proving that it has valid and protectable rights in the NAVY CHAIR trademark.

Emeco separately fails to demonstrate a likelihood of success because it cannot show a

likelihood of confusion. Consumers are not likely to be confused as to the source of the “1940s

Aluminum Naval Chairs” in the Restoration Hardware catalog. A survey reflects that only 1%

(or 1.5% at most) of respondents who viewed the chair in the Restoration Hardware catalog

believed it came from Emeco. This falls far short of what case law requires to establish

confusion. Additionally, Restoration Hardware’s use of the descriptive phrase “1940s Aluminum

Naval Chair” was a protected fair use that accurately described the style of the product.

Finally, Plaintiff has not shown the irreparable harm necessary to justify the extraordinary

relief of a preliminary injunction. Restoration Hardware has not sold a single chair accused in

this dispute. Not one. It preempted any sales before a single chair was sent to a store or a

customer. Restoration Hardware is holding the chair inventory under lock and key in its

warehouses, and the chair no longer appears on its website. There is no need for an injunction


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because no sales have occurred, and they will not occur until there is a ruling on the merits.1

STATEMENT OF FACTS

Origin of Navy Chair Design. The Navy set the specifications for what became the 1006

Navy Chair during World War II, and then developed it together with Alcoa. Emeco later built

the chair according to those specifications. As part of the public relations campaign Emeco

launched with this lawsuit, Emeco’s CEO, Gregg Buchbinder stated:

Emeco began in 1944. The US Navy had a problem. They needed something for the Navy ships. They needed furniture that was lightweight, non-corrosive for the salt air, nonflammable, that would not affect the instruments so it needed to be nonmagnetic, fireproof, and, of course, super durable because the sailors would destroy everything on ships. The Navy worked with Alcoa Aluminum, and they developed this chair, and they went to Emeco and at that time Emeco produced what is now known as the 1006 Navy chair.

(Sabri Decl. Ex. 2; see also id. Ex. 3 (“Emeco’s quality guarantee of The Navy Chair® is the

result of elaborate and precise specifications developed by the U.S. Navy in 1944 in conjunction

with ALCOA Aluminum.”); Compl. ¶ 13.) Mr. Buchbinder explained that this “utilitarian,

purpose-built chair” has “become famous because it’s built so well.” (Sabri Decl. Ex. 2.)

Emeco’s director of product development admitted on a video posted by Emeco to its YouTube

channel that the founder of Emeco “basically took a generic wood chair, took the design over, and

made it in aluminum.” (Id. Ex. 1.)

Use of Naval Chairs Since 1940s. The simple aluminum chair that the Navy asked

Emeco to build in the 1940s has continuously been used on Navy ships over the decades that

followed. (Compl. ¶ 13.) Thus, the chair has literally been a “naval” chair for more than 60

years. Other companies have also made Navy chairs for decades. Goodform/General

Fireproofing made “Aluminum Army/Navy Chairs” in the 1940s. (Sabri Decl. Ex. 4.)

Chromcraft & Harvard Interiors made “Navy chairs” in the 1960s and 1970s. (Id. Ex. 5.) In fact,

1 Plaintiff seeks to enjoin both Restoration Hardware and Gary Friedman, but Plaintiff’s motion establishes no facts suggesting Mr. Friedman’s personal involvement in the allegedly infringing activities or that he is involved in selling or marketing any chairs on his own apart from Restoration Hardware. An injunction against Mr. Friedman would thus be improper. The remaining arguments against an injunction made in this brief apply equally to both Restoration Hardware and to Mr. Friedman.


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the chair appears in a Navy catalog listing procurement data for furnishings approved for

shipboard use. (Id. Ex. 6.) The manufacturer of the Navy chair below is listed as Turnbull

Enterprises, Inc., not Emeco:

(Id.) Another entity, Pacific Maritime Industries, Corp., displays a similar product and states on

its website that it “manufacture[s] all items in the U.S. Navy’s NAVAL SHIPBOARD

FURNITURE CATALOG,” with a link to the Navy catalog that includes Turnbull’s identical

Navy chair. (Id. Ex. 7.) Many other versions of “Navy chairs” are offered on the market today,

including aluminum dining “Navy chairs,” stackable “Navy chairs,” a “New Spec Argent Navy

Chair,” “Brushed Aluminum Navy Side Dining Chairs,” and “Classic Design Navy Chair

Aluminum Dining Chair Reproduction.” (Id. Exs. 8-13.) Some have also emphasized the chairs’

naval origin, calling them “sailor chairs” and “military style” chairs. (Id. Exs. 14-16.)

Emeco’s Trademark Applications. Emeco waited more than 50 years before it applied

for a trade dress registration for the chair design in 1998. (Compl. Ex. 1.) In 2004, sixty years

after the Navy developed the chair design, Emeco applied for a trademark registration for the

words THE NAVY CHAIR, claiming use of that mark since 1999. (Id. Ex. 2.) It applied for a

trademark registration for a logo comprised of a chair design in 2005 (id. Ex.1) and for 111

NAVY CHAIR in 2009 (id Ex. 2.)

What the Emeco Chair is Named Today. As cited above, the CEO of Emeco has

recently stated that its chair “is now known as the 1006 Navy chair.” (Sabri Decl. Ex. 2.)

Plaintiff writes that it “named the chair with a number: 1006, some people call it the Navy chair.

We still call it the Ten-o-six.” (Id. Ex. 17.) The Emeco 1006 Navy chair is currently being sold

by retailers as: “1006 Navy® Side Chair” (id. Ex. 18), “Emeco 1006 – Navy Dining Chair” (id.

Ex. 19); and “Emeco Navy Chair (1006 Chair)” (id. Ex. 20). Plaintiff also sells a plastic “111

Navy Chair.” (Id. Ex. 17.)

Overview of Restoration Hardware’s Business. Restoration Hardware sells home


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furnishings through catalogs, the Internet, and more than 70 retail stores. (Declaration of Frances

Hamman ¶ 1.) It does not own or operate any manufacturing facilities. (Id.) It contracts with

third-party vendors for the manufacture of its merchandise. (Id.) Its sourcing strategy focuses on

identifying and using vendors that can provide the quality materials and fine craftsmanship that

its customers expect, while still offering good value on price. (Id. ¶ 2.)

Sourcing of “1940s Aluminum Naval Chair.” In May of this year, Restoration

Hardware decided to add new products to a fall catalog, which eventually was named “Big Style,

Small Spaces.” (Id. ¶ 3.) Several “mid-century modern” chairs were to be part of the new

catalog. (Id. ¶ 4.) Restoration Hardware’s sourcing representative in China, Stone Liu,

investigated two possible manufacturers of metal chairs, Amanson and Xuda, and each sent

exemplars of the chairs that it already had in its line. (Id.) Restoration Hardware settled on one

of the exemplars from Amanson; it was later described as the “1940s Aluminum Naval Chair” in

the “Big Style, Small Spaces” catalog. (Id. ¶¶ 5-6.)

Purchase Orders for Amanson Chairs. Restoration Hardware placed purchase orders

with Amanson on July 13, 2012. (Id. ¶ 6.) The chairs were to be delivered to two of Restoration

Hardware’s distribution centers. (Declaration of Jason Edelman ¶ 8.)

The “Big Styles, Small Spaces” Catalog. The “Big Styles, Small Spaces” catalog was

sent to approximately 8 million homes in the United States in early September 2012. (Id. ¶ 2.) It

included the page with the picture of a chair that Emeco included in its motion alongside the

description “Introducing 1940s Naval Chair.” (Mot. at 8.) The chair also appeared on the

Restoration Hardware website with the description “Introducing 1940s Aluminum Naval Chair

Collection.” (Id. at 9.)

Withdrawal of Chairs from Sale and from Website. After the catalog issued, Emeco

complained to Restoration Hardware of trade dress and trademark violations. (Edelman Decl.

¶ 2.) Restoration Hardware initially removed the term “naval” from the website, so that the chairs

were described as “Standard Aluminum Chairs.” (Id.) Emeco then filed suit on October 1, 2012.

Restoration Hardware withdrew the chairs from sale on October 3, 2012. (Id. ¶ 3.) The chairs

never made it out of the Restoration Hardware warehouses. (Id. ¶ 3; Declaration of Paul


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Gargagliano ¶ 5; Declaration of Robert Forte ¶¶ 2-5.) Restoration Hardware informed customers

who had placed orders already that their orders would not be filled. (Edelman Decl. ¶ 4.) These

chairs were never delivered to customers. (Id.)

Cancellation of Amanson Orders. Restoration Hardware cancelled all of its remaining

purchase orders with Amanson on October 3, 2012, and took action to secure whatever inventory

had been manufactured. (Id. ¶ 6, Ex. 1; Hamman Decl., ¶ 7, Ex. 2.) It confirmed with Amanson

that the inventory that had been built for Restoration Hardware had already shipped and that no

further chairs were in inventory in China or in the process of being manufactured. (Edelman

Decl. ¶ 7, Ex. 2; Hamman Decl. ¶ 7.) The first Amanson chairs arrived in the United States at the

Restoration Hardware distribution center in Mira Loma, California, on October 15, 2012, and

subsequent shipments have arrived on October 16 and 22 in Mira Loma and on November 8,

2012, at the Essex, Maryland distribution center. (Gargagliano Decl. ¶¶ 2-4; Forte Decl. ¶ 2.)

There are currently 2,416 chairs in locked and sealed storage containers at Restoration

Hardware’s facilities. (Edelman Decl. ¶ 9.) Additional chairs are on ships on their way to the

United States, and these shipments will be held in locked and sealed storage containers when they

arrive. (Gargagliano Decl. ¶ 9; Forte Decl. ¶ 6.) Restoration Hardware will not release any of the

chairs from storage until this Court rules on the merits of the case. (Edelman Decl. ¶ 10.)

Lack of Confusion as to Source, Affiliation, or Sponsorship. Hal Poret, an expert in

consumer surveys, conducted a survey to test whether potential Restoration Hardware customers

would associate Restoration Hardware’s chair with Emeco’s Navy Chair, or mistakenly believe

the chair, as shown in the catalog, was made by, affiliated with, or authorized by Emeco.

(Declaration of Hal Poret ¶ 7.) The survey was weighted toward higher-income households

(Restoration Hardware’s target customers) and only included persons who had shopped or were

likely to shop at Restoration Hardware for furniture. (Id. ¶ 6, Ex. 1 at 3, 12 & n.1.) First,

participants were shown the chair alone, and only 1% or 1.5% surveyed associated the look of

that chair with Emeco. (Id. ¶ 6, Ex. 1 at 11, 19, 21.) When shown the relevant pages of

Restoration Hardware’s catalog, only 1% (at most 1.5%) believed the chair was made by,

affiliated with, or authorized by Emeco. (Id. at ¶ 6, Ex. 1 at 11, 19, 21.) Notably, this survey was


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conducted after Emeco’s press blitz resulting in articles in the Los Angeles Times, the New York

Times, the San Francisco Chronicle, and many other publications. (Sabri Decl. Ex. 21.) Many of

these articles included photos of the chairs and summarized Emeco’s claims in this lawsuit. (Id.)

ARGUMENT

Plaintiff is not entitled to the “extraordinary remedy” of a preliminary injunction. Winter

v. Natural Res. Def. Council, 555 U.S. 7, 24 (2008) (“[a] preliminary injunction is an

extraordinary remedy never awarded as of right”). Plaintiff has not established: (1) a likelihood

of success on the merits of its claims; (2) a likelihood that it will suffer irreparable harm; (3) that

the balance of equities tips in its favor; or (4) that an injunction is in the public interest, id. at 19-

20, or that it meets the “serious questions” version of the four-factor analysis that is permitted in

Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127 (9th Cir. 2011).

I. PLAINTIFF CANNOT DEMONSTRATE LIKELIHOOD OF SUCCESS.

To prevail on a claim under the Lanham Act, Plaintiff must establish that it has valid,

protectable rights and that Restoration Hardware’s offer for sale of its accused chairs is likely to

cause confusion. Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046 (9th

Cir. 1999). Plaintiff can establish neither. Because Restoration Hardware raises substantial

questions as to infringement and the validity of the rights on which Plaintiff relies, the Court

should deny the motion for preliminary injunctive relief. In the patent context, if a defendant

raises a “substantial question” as to infringement or validity that the patentee cannot prove “lacks

substantial merit,” the patentee is not entitled to a preliminary injunction. Aria Diagnostics, Inc.

v. Sequenom, Inc., Case No. C 11-06391 SI, 2012 U.S. Dist. LEXIS 93124, at *31-35 (N.D. Cal.

July 5, 2012) (denying motion for preliminary injunction); Elantech Devices Corp. v. Synaptics,

Inc., Case No. C 06-1839 PVT, 2008 U.S. Dist. LEXIS 116997, at *6 (N.D. Cal. Aug. 27, 2008)

(“If the other party raises substantial questions concerning either infringement or validity, the

preliminary injunction should not issue.”). This is because a “substantial question” shows

insufficient likelihood of success “[g]iven the time constraints within which an accused infringer”

must respond to a motion for preliminary injunction. New Eng. Braiding Co. v. A.W. Chesterton

Co., 970 F.2d 878, 883 (Fed. Cir. 1992). The same logic applies here, and Plaintiff’s motion


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should be denied because Restoration Hardware raises substantial questions as to both the validity

and infringement of Plaintiff’s asserted rights. See e.g., Cazet v. Epps, Case No. C 10-02460

JSW, 2010 U.S. Dist. LEXIS 67924, at *4 (N.D. Cal. June 11, 2010) (denying temporary

restraining order as “Court [could not] find . . . that Plaintiffs have obtained a protectable mark”).

A. Plaintiff’s Asserted Rights Are Not Protectable.

Trademarks are generally classified in one of four categories in a continuum from weakest

to strongest: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. Filipino

Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1146-47 (9th Cir. 1999)

(citations omitted). Generic terms are never protectable as trademarks. Id. at 1147. Descriptive

terms are protectable only upon a showing of secondary meaning, which refers to a “mental

recognition in buyers’ and potential buyers’ minds that products connected with the [mark]

emanate from or are associated with the same source.” Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,

654 F.3d 958, 967 (9th Cir. 2011) (citation omitted).

Plaintiff touts its “incontestable” registrations as a basis to demonstrate its alleged rights,

but “the label of ‘incontestability’ is rather misdescriptive.” KP Permanent Make-Up, Inc. v.

Lasting Impression I, Inc., 408 F.3d 596, 603 (9th Cir. 2005). Significantly, “incontestability”

does not prevent a challenge that the mark is generic. Gen. Conference Corp. of Seventh-Day

Adventists v. Seventh-Day Adventists Congregational Church, 887 F.2d 228, 231 (9th Cir. 1989)

(“A trademark, even if it has become incontestable, is subject to the defense that the mark is

generic.”)

“Incontestable” product configuration designs also “may be cancelled if the mark is

generic.” Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 1323 (Fed. Cir. 1999)

(vacating dismissal of petition to cancel and remanding for determination of whether “metallic

nautical rope design” mark was generic). They can also be cancelled if the trade dress is

functional. 15 U.S.C. § 1115(b)(8) (incontestable trade dress registration subject to “defense[] or

defect[]” that “the mark is functional”). Each of Plaintiff's “incontestable” registrations is subject


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to cancellation.2 1. Plaintiff’s THE NAVY CHAIR mark and chair trade dress are

generic. a. Plaintiff’s THE NAVY CHAIR mark is generic.

This Circuit determines whether a term is generic by referring to the “who-are-you/what-

are-you” test. Advertise.com, Inc. v. AOL Adver., Inc., 616 F.3d 974, 978 (9th Cir. 2010)

(vacating preliminary injunction as ADVERTISING.COM trademark was generic). A valid

trademark “answers the buyer’s questions ‘Who are you?’ ‘Where do you come from?’ ‘Who

vouches for you?’ But the generic name of the product answers the question ‘What are you?’”

Id. An online advertising company may respond to the question “what are you” with “an

advertising dot-com,” thus ADVERTISING.COM is generic. Id.; see also Rudolph Int’l, Inc. v.

Realys, Inc., 482 F.3d 1195, 1198-99 (9th Cir. 2007) (“disinfectable” answers “what-are-you” test

and is generic because it “relates to the type of product rather than its source”); Classic Foods

Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1194-95 (C.D. Cal. 2007) (“kettle chips”

is generic as it identifies “a type of potato chip”).

Plaintiff asserts rights in a “Navy chair” trademark based on registrations for THE NAVY

CHAIR and 111 NAVY CHAIR, but “Navy chair” is generic because it answers the question

“what are you?,” not the question “who are you?” THE NAVY CHAIR is also generic because

the addition of the term “the” cannot render a generic term protectable. GMT Prods., L.P. v.

Cablevision of New York City, Inc., 816 F. Supp. 207, 211 (S.D.N.Y. 1993) (finding THE

ARABIC CHANNEL generic and noting, “use of the word ‘the’ before an unprotectable mark

does not convert an otherwise generic term into a descriptive one”).3 Plaintiff’s chair was

2 Restoration Hardware will file counterclaims seeking to cancel each of Plaintiff’s asserted registrations. The Court has the power to cancel invalid registrations. 15 U.S.C. § 1119.

3 Plaintiff’s claim of rights in “Navy Chair” based on 111 NAVY CHAIR also fails as a plaintiff cannot base a claim on a generic component of a mark any more than it can on a generic mark. Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 18, 38 (1st Cir. 2008) (reversing grant of preliminary injunction where no likelihood of confusion between BOSTON DUCK TOURS and SUPER DUCK TOURS, as “duck tours” was generic and BOSTON and SUPER dissimilar) (citing Am. Cyanamid Corp. v. Connaught Labs., Inc., 800 F.2d 306, 308 (2d Cir. 1986) (“A trademark holder cannot appropriate generic or descriptive terms for its exclusive use . . . . This principle applies equally to the generic component of a trademark.”))


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developed by the U.S. Navy in the 1940s, and it has been used on Navy ships ever since. (Sabri

Decl. Ex. 2; Mot. at 3.) Plaintiff’s chair is “a Navy chair,” and Plaintiff is just one source for it.

Turnbull Enterprises, Inc. is another. (Sabri Decl. Ex. 6.) The existence of a 1006 Navy chair,

which Plaintiff calls the “Ten-o-six,” and a 111 Navy chair demonstrates this further: 111 and

1006 provide the name of the product, and, along with the name Emeco answer “who are you?”

while “Navy chair” answers “what are you?” (Id. Ex. 17.)

In fact, the Trademark Office initially rejected Plaintiff’s application to register THE

NAVY CHAIR as “merely descriptive,” finding that “Navy chair” “refers to a particular style of

chair commonly used by the Navy.” 4 (Id. Ex. 22.) The Trademark Office attached to its

rejection pages from the Navy Shipboard Furniture Catalog showing the “Turnbull Enterprises”

Navy chairs discussed above. (Id.) Plaintiff overcame this objection by claiming that “navy

chair” had acquired secondary meaning due to Plaintiff’s alleged “substantially exclusive” use of

the mark since January 1999. (Id. Ex. 23.) Plaintiff did not reconcile its claim of “substantially

exclusive use” of the mark with the evidence showing a third-party manufacturer of “navy

chairs,” and the Trademark Office allowed the registration based upon Plaintiff’s representation.

(Id.)

In fact, there is a plethora of similarly designed “Navy chairs” or “sailor chairs”:

A seller of midcentury antiques offers a “Vintage Goodform Aluminum Army/Navy Chair,” circa 1940s, similar to Plaintiff’s chair. (Id. Ex. 4.)

Similar “Sailor Chairs” are available on Amazon.com and NYCBed.com. (Id. Exs. 14-15.)

A similar “Brushed Aluminum Navy Side Dining Chair” was available on Amazon.com. (Id. Ex. 8.)

Seating Depot.com sells a “stackable navy chair.” (Id. Ex. 13.)

A comparably styled “[b]rushed aluminum dining Navy chair” was recently available on eBay. (Id. Ex. 10.)

4 The Trademark Office also initially rejected Plaintiff’s application to register 111

NAVY CHAIR, stating “‘Navy chair’ refers to a particular style of chair.” (Sabri Decl. Ex. 24.) Plaintiff overcame the objection by relying solely on its existing registration for THE NAVY CHAIR as evidence that NAVY CHAIR had acquired secondary meaning. (Id.)


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“Argent Navy Chair in Aluminum” and “Classic Design Navy Chair Aluminum Dining Chair Reproduction” were recently available on eBay. (Id. Exs. 9, 12.)

Each of the examples pictured below is an aluminum “navy chair” or “sailor chair” sold by an

entity other than Plaintiff.

(Id. Exs. 4, 10, 13-15.)

Restoration Hardware has raised a substantial question of genericness as to THE NAVY

CHAIR mark, such that a motion for preliminary injunction based on that mark must be denied.

b. Plaintiff’s trade dress is generic.

Trade dress has a different test to determine genericness: “(1) if the definition of a product

design is overbroad or too generalized; (2) if a product design is the basic form of a type of

product; or (3) if the product design is so common in the industry that it cannot be said to identify

a particular source.” Walker & Zanger, Inc. v. Paragon Indus., Inc., 465 F. Supp. 2d 956, 962

(N.D. Cal. 2006). Plaintiff’s asserted trade dress5—shown below—is generic under the second

and third formulations set forth in Walker. It is merely the basic form of a type of a chair with

four legs, a back, and a seat, and the specific presentation of these elements is similarly so basic

and unadorned, that the design cannot be considered distinctive.

5 Plaintiff never clearly explains the basis for its claim of trade dress rights. To the extent

that Plaintiff relies on U.S. Reg. No. 3,191,187, that registration is for a logo, not for a chair design. (Mot. at 5; Blavin Decl. ¶ 8, Ex. 7.) Plaintiff cites no authority, because there is none, to support its position that a logo incorporating a common object can serve as a basis for a product configuration trade dress infringement claim.


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(Compl. Ex. 1.) Plaintiff’s director of product development admits that Plaintiff “basically took a

generic wood chair, took the design over and made it in aluminum,” and that if one were to ask a

child to draw a chair, “she will probably take the 1006 chair, because it’s just a classic chair.”

(Sabri Decl. Ex. 1.) A lineup of Plaintiff’s chair, the accused chair, a third-party “sailor chair”

available on Amazon.com, and two so-called “alternative designs” (Mot. at 14-15) demonstrates

how commonplace this basic form is:

(Sabri Decl. Ex. 25.)

A Restoration Hardware employee even came across a Chinese-made Navy chair in a

local mall just this week. (Edelman Decl. ¶ 11.) The fact that numerous competitors are selling

very similar “naval chairs” and “sailor chairs” is strong evidence that the chair design6 is generic.

(See supra pp. 9-10; Sabri Decl. Exs. 11 (ITALMODERN Cafe Aluminum Side Chair), 16

(DecoDina “military style” chairs in restaurant)); Stuart Spector Designs, Ltd. v. Fender Musical

Instruments Corp., 94 U.S.P.Q.2d 1549, 1555 (T.T.A.B. 2009) (explaining that “competitor use

of the same or substantially similar designs is evidence of genericness”). A generic,

unprotectable design cannot serve as a basis for a preliminary injunction.

c. Plaintiff’s trade dress is functional.

“The functionality doctrine prevents trademark law . . . from . . . inhibiting legitimate

6 U.S. Reg. No. 3,191,187 for the chair logo is also generic and incapable of identifying a

source. An image logo that is generic is unprotectable. Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1048 (9th Cir. 1998) (holding that “[g]rape-leaf designs have become generic emblems for wine” and are not protectable); In re Capri Macaroni Corp., 173 U.S.P.Q. 630, 631-32 (T.T.A.B. 1972) (affirming refusal to register picture of colored macaroni because so-called mark was “nothing more than the goods itself”).


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competition by allowing a producer to control a useful product feature.” Qualitex Co. v.

Jacobson Prods. Co., 514 U.S. 159, 164 (1995). Indeed, “copying is not always discouraged or

disfavored by the laws which preserve our competitive economy;” it “will have salutary effects in

many instances.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001). For these

reasons, the Supreme Court warned that “trade dress protection must subsist with the recognition

that in many instances there is no prohibition against copying goods and products.” Id. Courts

are thus circumspect “when extending protection to product designs because such claims present

an acute risk of stifling competition.” Walker, 465 F. Supp. 2d at 961 (internal quotation marks

and citation omitted) (“granting trade dress protection to an ordinary product design create[s] a

monopoly in the goods themselves”).

The Ninth Circuit looks to four factors in determining functionality: “(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.” Disc Golf Ass’n v.

Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). Under this test, Plaintiff’s asserted

chair design trade dress (see supra p. 10) is functional and its registration is subject to

cancellation.

First, by Plaintiff’s own admission the trade dress clearly yields a utilitarian advantage—

the chair is a “utilitarian, purpose-built chair,” designed to be “a seaworthy, lightweight and

durable chair suitable for use on warships and submarines.” (Sabri Decl., Ex. 2; Buchbinder

Decl. ¶ 4.) In fact, each of the specific elements that Plaintiff asserts as comprising its trade dress

provides a utilitarian advantage to Plaintiff’s Navy Chair: (i) three vertical bars connect the upper

and lower curves of the back of the seat and offer a place to grip the chair when moving it, (ii) the

rounded bends at top corners on the upper back of the seat, which also form the back legs, the

rounded curve on the lower back of the seat, and the overall concave curvature of the chair back

offer back support and comfort and the roundness avoids sharp corners, (iii) the seat with its “butt

dip” provides a comfortable place for one’s posterior, (iv) the horizontal bars between the chair

legs offer structural support, (v) the “outward bend” of the back legs provides stability, and


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(vi) the lack of fasteners (yielding a sculpture-like, one-piece design) improves the quality of the

chair by eliminating moving parts that could break.7 In fact, Plaintiff touts durability as a key

characteristic of its chair, and the lack of fasteners furthers this stated goal of making a chair that

lasts. (Sabri Decl. Ex. 28.) Plaintiff also refers to “the pie-shaped cross section of the tapered

front legs,” but that element is not featured in Plaintiff’s asserted trade dress registration and thus

is not at issue here. See note 7 supra. Moreover, this element is functional, as the use of rounded

edges on the front chair legs makes for a smooth transition from the rounded seat corner, thereby

avoiding sharp edges and preventing injury and clothes-snagging.

One design blog highlighted the inherently functional nature of Plaintiff’s trade dress,

lauding how the chair consists of “a seamless, aluminum frame that is formed perfectly for

ergonomics and doesn’t fuss with ornamentation.” (Sabri Decl. Ex. 26.) Taken together as a

whole, Plaintiff’s trade dress is merely an arrangement of elements necessary to the product’s

purpose as a durable, industrial chair that fit the U.S. Navy’s specifications. The specific design

enhances its durability and thus undeniably yields a utilitarian advantage. In another recent case

involving a far more unique design of a chair enveloped within a tree trunk, the court concluded

that the asserted chair design was functional because the elements of the asserted trade dress were

“essential to the use or purpose of the furniture piece or affect[ed] the cost or quality of the

furniture piece.” See e.g., Heptagon Creations, Ltd. v. Core Grp. Mktg. LLC, Case No. 11 Civ.

01794 (LTS)(AJP), 2011 U.S. Dist. LEXIS 147102, at *20-21 (S.D.N.Y. Dec. 22, 2011) (internal

citations omitted).

Second, Plaintiff points to two “alternative designs for aluminum-based chairs that did not

copy, identically, the complete design of the Navy Chair®” to suggest that alternative designs are

available (Mot. at 14-15 (emphasis added)), but the differences are minor. The numerous sources

7 Plaintiff identifies a “distinct hand brushed finish with the contrasting direction where the leg meets the seat bottom” as an element of its trade dress (Mot. at 13), but its trade dress registration is a line drawing that does not cover specific finishes. (Blavin Decl. ¶ 7, Ex. 6.) Similarly, Plaintiff cannot rely on “the positioning and angle of the curved horizontal bar(s) on the lower base of the seat” (Mot. at 13) because they are not shown on the drawing. For purposes of this motion, the elements of Plaintiff’s trade dress are limited to the design disclosed in U.S. Reg. No. 2,511,360 because Emeco failed to assert common law trade dress rights in its motion.


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of aluminum chairs that are virtually identical to Plaintiff’s chair design demonstrate that the

elements of Plaintiff’s claimed trade dress are essential to the purpose and use of a lightweight

aluminum chair. TrafFix, 532 U.S. at 28-29.

Third, Plaintiff’s advertisements tout the durability of its chairs with headlines that

proclaim: “First let’s make things that last.” (Buchbinder Decl. Ex. A; Sabri Decl. Exs. 27-29.)

Plaintiff achieved this utilitarian durability using a functional chair with no fasteners, no moving

parts, and made of a single strong material—aluminum. Plaintiff’s touting of this facet of the

design is evidence that the design is functional.

Fourth, the chair “design results from a comparatively simple or inexpensive method of

manufacture.” Disc Golf, 158 F.3d at 1006. Numerous third parties sell comparable chairs in the

range of $89 to $255 (Sabri Decl. Exs. 8-15), and dozens of manufacturers offer comparable

chairs wholesale in the range of $19 to $100. (Id. Ex. 31.) The particular chair design selected by

Restoration Hardware has a wholesale price of $37. (Hamman Decl. Ex.1.) While Plaintiff may

use a complex 1940s manufacturing process (Mot. at 16), that decision does not render the design

itself complex or costly. As shown by the prices above, the chair design is inexpensive to build.

For these reasons, there is at least a substantial question as to whether Plaintiff’s trade

dress is functional.

B. Plaintiff Has Not Shown a Likelihood of Confusion.

Courts look to the multifactor test set out in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,

348-49 (9th Cir. 1979), to assess likelihood of confusion. Specifically, these factors are: (1)

strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of

actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to

be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of

expansion of the product lines. Id. It is not sufficient to show that confusion is possible. Plaintiff

instead must demonstrate that Restoration Hardware’s chairs are “likely to confuse an

appreciable number of people.” Entrepreneur Media v. Smith, 279 F.3d 1135, 1151 (9th Cir.

2002) (emphasis in original). In other words, they “will probably cause consumer confusion as to

the source or sponsorship of the product.” Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC,


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741 F. Supp. 2d 1165, 1177 (C.D. Cal. 2010) (emphasis added).

Plaintiff asserts that the Sleekcraft test is “unnecessary” here because Restoration

Hardware’s products are counterfeits. (Mot. at 19 & nn.7-8.) Unlike in the cases cited by

Plaintiff, Restoration Hardware has not engaged in “counterfeiting.” In Ubiquiti Networks, Inc. v.

Kozumi USA Corp., Case No. C 12-2582 CW, 2012 U.S. Dist. LEXIS 85665, at *38-39 (N.D.

Cal. June 20, 2012), the court noted that defendants’ counterfeit products “used design, hardware

and software identical to the original Ubiquiti product” and “[n]otably” used plaintiff’s registered

word mark as well as the company’s name and corporate address.8 By contrast, Restoration

Hardware has not used the Emeco name; it used the term “naval” in its descriptive sense; it

marketed the chairs in its own catalog and on its own website; and it did not try to sell them as

Emeco chairs. Cf. Koon Chun Hing Kee Soy & Sauce Factory, Ltd. v. Eastimpex, Case No. C 04-

4146 MMC, 2007 U.S. Dist. LEXIS 7880, at *7 (N.D. Cal. Feb. 2, 2007) (emphasis added)

(Chesney, J.) (“mark and design imprinted” on counterfeit products was “the same as, or

substantially indistinguishable, from” from plaintiff’s mark and trade dress).

1. Key Sleekcraft factors establish that confusion between Plaintiff’s trade dress and trademarks and Restoration Hardware’s chairs is not likely.

a. Plaintiff’s trade dress and trademarks are very weak.

Even if the Court determined that Plaintiff’s trade dress and trademarks are not generic,

they would still be very weak and should be afforded very little protection. See Entrepreneur

Media, 279 F.3d at 1142 n.3 (registration’s incontestable status “does not require a finding that

the [trade dress] is strong”). Although the Restoration Hardware chairs look similar to Plaintiff’s

chairs, as discussed above, Plaintiff’s chair design is a basic design common throughout the

8 See also Herman Miller Inc. v. Alphaville Design Inc., Case No. C 08-03437 WHA,

2009 U.S. Dist. LEXIS 103384, at *3 (N.D. Cal. Oct. 22, 2009) (counterfeit chairs were “identical with, or substantially indistinguishable from” registered trade dress and were advertised under plaintiff’s brand name); Philip Morris USA Inc. v. Felizardo, Case No. 03 Civ. 5891 (HB), 2004 U.S. Dist. LEXIS 11154, at *18 (S.D.N.Y. June 18, 2004) (counterfeit cigarettes were sold in “imitation” Phillip Morris cartons); Phillip Morris USA Inc. v. Shalabi, 352 F. Supp. 2d 1067, 1071, 1073 (C.D. Cal. 2004) (stating that goods were counterfeit where they “appeared to be” MARLBORO® and MARLBORO LIGHTS® brand cigarettes).


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furniture industry, and “Navy chair” is a common phrase used by competitors to describe a style

of chair. (See, e.g., Sabri Decl. Ex. 4, 8-10, 12-13.) The numerous third-party uses of similar

chair designs and names significantly weaken Plaintiff’s trade dress and trademark.

A trade dress or trademark is weak where there is little or no association between it and

the origin or source. See Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137,

1149 (9th Cir. 2011). Plaintiff offers circumstantial evidence of the strength of its trade dress and

trademark in the form of investment in advertising and length of use. (Mot. at 17-18.) However,

this is not sufficient to convert weak trade dress and trademark rights into strong ones because it

says nothing of the “effectiveness” of Plaintiff’s efforts. See First Brands Corp. v. Fred Meyer,

Inc., 809 F.2d 1378, 1383 (9th Cir. 1987). Plaintiff presents no evidence that consumers actually

associate its trade dress solely with Plaintiff. Plaintiff’s failure to submit survey evidence on this

point is particularly telling. See Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir.

1989) (“An expert survey of purchasers can provide the most persuasive evidence of secondary

meaning.”). In fact, Restoration Hardware submits a survey that shows that only 1.0% (2.5% at

most) of people surveyed associated Restoration Hardware’s chair—which Plaintiff alleges is

virtually indistinguishable from its own trade dress—with Plaintiff. (Poret Decl. ¶¶ 6, 9 Ex. 1 at

11, 19, 21.) These rates fall far below the figures generally found to support a finding of

secondary meaning. See Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130, 137

(D. Mass. 2003) (no reasonable jury could infer secondary meaning from 0-2.73% association).

b. There is no evidence of significant actual confusion.

Plaintiff’s failure to offer survey evidence on likelihood of confusion “may lead to an

inference that [Plaintiff] predicted that the results of such a survey would be unfavorable,” Cairns

v. Franklin Mint Co., 24 F. Supp. 2d 1013, 1041-42 (C.D. Cal. 1998), which turned out to be true

as Restoration Hardware’s survey firmly demonstrates that confusion is not likely. When shown

the chair alone, only 1% or 1.5% of those surveyed associated the look of that chair with Emeco.

(Id. ¶¶ 6, 9 Ex. 1 at 11, 19, 21.) When shown the relevant pages of Restoration Hardware’s

catalog with the accused phrase “Introducing 1940s Naval Chair,” only 1% or 1.5% believed the

chair was made by, affiliated with, or authorized by Emeco. (Id. at ¶¶ 6, 9, Ex. 1 at 11, 19, 21.)


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Restoration Hardware’s survey expert concludes that “there is no more than a negligible

likelihood that the Restoration Hardware chair will be confused with Emeco or its Navy Chair . . .

[or] that the appearance of the chair in the Restoration catalog will cause an association with

Emeco’s Navy Chair.” (Id. ¶ 10.)

This is strong evidence that there is no likelihood of confusion between the chair as

pictured and described in Restoration Hardware’s catalog and Plaintiff’s trade dress and

trademarks. See Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 629, 633 (9th Cir. 2005)

(survey showing less than 2% confusion demonstrated “absence of significant confusion”);

Cairns, 24 F. Supp. 2d at 1040 (“Survey evidence clearly favors the defendant when it

demonstrates a level of confusion much below ten percent.”) (internal citation and quotation

marks omitted); see also Henri’s Food Prods. Co. v. Kraft, Inc., 717 F.2d 352, 358 (7th Cir.

1983) (affirming conclusion that “a 7.6% confusion finding weighs against infringement”).

Instead of a survey, Plaintiff offers “evidence” of “several instances” of actual confusion

(Mot. at 20; Blavin Decl. ¶ 15, Ex. 14), but the weight of the evidence shows that consumers are

not confused and are aware that there are different sources for the chairs. (See Blavin Decl. ¶ 16,

Ex. 15 (user comment noting that “Restoration Hardware has some relatively reasonable repros of

the Emeco classic”); id. ¶ 17, Ex. 16 (describing Restoration Hardware’s chair as “Emeco-

esque”). If a consumer refers to a chair as a “repro,” she does not think it is the original product.

Similarly, the “Emeco-esque” comment does not imply that there is any confusion as to source,

sponsorship, or affiliation. M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1083 (9th Cir.

2005) (emphasis in original) (finding evidence that “[a]t best” showed consumer was “reminded”

of plaintiff did not show actual confusion). A review of the other blog commenters that Plaintiff

submitted does not suggest a likelihood of confusion. (See Blavin Exs. 14-16.)

c. The parties use different trade channels.

Plaintiff and Restoration Hardware market their products through distinct trade channels

such that consumer confusion is highly unlikely. Plaintiff sells its products through its website,

“established retail furniture and design stores such as Design Within Reach,” and “to trade

architects and designers, governments, contract dealers, international distributors, and for end use


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commercial applications.” (Mot. at 5.) Restoration Hardware, by contrast, sells its products

through its own retail stores, website, and catalogs. (Hamman Decl. ¶ 1.) Because Plaintiff does

not sell its chairs through Restoration Hardware’s retail channels, the parties do not use

overlapping marketing channels, eliminating any risk of point-of-sale consumer confusion. See

Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359, 1361 (9th Cir. 1993) (finding that “almost no

overlap[] of marketing channels” weighed in favor of no confusion).

d. Consumers exercise a high degree of care.

When purchasing expensive items, consumers are considered “to be more discerning—

and less easily confused . . . .” Brookfield Commc’ns, Inc., 174 F.3d at 1060. Here, Plaintiff sells

its chairs for approximately $455 (Blavin Decl. Ex. 1), whereas Restoration Hardware listed the

price of its chairs at $129 (id. Ex. 11). Given these price points, consumers will use care before

making a decision to purchase and will understand that there may be a difference between these

two products. See Beats Elecs., LLC v. Fanny Wang Headphone Co., Case No. C-10-5680

MMC, 2011 U.S. Dist. LEXIS 2228, at *16 (N.D. Cal. Jan. 5, 2011) (denying TRO in part

because “given the relatively high price point,” a typical consumer is “likely to exhibit care when

making his/her selection”).

e. Restoration Hardware did not intend to cause confusion with Plaintiff’s chairs.

Plaintiff offers no evidence that Restoration Hardware intended to confuse consumers as

to the source of its products. Plaintiff argues that Restoration Hardware sells counterfeit goods

and that that shows intent. (Mot. at 21.) However, Plaintiff’s case for counterfeiting relies not on

evidence, but rather on ad hominem attacks that Restoration Hardware is sued a lot and steals the

designs of others. Such allegations do not show Restoration Hardware’s intent to confuse its

customers into believing it was selling Emeco chairs.

f. The word marks are not sufficiently similar to cause confusion

Restoration Hardware’s descriptive phrases such as “Introducing 1940s Naval Chair” and

“Introducing 1940s Aluminum Naval Chair Collection” are not similar enough to the trademarks


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THE NAVY CHAIR or 111 NAVY CHAIR to cause confusion.9 The only true overlap is the

generic word CHAIR. The term “naval” is a common descriptive word for something designed

and used by the U.S. Navy. Using the descriptive word “naval” does not create a likelihood of

confusion. See Entrepreneur Media, 279 F.3d at 1145 n.9. The fact that the accused phrases

appeared only on Restoration Hardware’s website and in Restoration Hardware’s catalog, and not

on any products, also militates against a finding that the marks are sufficiently similar to cause

confusion. Consumers who encounter the accused phrases will only see them in connection with

Restoration Hardware, which they will understand to identify the source of the products. See

Groupion, LLC v. Groupon, Inc., 859 F. Supp. 2d 1067, 1073-74 (N.D. Cal. 2012) (GROUPION

and GROUPON dissimilar because of differences in color, background, and capitalization, as

well as frequent appearance of distinct tagline next to GROUPION).

2. Defendants’ accused phrases are protected by the defense of fair use.

Even if there were some likelihood of confusion due to Restoration Hardware’s use of the

accused phrases, the affirmative defense of “fair use” defeats trademark claims where, as here, a

defendant uses a term “descriptively, not as a mark, fairly, and in good faith.” KP Permanent

Make-Up, Inc., 543 U.S. at 123-24 (defendant “has no independent burden to negate the

likelihood of any confusion;” “fair use can occur along with some degree of confusion”) (citing

15 U.S.C. § 1115(b)(4)). The Supreme Court cautioned that a trademark owner adopting a mark

with a descriptive meaning, as here, accepts a risk of confusion, and “the use of a similar name by

another to truthfully describe his own product does not constitute a legal or moral wrong.” Id. at

119, 122 (internal citations omitted). Thus, where a party used “VCR-2” to describe a particular

input on a receiver, it was not liable for infringing the registered “VCR-2” mark, as its use was

9 Plaintiff’s conclusory assertion that Plaintiff counterfeited the word marks 111 NAVY

CHAIR and THE NAVY CHAIR marks is baseless. (Mot. at 19.) The Lanham Act defines a “counterfeit mark” as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. The identicality standard for counterfeiting is high. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 269 (4th Cir. 2007). Plaintiff’s use of “Introducing 1940s Naval Chair” does not even begin to meet this standard.


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“fair use as a matter of law.” In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d

1460, 1467 (9th Cir. 1993).

Plaintiff attacks Restoration Hardware’s use of the phrases “Introducing 1940s Naval

Chair” and “Introducing 1940S Aluminum Naval Chair” as shown below:

(Blavin Decl. Exs. 11, 13.) However, these accused phrases are protected by the fair use defense

because they are fair, good faith descriptive uses, and they are not being used as trademarks. KP

Permanent Make-Up, 543 U.S. at 124. The Navy chair was designed by the U.S. Navy in the

1940s (supra p. 2), has been used by the Navy on ships and submarines for decades, and

continues to be used by the Navy to this day. (Compl. ¶ 13.) Restoration Hardware’s phrases

thus aptly describe the chairs. Plaintiff even concedes that Restoration Hardware uses the phrase

“naval chair” in “describing its products.” (Mot. at 6, 11) (emphasis added). Notably, Plaintiff is

not accused of using a term identical to Defendants’ purported “navy chair” trademark, and uses

the phrase “naval chair” only as part of a longer phrase. Indeed, Restoration Hardware’s survey

results, which presented respondents with the chairs as they appeared in the Restoration Hardware

catalog, along with the phrase “Introducing 1940s Naval Chair,” demonstrate that the phrase was

not viewed as a trademark or source identifier.

Plaintiff has not shown a likelihood of confusion resulting from Restoration Hardware’s

use of the descriptive term “naval chair” in connection with longer phrases.


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II. PLAINTIFF CANNOT DEMONSTRATE THAT IT IS LIKELY TO SUFFER IRREPARABLE HARM WITHOUT AN INJUNCTION

Plaintiff must demonstrate that it is likely to suffer irreparable harm in the absence of an

injunction. Rovio Ent’mt Ltd. v. Royal Plush Toys, Inc., Case No. C 12-5543 SBA, 2012 U.S.

Dist. LEXIS 159257, at *14-15 (N.D. Cal. Nov. 6, 2012). Previously, courts presumed

irreparable injury if the moving party showed likelihood of success on the merits of trademark

infringement claims. Id. at *12 (citing Brookfield Communs., Inc. v. West Coast Entm’t Corp.,

174 F.3d 1036 (9th Cir. 1099)). However, in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,

393 (2006), the Supreme Court rejected categorical rules that avoid the four-factor injunction test,

and in Winter v. NRDC, Inc., 555 U.S. 7, 22 (2008), emphasized that preliminary injunctions are

“extraordinary remed[ies]” that may only be awarded where “irreparable injury is likely in the

absence of an injunction.” (emphasis in original).

The Ninth Circuit has not directly addressed whether a presumption of irreparable harm

upon a showing of likelihood of success still exists in trademark infringement suits, but numerous

judges in this district have found that a plaintiff is not entitled to a presumption of irreparable

harm. See, e.g., Rovio Ent’mt Ltd., 2012 U.S. Dist. LEXIS 159257, at *14-15 (holding no

presumption and denying request for TRO); BoomerangIt, Inc. v. ID Armor, Inc., Case No. 5:12-

cv-0920 EJD, 2012 U.S. Dist. LEXIS 86382, at *9-10 (N.D. Cal. June 21, 2012) (same);

ConocoPhillips Co. v. Gonzalez, Case No. 5:12-cv-00576-LHK, 2012 U.S. Dist. LEXIS 20972, at

*5-6 (N.D. Cal. Feb. 17, 2012) (same, denying motion for TRO and preliminary injunction);

Groupion, LLC v. Groupon, Inc., 826 F. Supp. 2d 1156, 1167 (N.D. Cal. 2011) (same, denying

motion for preliminary injunction). One court in this circuit denied a preliminary injunction on a

Lanham Act false advertising claim where the plaintiff failed to establish likelihood of irreparable

harm even though all other factors favored the plaintiff. Leatherman Tool Group, Inc. v. Coast

Cutlery Co., 823 F. Supp. 2d 1150, 1158-59 (D. Or. 2011) (“[T]hree of the four factors—

likelihood of success on the merits, balance of the equities, and the public interest—favor

Leatherman. I cannot however, grant Leatherman’s request for a preliminary injunction because

it has failed to show a likelihood of irreparable harm.”). In analyzing irreparable harm, the Ninth


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Circuit has emphasized that “the correct standard is not whether there is a ‘possibility’ but

whether there is a ‘likelihood of irreparable injury.’” Stormans, Inc. v. Selecky, 586 F.3d 1109,

1138 (9th Cir. 2009) (quoting Winter, 555 U.S. at 26.); see also Caribbean Marine Servs. Co. v.

Baldrige, 844 F.2d 668, 674 (9th Cir. 1988) (“Speculative injury does not constitute irreparable

injury sufficient to warrant granting a preliminary injunction.”).

Plaintiff does not carry its burden of showing a likelihood of irreparable harm as it makes

only conclusory assertions of irreparable harm and provides no persuasive evidence. Plaintiff

argues that it will lose reputation and goodwill because the products Restoration Hardware

offered were inferior and cheaper. (Mot. at 21-22.) It provides no evidentiary support, relying

solely on a self-serving and equally conclusory declaration from Plaintiff’s CEO. (Id.) Plaintiff

provides no evidence of lost sales, price erosion,10 loss of market share, or even damage to

goodwill or reputation, only the speculative and subjective belief that it will be harmed. The

Leatherman court found that a declaration from “one of [plaintiff’s] senior executives to vouch

for [plaintiff’s harm]” was insufficient to establish likelihood of irreparable harm, as “plaintiff

must offer something more than a mere subjective belief that it is likely to be injured.”

Leatherman Tool Group, 823 F. Supp. 2d at 1158 (internal citation omitted). Similarly, the fact

that the infringing product was cheaper and plaintiff’s market position would be harmed did not

show irreparable harm. OG Int’l, Ltd. v. Ubisoft Entm’t, Case No. C 11-04980 CRB, 2011 U.S.

Dist. LEXIS 124020, at *27 (N.D. Cal. Oct. 26, 2011) (denying motion for preliminary

injunction).11 Plaintiff has not presented any real evidence of irreparable harm, only speculative

10 Plaintiff’s assertion that Restoration Hardware’s “low price point” “cheapens the entire

Navy Chair product line” is at odds with the facts. The market is already saturated with “navy chairs” priced below and above the Restoration Hardware chairs. (Sabri Decl. Exs. 8, 9, 13, 14.)

11 Plaintiff cites four cases to support its claim that loss of goodwill establishes irreparable harm, but each of the cases had ample evidence of irreparable harm and the courts did not rely solely on assertions of loss of goodwill. (See Mot. at 21-22.) Stuhlbarg Int’l Sales Co., Inc. v. Brush and Co., Inc., 240 F.3d 832, 840-41 (9th Cir. 2001), had evidence of threatened loss of specific customers. SunEarth, Inc. v. Sun Earth Solar Power Co., 846 F. Supp. 2d 1063, 1083 (N.D. Cal. 2012), had evidence of wider actual confusion. Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 313 (5th Cir. 2008), had evidence of a risk of loss of a $29 million contract and a small community at risk of confusion. Tempur-Pedic Int’l, Inc. v. Waste to Charity, Inc., Case No. 07-2015, 2007 U.S. Dist. LEXIS 11435, at *24-27 (W.D. Ark. Feb. 16, 2007), had

(Footnote continues on next page.)


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assertions of harm that are insufficient to satisfy Plaintiff’s burden.

Moreover, Plaintiff’s entire claim of irreparable harm is premised on an assumption of

future sales of the accused chairs. Restoration Hardware, however, has not sold a single chair,

and has told Plaintiff and this Court that it will not do so until the Court rules in this case.

Restoration Hardware promptly removed the word NAVAL from its website after it received a

cease-and-desist letter from Plaintiff’s counsel, and even locked down its inventory. (Edelman

Decl. ¶ 2.) It cancelled all outstanding orders for the chairs and informed customers who had

placed phone or internet orders that their chair orders would not be filled. (Id. ¶¶ 4, 6.)

Restoration Hardware also removed the SKUs of the accused chairs from its purchasing system

so the accused chairs cannot be sold. (Id. ¶ 3.)

This is not a situation where a defendant simply declares that it will not infringe in the

future; rather, Restoration Hardware has gone above and beyond to assure Plaintiff that there is

no chance of alleged infringement during the pendency of the case, despite substantial questions

on the merits. Defendants’ actions either moot the injunction outright, or at a minimum, make the

risk of irreparable harm extremely slight. See Nichia Corp. v. Seoul Semiconductor, Ltd., Case

No. 06-0162 MMC, 2008 U.S. Dist. LEXIS 12183, at *7-8 (N.D. Cal. Feb. 7, 2008) (denying

permanent injunction where defendants no longer manufactured product, only two accused

products had been sold, and technology in question was obsolete); see also Hypoxico Inc. v.

Colorado Altitude Training LLC, Case No. 02 Civ. 6191 (TPG), 2012 U.S. Dist. LEXIS 122830,

at *34 (S.D.N.Y. Aug. 28, 2012) (“With regard to the 150 tent, [defendant] no longer sells it, and

no injunction is necessary.”); Tyco Healthcare Grp. LP v. Applied Med. Res. Corp., Case

No. 9:09-cv-176, 2011 U.S. Dist. LEXIS 154686, at *5-6 (E.D. Tex. Sept. 23, 2011) (denying

motion for reconsideration where district court had previously held, “[Defendant] also represents

that it no longer makes or sells the accused products. To the extent that this is indeed the case,

(Footnote continued from previous page.)

evidence of gray market sales of mattresses that did not comply with plaintiff’s handling requirements.


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Plaintiffs’ argument regarding irreparable harm carries even less weight.”).

III. THE BALANCE OF HARDSHIPS DOES NOT FAVOR ISSUANCE OF A PRELIMINARY INJUNCTION.

To prevail, Plaintiff must establish that “the balance[e] of equities tips in [its] favor.”

Winter, 555 U.S. at 20. Courts “must balance the competing claims of injury and consider the

effect on each party of the granting or withholding of the requested relief.” Id. at 24 (citation

omitted). Because Plaintiff has not shown that it will suffer irreparable harm if an injunction does

not issue, Plaintiff has not identified significant hardships that will weigh in its favor.

By contrast, Restoration Hardware will suffer substantial hardship if Plaintiff’s proposed

injunction issues. It is overbroad, unduly burdensome, and grossly unfair. It would require that

Restoration Hardware provide a notice to all recipients of its catalogs that “the genuine Navy

Chair® products are available for purchase from Plaintiff and its authorized retailers.” (Pl.’s

Proposed Order ¶ 4.) In essence, Plaintiff wants Restoration Hardware to create free advertising

for Plaintiff, an excessive measure that “would not be remedial, but rather would be punitive.”

Supelco, Inc. v. Alltech Assocs., Case No. 86-2484, 1986 U.S. Dist. LEXIS 21236, at *14-15

(E.D. Pa. Aug. 25, 1986) (denying preliminary injunction in false advertising case that would

require recall of advertisements that had “limited effect”); JL Beverage Co., LLC v. Beam, Inc.,

Case No. 2:11-cv-00417-MMD-CWH, 2012 U.S. Dist. LEXIS 137076, at *48-49 (D. Nev. Sept.

25, 2012) (identifying recall of products and promotional materials as hardships that tip balance

in defendants’ favor). Additionally, these proposed remedies would not remedy Plaintiff’s

alleged harm. If harm was caused in September by exposing potential customers to a less

expensive version of a naval chair in the catalog (and Restoration Hardware certainly denies that

there was any harm), it is hard to fathom how reminding these customers of that chair now, three

months later, will improve the situation.

In addition to the financial cost of recalling catalogs and publishing a corrective notice,

Restoration Hardware will suffer a loss of goodwill with its customers that would be

disproportionate to any asserted harm of simply leaving the status quo in place. Such

overreaching corrective measures are should be avoided given that the record in this case is far


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from fully developed. Genovese Drug Stores, Inc. v. TGC Stores, Inc., 939 F. Supp. 340, 350-51

(D.N.J. 1996) (finding that harm from defendant being forced to change its name would be

irreparable and more devastating than the possibility of harm to plaintiff’s reputation).

IV. THE PUBLIC INTEREST DOES NOT REQUIRE A PRELIMINARY INJUNCTION

In trademark cases, “courts often define the public interest at stake as the right of the

public not to be deceived or confused.” Cytosport v. Vital Pharm., Inc., 617 F. Supp. 2d 1051,

1081 (E.D. Cal. 2009). Because Plaintiff has failed to establish that consumer confusion is likely,

the public interest weighs against granting an injunction. See JL Bev., 2012 U.S. Dist. LEXIS

137076, at *48-49 (public interest weighs against injunction where “the public is unlikely to be

confused”); Aurora World, Inc. v. TY Inc., 719 F. Supp. 2d 1115, 1170 (C.D. Cal. 2009) (same).

Though Restoration Hardware has stopped selling the products, granting an injunction

here would undercut the well-settled policy of “encouraging, not stifling, competition.” Calvin

Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 505 (8th Cir. 1987). The public

interest favors such competition because it offers consumers more choices. Id. (vacating

preliminary injunction where “strong public interest in lowest possible prices” not considered).12

CONCLUSION

For the foregoing reasons, this Court should deny Plaintiff’s motion for a preliminary

injunction and allow this case to proceed to a full and fair determination on the merits after there

has been adequate time for discovery.

12 Plaintiff argues that because Restoration Hardware has stopped selling the products, it

“is willing and able to assume any monetary loss risk as a result of an injunction” such that no bond is required. (Mot. at 24 n.12.) Plaintiff cites no authority and has not demonstrated why this Court should deviate from the plain language of Fed. R. Civ. P. 65(c), which requires a bond.


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Dated: November 16, 2012

MORRISON & FOERSTER LLP

By: /s/ Wesley E. Overson WESLEY E. OVERSON



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[PROPOSED] ORDER DENYING PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION CASE NO. 3:12-CV-5072 MMC 1sf-3219705





Plaintiff,

v.


Defendants.


[PROPOSED] ORDER DENYING PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case3:12-cv-05072-MMC Document26-1 Filed11/16/12 Page1 of 3

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Plaintiff Emeco Industries, Inc. (“Plaintiff”) has moved for a preliminary injunction in the

above-captioned matter. This motion came on for hearing on December 14, 2012 at 9:00 a.m.

Having considered the arguments of the parties and the papers submitted, Plaintiff’s Motion for

Preliminary Injunction is DENIED.

1. To succeed on its motion, Plaintiff must show it “is likely to succeed on the merits,

that [it] is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of

equities tips in [its] favor, and that an injunction is in the public interest.” Winter v. NRDC, Inc.,

555 U.S. 7, 20 (2008). The Court has discretion to consider these factors on a sliding scale and to

grant a preliminary injunction if the plaintiff can show serious questions on the merits, balance of

hardships tipping sharply toward plaintiffs, a likelihood of irreparable injury and that the junction

is in the public interest. Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir.

2011). Plaintiff has not met the preliminary injunction standard.

2. Plaintiff has not demonstrated a likelihood of success on the merits. NAVY

CHAIR and THE NAVY CHAIR are likely generic and therefore unprotectable. Filipino Yellow

Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1146-1147 (9th Cir. 1999) (“A generic

term . . . . cannot become a trademark under any circumstances.”). Plaintiff’s asserted chair trade

dress is also likely generic and functional, and therefore unprotectable. Sunrise Jewelry Mfg.

Corp. v. Fred S.A., 175 F.3d 1322, 1323 (Fed. Cir. 1999) (“[W]e conclude that the registration of

an incontestable mark that is a product design may be cancelled if the mark is generic.”); Walker

& Zanger, Inc. v. Paragon Indus., Inc., 465 F. Supp. 2d 956, 961 (N.D. Cal. 2006) (“[G]eneric

product designs are unprotectible even upon a showing of secondary meaning.”);15 U.S.C.

§ 1115(b)(8) (incontestable trade dress registration subject to “defense[] or defect[]” that “the

mark is functional”).

3. Plaintiff has also not demonstrated a likelihood of success on the merits as

confusion between its asserted trade dress and trademarks and the phrases or chairs that appeared

on Restoration Hardware’s website and in Restoration Hardware’s catalog is unlikely. Surfvivor

Media, Inc. v. Survivor Prods., 406 F.3d 625, 629-30, 633 (9th Cir. 2005) (trademark


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infringement claim requires likelihood of confusion, and survey showing less than 2% confusion

demonstrated “absence of significant confusion.”).

4. The phrases that appeared on Restoration Hardware’s website and in Restoration

Hardware’s catalog are likely protected by the defense of fair use. KP Permanent Make-Up, Inc.

v. Lasting Impression I, Inc., 543 U.S. 111, 124 (2004) (fair use defense available where term

used “descriptively, not as a mark, fairly, and in good faith.”).

5. Plaintiff has offered no evidence that it is likely to suffer irreparable harm in the

absence of an injunction. A showing of likely irreparable harm is required to obtain a preliminary

injunction. Winter, 555 U.S. at 20.

6. Plaintiff has not demonstrated that the balance of equities tips in its favor, nor has

it demonstrated that an injunction is in the public interest, which it is also required to show to

obtain an injunction. (Id.)

7. The Court finds that even when the Winter factors are considered using a sliding

scale as is permitted under Alliance for the Wild Rockies, 632 F.3d at 1135, the evidence that

Plaintiff offers does not support the granting of a preliminary injunction. Specifically, Plaintiff

has not shown that the balance of hardships tips sharply in its favor, has not offered any evidence

of irreparable harm, and has made an inadequate showing on the issue of public interest.

Moreover, Plaintiff has not shown that there are serious questions on the merits given the

potential deficiencies in its claim of trade dress and trademark rights, and the absence of evidence

on the likelihood of confusion factors.

IT IS SO ORDERED.

Dated: _______________________ ______________________________ Hon. Maxine M. Chesney

United States District Judge


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DECLARATION OF JASON EDELMAN CASE NO. 3:12-CV-5072 MMC sf-3218024







Plaintiff,

v.


Defendants.


DECLARATION OF JASON EDELMAN


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DECLARATION OF JASON EDELMAN CASE NO. 3:12-CV-5072 MMC 1sf-3218024

I, Jason Edelman, declare:

1. I am a Senior Vice President of Indoor Furniture Merchandising at Restoration

Hardware, Inc. I am located at the corporate headquarters in Corte Madera. My job duties

include managing the assortment of furniture products for sale to the public. As part of my

regular job duties, I work with our vendors to make sure that our supply is adequate for customer

orders coming in through our website, stores, and call centers. I make the statements herein based

upon my personal knowledge and on records maintained in the ordinary course of business.

2. Restoration Hardware distributed the “Big Style, Small Spaces” catalogue to

roughly 8 million households in early September 2012. Thereafter, Emeco complained that the

“1940s Aluminum Naval Chair” violated its trademarks. Restoration Hardware initially took the

word “Naval” out of its description of the chairs on the Internet and renamed the chair “Standard

Aluminum Chair.” However, after letters were exchanged by each sides’ attorneys, Emeco filed a

lawsuit on October 1, 2012, alleging that the chairs still violated various rights. Within two days

thereafter, Restoration Hardware took action to stop marketing the chairs and halted the

production of further chairs. I was the point person at Restoration Hardware for managing that

process.

3. We track our sales and inventory using “SKU” numbers. A “SKU” or “stock-

keeping unit” is a unique number or code used to identify each product for sale in our stores,

catalogues, or websites. The SKU enables the company to track its inventory and product

availability in warehouses and retail outlets. Without a SKU on the system, a product may not be

sold through any of our sales channels. On October 3, 2012, Restoration Hardware restricted and

made inactive the SKU numbers for all of the aluminum chairs at issue in this case, including the

side chairs, the armchairs, the bar stools, and the counter stools. This prevented the sale of these

products from that point forward.

4. On October 3, 2012, I also instructed Kristin Kitterman, who heads up our call

centers, to tell the operators to stop accepting phone orders for the chairs. Additionally, I

instructed Jennifer Skiba, the person in charge of communicating from the corporate office to our

in-store sales staff, to halt sales efforts in our stores. None of these chairs ever made it into any


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DECLARATION OF JASON EDELMAN CASE NO. 3:12-CV-5072 MMC 2sf-3218024

stores. We adjusted the website so that no further orders could be made over the Internet. We

also promptly instructed customers that had already placed orders that the chairs were no longer

available. Customers had ordered a total of 640 chairs at that point. None of those chairs were

shipped to customers. All of these customers were told that the chair was no longer available.

5. Although no orders could be placed as of October 3, 2012, and it was no longer

offered for sale, we initially left the chair in photographs on our website that included other items

for sale, for example, a table. On October 11, 2012, we took the additional step of removing the

remaining photographs of the chair from the website.

6. Restoration Hardware also cancelled all orders with Amanson on October 3, 2012.

Attached as Exhibit 1 is a true and correct copy of an email cancelling Restoration Hardware’s

orders with Amanson, which I received on October 3, 2012.

7. We confirmed after the cancellation notice that Amanson stopped making the

chairs which Restoration Hardware had ordered and also confirmed that all finished inventory had

been shipped. Attached as Exhibit 2 is a true and correct copy of an email exchange with

Amanson, which I received on October 17, 2012.

8. Before we cancelled our purchase orders, Amanson had already manufactured

chairs and shipped them out on container ships bound for our distribution centers in

Essex/Baltimore, Maryland and in Mira Loma/Los Angeles, California. Amanson has informed

us of the order numbers that were shipped, and these orders covered a total of 4825 chairs. Prior

to the arrival of the shipments of these chairs in the United States, I alerted the heads of the

distribution centers that when the Amanson containers arrived, they should keep the chairs under

lock and key and not attempt to place them into our inventory that is available for shipment.

Additionally, so there were no doubts as to these instructions, on October 24, 2012, I followed up

with a more formal memorandum sent to all relevant personnel at the distribution centers.

Attached as Exhibit 3 is a true and correct copy of that memorandum.

9. So far, 2,416 Amanson chairs have arrived in the United States at the Restoration

Hardware distribution centers. There are 837 in the Baltimore distribution center and 1,579 in the

Los Angeles distribution center. I understand that there are currently four more containers of



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2 chairs at the port in Baltimore. These containers will be brought to our distribution center as soon

3 as possible.

4 10. All of the Amanson chairs that have arrived at our distribution centers are secured

5 in locked and sealed containers with signage making clear that they are not to be opened. The

6 keys are held by one person in each respective facility. Subsequent shipments will be handled in

7 the same fashion. Restoration Hardware has issued strict orders to the persons holding the keys

8 that they are not to release any of the chairs or check them into inventory, pending the outcome of

9 this case.

10 11. The style ofthe "1940s Naval Chair" is fairly common. Last weekend, I was at a

11 local mall called "Northgate" in San Rafael, California. The chairs in the food court of the mall

12 were in the same naval style as the ones in the Restoration Hardware catalogue. I turned a chair

13 over and saw a sticker that reflected that the chairs were made in China. Attached as Exhibit 4

14 are photographs from the food court. They are true, fair and accurate representations of the chairs

15 that I saw this past weekend.

16 I declare under penalty of perjury that the foregoing is true and correct and that this

17 declaration was executed by me this 15th day ofNovember 2012 in Corte Madera, California.

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DECLARATION OF JASON EDELMAN CASE NO. 3:12-CV-5072 MMC sf-3218024

3

EXHIBIT 1



From: Sent: To: Cc: Subject: Attachments:

Dear Aian,

Bonnie Orofino [[email protected]] Wednesday, October 03, 2012 4:09 PM [email protected] Fran Hamman; Mark A. Steiner; Jason Edelman Amanson Group Emeco v. RH Complaint. pdf

We are writing to inform you that on October 1, 2012 US. chair manufacturer Emeco Industries, Inc. filed a lawsuit against Restoration Hardv•.rare, Inc. and Gary Friedman in lJ. S. federal district cou..rt in California w·ith regard to the aluminum chairs you have supplied to us. As you can see in the attached copy of the Complaint, Emeco alleges that the chairs are knockoffs of its "Navy Chair," and brings claims for unfair compent10n and infringement of its trade dress and trademarks under U.S. federal and California state law, counterfeiting of its trade dress and trademarks under US. federal law, and dilution of its trade dress and trademarks under US. federal law We will need to cancel all pending orders with A manson Group while we investigate and respond to Emeco's claims. Please confirm immediately that you \x.rill cancel these orders.

Thank you.

Very truly yours,

Bonnie Orofino Chief1'v1erchandising Officer Restoration Hardware (415) 497-6740

CONFIDENTIAL REST00000186

EXHIBIT 2


Case3:12-cv-05072-MMC Document26-4 Filed11/16/12 Page2 of 5iil7ii2 R H Maii- Amanson Purchase orders

Jason Edelman <[email protected]>

Amanson Purchase orders

Joseph Brody <[email protected]> Wed, Oct 17, 2012 at 5:39AM To: Leah Reed <[email protected]>, Jason Edelman <[email protected]>, Karen Johnson-Levitt <[email protected]> Cc: Sarah Dashfield <[email protected]>, Fran Hamman <[email protected]>, Stone Liu <stoneliu@restorationhardware_com>, Am anson Alan <alan@amanson_com>

Hi All,

FYI, Alan replied to my e-mail (see below) that as of September the factory already shipped orders:

PO#l352177

P0#1352181

P0#1352184

PO#l352187

PO#i372492

PO#i372493

Over the phone, he aiso confirmed with me that he received the notices for order canceiiation, and the factory has stopped producing product for orders not iisted aiJove.

He aiso confirmed that there is no finished inventory of RH product in the factory, and none is being produced.

Raw materials were ordered for tr1e cancelled orders, but the factory will try to make use on other products.

Best,

Joseph Brody

https:l/mail.google.com/mail/?ui=2&ik=695d4778ce&view=pt&as_from=jbrody%40restorationhardware ..


1/4


Sourcing and Product Integrity Asia

www.restorationhardware.com

Mobile: +86 189 3069 0101

From: Amanson Alan [mailto:[email protected]] Sent: \1\fednesday, October 17, 2012 6:13PM To: RH D- Joseph Brody Cc: RHD- stoneliu Subject: @1~: FVV: Amanson Purchase orders

HI jos-eph Brody:

HJliTdi':;ct±:WriTJflPO#l352177, 1352181. 1352184, 1352187, 1372492, 1372493

2012-10-17

Best Regards Alan

AMAI\'SOI\' GROUP ********* AMANSOr\ ':":":":'*****

AMA!I!SO!I! GROUP GO., LTD

E-Jv1AIL: [email protected]

:&itf'FA: .losepill>rody

Jltitlt.tliil: 2012-10-17 14:40

J&ft A : 'A manson Alan'

fj)}~: 'Leah ReexJ; 'Jason Edelman'; 'Sarah Dashriehl'; 'Fran Hamm;m'; 'SLone Liu'; 'Karen Johnson-LevitL'

.±JIIIlJ : F\V: A manson Purchase orders

Hi Alan,

https:l/mail.google.com/mail/?ui=2&ik=695d4778ce&view=p1&as_from=jbrody%40restorationhardware ..

CONFIDENTIAL

2/4

REST00000356


Alan f!f</,i(

Nice to speak with you just novv.

The US office would like to confiim you have ieceived cancellation notices foi the Oideis belovv.

Piease aiso confirm that there is no finished product stiii in the factory. Finished product made for RH has already aii been shipped to I<.H.

Cancelled Purchase orders 10.15.12

Store I(AII); '"I !~<.MANSON GROUP CO .. LTD '·rl

'I 52rlDI 13521a11 r 13s21fl4l

i3.5.21ll71 i352HJOI 13521931 H52196l 13521\l!ll iJS€5221 13565261 135B5:m I 1356SJ21

1 1:lsfi~.1:l1 I 1:i~fi~:i~l

II i :i~fi~.i 41

135..3;451 G~na·ro:tar··········l ···············································································t

if you have any questions, feei free to be in touch.

Thanks for your help.

I Total I MG I 4(){}

1,.275 a9n il5D HQ

1.245 392

j ,303 B49 845 .>92

3..298 1,.298 }.g2

I 12:760



3/4


Best,

Joseph Biody

Restoration Hardware


www. restorationhardware.com

iviobile: +86 189 3069 0101

https:l/mail.google.com/mail/?ui=2&ik=695d4778ce&view=pt&as_from=jbrody%40restorationhardware .. 4/4


EXHIBIT 3



IMPORTANT NOTICE

TO: :Richard O'Donnell, V.P., Supply Chain Operations Anthony Yucn, Director, Supply Chain Operations Joe lVicCiure, Director of Customs and Internationai Transportation Robert Forte, V.P. of Furniture Warehouses Frank Quint, Director of Domestic Transportation Mike McKay, Sr. V.P. of Supply Chain Operations Paul Gargag!iano, Director of Distribution Center (Los A.nge!es) Ken Dunaj, Chief Operating Officer Rex Stratton, V.P. of Aiiocations Glen Burger, V.P. of Transportation

FROM: Jason Edelman, Sr. Vice President Indoor Furniture Merchandising

OA Tli:: October 24, 2012

RE.: ."' .. !uminum Chairs Ordered from ,.\manson Group Co., Ltd.

Further to my instructions of October 3, 20i2, this is an important reminder notice to everyone involved in the receipt of shipments and maintenance of inventory at the Distribution Centers that all of the following items ordered from Amanson Group Co., Ltd. are restricted:

RH Ret"i) SKI I Item Nwnber rolor rone CW TTFM nescrintion

,:;:"')"')()(\1111 ,<:;"')"')(\(\11'2 ATTTl\Jf ATTTl\lf 1\.T A "\T t\ T AU l\ t1F'll A TD V£...£...VV I I "T V£...LVVI IJ .'"\.LJ\...)1¥1 L1.LJU lVI 1~.'"\.V"-L.. L1.1'1.1VIV11.'1.11"-

62200113 62200113 BLK ALUl'vi NAVAL ARl'viCHAiR

62200115 62200113 WHT ALUM NAVAL ARMCHAIR

62200117 62200116 ALUM ALUM NAVAL BARSTOOL

62200116 62200116 BLK ALUM NAVAL BA_RSTOOL

62200119 62200116 \VHT i~ .. LlJ1\1 1'JA\TAL BARSTOOL

,....-,....,....AAI,....,.... ,....-,....,....AAI,....A ~ T T T1l. K ~ T T T1l. ,- -..T~"IT~T r'l.r'I.T T1l. T"T'T""Tl U.L...L..VVl.L...L.. U.L...L..VVl.L..V 1"\.LUlVl ftLUlVl l '\J 1"\_ V ftL LVUl'\J l.CK

STOOL

62200120 62200120 BLK ALUM NAVAL COUNTER STOOL

62200123 62200!20 WHT ALU!\1 NAVAL COUNTER C'T'rt.r\T >JLVV_L__:



62200125 62200124 ALUM ALUM NAVAL SIDE CHAIR

62200124 62200124 BLK ALUMNA VAL SIDE CHAIR

62200126 62200124 WHT ALUM NAVAL SIDE CHAIR

This 1neans that all inventory received from A1nanson for the above SKUs are to be:

• Kept quarantined at the Distribution Centers apart from other merchandise

• Labeled clearly "RESTRICTED INVENTORY: DO NOT SELL, DO NOT DISTRIBUTE, DO NOT MOVE"

All quesrions are robe direcred rome personaiiy. The status of this inventory is not to be changed without further notice from upper management of Restoration Hardware.

2


EXHIBIT 4



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DECLARATION OF ROBERT FORTE CASE NO. 3:12-CV-5072 MMC sf-3216963







Plaintiff,

v.


Defendants.


DECLARATION OF ROBERT FORTE


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DECLARATION OF ROBERT FORTE CASE NO. 3:12-CV-5072 MMC 1sf-3216963

I, Robert Forte, declare:

1. I am employed at Restoration Hardware, Inc., and am responsible for all

operations at Restoration Hardware’s distribution centers, including the one in Essex, Maryland

near Baltimore, where I work on a daily basis. We regularly receive sea containers from the port

here in Baltimore. The sea containers are unloaded from ships and trucked from the port to our

facility in Essex for processing. We normally take inventory out of the shipping containers and

then enter the contents into our electronic inventory system indicating that the products are

available for shipment to customers.

2. On November 8, 2012, we received two sea containers of “1940s aluminum naval

chairs” from Amanson in China. Before the container arrived, we had been instructed to keep all

containers received from Amanson locked and not to accept any of the chairs into inventory.

3. On November 12, 2012, my staff moved the chairs from their original sea

containers to other secure land containers within our distribution center. I personally directed this

process and oversaw the sealing and locking of the inventory into the land containers.

4. As we transferred the inventory from sea containers to land containers, we kept a

record of how many chairs were in each container. A true and correct copy of this record of the

inventory is attached as Exhibit 1.

5. One of my direct reports, Andrew Beyea, holds the keys that open each of the

padlocks that were applied to the containers. He has been instructed not to open these containers

until receiving authorization from me to do so.

6. We are informed that there are 4 more containers of Amanson chairs at the port

here in Maryland. The inventory of these containers and any further shipments to arrive from

Amanson with “1940s aluminum naval chairs” will be handled in the same fashion as we handled

the earlier containers discussed above. We will unload them from their sea containers, and then

immediately load them into land containers with seals, signage, and padlocks, and only Mr.

Beyea will hold the keys to open them.



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I declare under penalty of perjury that the foregoing is true and correct and t~ this

declaration was executed by me this it day of Jo U 2012 at { ~. ':{'7 ~ Maryland.

DECLARATION OF ROBERT FORTE

CASE NO. 3:12-cv-5072 MMC sf-3216963

2

EXHIBIT 1


BDC NAVAL Chair‐Quarantined BDC NAVAL Chair‐Quarantined

Container Number CRXU9066516 Container Number FSCU6635060

Units Unloaded UNITS CARTONS UNITS CARTONS

sku 62200124ALUM 200 110 62200113ALUM 45 45

sku 62200124BLK 220 110 62200113BLK 35 35

sku 62200124WHT 130 65 62200113WHT 25 25

62200116ALUM 24 24

62200116BLK 25 25

Units Loaded Onto Storage Trailer UNITS CARTONS 62200116WHT 20 20

sku 62200124ALUM 200 110 62200120ALUM 23 23

sku 62200124BLK 220 110 62200120BLK 25 25

sku 62200124WHT 130 65 62200120WHT 25 25

62200124ALUM 40 20

UNITS CARTONS

62200113ALUM 45 45

62200113BLK 35 35

62200113WHT 25 25

62200116ALUM 24 24

62200116BLK 25 25

62200116WHT 20 20

62200120ALUM 23 23

62200120BLK 25 25

62200120WHT 25 25

62200124ALUM 40 20

Storage Trailer Number 462 606

Seal Number 38555 38547

Seal,Lock and Quarantine Verified by Andrew Beyea Andrew Beyea

Date 11/12/2012 11/12/2012


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DECLARATION OF PAUL GARGAGLIANO CASE NO. 3:12-CV-5072 MMC sf-3216960







Plaintiff,

v.


Defendants.


DECLARATION OF PAUL GARGAGLIANO


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DECLARATION OF PAUL GARGAGLIANO CASE NO. 3:12-CV-5072 MMC 1sf-3216960

I, Paul Gargagliano, declare:

1. I am employed at Restoration Hardware, Inc. and am responsible for operations at

Restoration Hardware’s Mira Loma distribution center in Southern California. We regularly

receive sea containers from the port. The sea containers are unloaded from ships and trucked

from the port to Mira Loma for processing. We normally take inventory out of the shipping

containers and then enter the contents into our electronic inventory system indicating that the

products are available for shipment to customers.

2. On October 15, 2012, we received the first sea container of “1940s aluminum

naval chairs” from Amanson in China. Before the container arrived, we had been instructed to

keep all such containers from Amanson locked, and not to unload them or accept any of the chairs

into inventory.

3. On October 16, 2012, we received a second container of chairs from Amanson.

4. On October 22, we received a third container of chairs from Amanson.

5. All of the chairs that arrived at the Mira Loma distribution center remained

undisturbed in their sea containers through November 8, 2012, apart from one incident. On

October 16, 2012, one of my employees opened a container and began unloading it. This was

brought to my attention, and all of the chairs were placed back into the container. This was an

unacceptable error, and I apologized to my colleagues at the company headquarters for this

mistake. Attached as Exhibit 1 is a true and correct copy of an email I sent regarding this

incident.

6. Restoration Hardware does not own the sea containers themselves and must pay a

penalty for retaining them for an extended period. In order to return the sea containers to their

owner, on November 8, 2012, we moved the chairs from their original sea containers to other

secure land containers within our distribution center. I personally oversaw the sealing and

locking of the inventory into the land containers. Attached as Exhibit 2 are photographs of the

four containers where the Amanson chairs are secured. For each container, there is a photograph

from a distance showing the container number, and then a closer photograph showing the

padlock, the seal, and the signage on the door of the container. I personally took these



1

2 photographs, and they are true, accurate, and fair representations of the containers as they appear

3 today.

4 7. As we transferred the inventory from sea containers to land containers, we kept a

5 record of how many chairs were in each container. I created a summary of the Amanson

6 inventory received in Mira Lorna, which is attached as Exhibit 3.

7 8. I personally hold the key that opens each of the padlocks that were applied to the

8 containers. I will not open these containers until I receive authorization to do so.

9 9. Any futiher shipments to arrive from Amanson with "1940s aluminum naval

1 0 chairs" will be handled in the same fashion as we handled these past shipments. We will unload

11 them fi·om their sea containers, and then innnediately load them into land containers with seals,

12 signage, and padlocks, and only I will have the key to open them.

13

14 I declare under penalty of perjury that the foregoing is true and correct and that this

15 declaration was executed by me this J!j_ day of II o V

16 California.

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DECLARATION OF PAUL GARGAGLIANO CASE No. 3: 12-CV-5072 MMC sf-3216960

2012 at II: d-. iJ Am

2

EXHIBIT 1



From: Sent: To:

Paul Gargagliano [[email protected]] Tuesday, October 16, 2012 10:01 AM Mike MacKay

Cc: Jason Edelman; Kristin Sjoholm; Robert Forte; Bryan Hooper; Karen Johnson-Levitt; Leah Reed; Jasper Davis

Subject: Re: Amanson

Team,

I apologize for the failure of receiving in these units. The items have been moved tram sellable inventory and \-vill be located onto trailers today. I \vill have O\·vnership of future loads for the }.Javal chairs and control of their flo\\r to LADC inventory.

Sincerely

Paul

On Tue, Oct 16, 2012 at 9:42AM, Mike MacKay <[email protected]> wrote:

Undcceptdble ... this is dn LA rec error.

Paul- please confirn1 that you will take full ownership go forward and not allow this to happen to any subsequent loads irom this vendor.

Thanks-

Mike

From: Jason Edelman [mai!to:iede!man®restorationhardware.com] Sent: Tuesday, October 16, 2012 9:10AM To: Mike MacKay; Kristin Sjoho!m Cc: Karen Johnson-Levitt; Leah Reed; Jasper Davis Subject: F\A.'d: Amanson

Mike and Kristin,

It appears that a container from i~,._lnanson, the chairs \Ve are being sued for, has been open and received.

We gave direction that these were to remain in the yard sealed. What happened?



Can you please cont1rm if any other containers were opened and that no more will be opened in the future.

Thank you.

Sent from my iPhone

Begin forwarded 1nessage.

From: Leah Reed <lreecl@restQLatiQnhardware.<:Qm> Date: October 16, 2012 9 04:24AM PDT 'Tn• T~Qnn brlPlm~n <iPrlPlm~nrfilrPdnr~tinnh~rrh:u~rP rnm> ~ ~. U ~~~LL ~ ~~LLLL~~LL J-::":'.~.:":'-~.':c~.-'o:'".':C~-""~'""--"'-'o': . .,:'o':~.-"-~-~-""-~-""~-"':'"-~~-"'-~--·-!.:':':o'" .. ~,-~_'c:_-'o~-""

Cc: Karen Johnson-Levitt <klevitt@restorationhard\vare.com> Subject: Re: Amanson

97, please be sure to put Kristin Sjoholm and Mike Me Kay on it, in case the de received conflicting information from someone in supply chain

Leah Reed

V.P. Furniture Planning and Production

Furniture Restoration Hardware

(415) 945-3486

On Tue, Oct 16, 2012 at 9:01 AM, Jason Edelman <jedelman({1l.restorationhardware.corn> wrote:

Wtf Which de.

Please do not reach out to the vendor about anything.

Sent from my iPhone

On Oct 16, 2012, at 8:43 A~v1, Karen Johnson-Levitt <[email protected]> vvrote:

I will address J's Q separately- but- can u confirm if there has been a change in direction here as it sounds like de's broke contr seal and are rec'vg goods?

From: Jenae Spain [maiito:i~.P.<!J.o.@r~i9.r.<!il9D.b.<!.r.dw~.r.~ .• ,.9ID] Sent: Tuesday, October i6, 20i2 08:37 AM To: Karen Johnson-Levitt <klevitteiilrestorationhardware.com>



Subject: Amanson

Hi Karen,

Who is the contact for Amanson? I got an email from the DC about a SKU they received having a shortage of 6 units even though GTN shows shipped in full. I just \Vanted to email the vendor to get the packing list so I can see \Vhat actually shipped.

\Xlith Kind l?._cgards,

PLANNING COORDINATOR, TRICHANNEL FURNITURE

Restoration Hardware ! 415.945.4618

Paul Gargagliano- Director of Operation -LA Distribution Center Ofc 951 332 3505 Cell 740 490 5127


EXHIBIT 2



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U.S. Department of Transportation

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~PAULG 8Ef()f£ MOVING 1R41ll H

a £AKING lHISs=Al

EXHIBIT 3


LADC NAVAL Chair‐Quarantined 11/8/2012

Container Number TCNU8037676 Container Number BSIU9433729

Units Unloaded 250 units/250 cartons 554 units/277 cartonssku 62200113ALUM 45 units/45 cartons 62200124ALUM 230 units/115 cartonssku 62200113BLK 35 units/35 cartons 62200124BLK 194 units/97 cartonssku 62200113WHT 25 units/25 cartons 62200124WHT 130 units/65 cartonssku 62200116ALUM 25 units/25 cartons sku 62200116BLK 25 units/25 cartonssku 62200116WHT 20 units/20 cartonssku 62200120ALUM 25 units/25 cartonssku 62200120BLK 25 units/25 cartonssku 62200120WHT 25 units/25 cartons

Units Loaded Onto Storage Trailer 250 units/250 cartons 554 units/277 cartonssku 62200113ALUM 45 units/45 cartons 62200124ALUM 230 units/115 cartonssku 62200113BLK 35 units/35 cartons 62200124BLK 194 units/97 cartonssku 62200113WHT 25 units/25 cartons 62200124WHT 130 units/65 cartonssku 62200116ALUM 25 units/25 cartonssku 62200116BLK 25 units/25 cartonssku 62200116WHT 20 units/20 cartonssku 62200120ALUM 25 units/25 cartonssku 62200120BLK 25 units/25 cartonssku 62200120WHT 25 units/25 cartons


Seal Number 1925749 1925750

Seal,Lock and Quarantine Verified by Paul Gargagliano Paul Gargagliano

Date 11/8/2012 11/8/2012

Padlock key is held by Paul Gargagliano. Both locks can only be opened by the same key.


LADC NAVAL Chair‐Quarantined 11/8/2012

Container Number FCIU8719496 Container Number TCLU5004563

Units Unloaded 375 units/250 cartons 400 units/250 cartonssku 62200116ALUMTR 125 units/ 125 cartons 62200113ALUM 100 units/100 cartonssku 62200124ALUMTR 250 units/125 cartons 62200124ALUM 100 units/50 cartons

62200124BLK 100 units/50 cartons62200124WHT 100 units/50 cartons

Units Loaded Onto Storage Trailer 375 units/250 cartons 400 units/250 cartonssku 62200116ALUMTR 125 units/ 125 cartons 62200113ALUM 100 units/100 cartonssku 62200124ALUMTR 250 units/125 cartons 62200124ALUM 100 units/50 cartons

62200124BLK 100 units/50 cartons62200124WHT 100 units/50 cartons


Seal Number 101552 101551

Seal,Lock and Quarantine Verified by Paul Gargagliano Paul Gargagliano

Date 11/8/2012 11/8/2012

Padlock key is held by Paul Gargagliano. Both locks can only be opened by the same key.


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DECLARATION OF FRAN HAMMAN CASE NO. 3:12-CV-5072 MMC sf-3216953







Plaintiff,

v.


Defendants.


DECLARATION OF FRAN HAMMAN


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DECLARATION OF FRAN HAMMAN CASE NO. 3:12-CV-5072 MMC 1sf-3216953

I, Fran Hamman, declare:

1. I am a Senior Vice President in charge of Sourcing at Restoration Hardware, Inc.,

a company that sells home furnishings through catalogues, the Internet, and over 70 retail stores.

My job duties include identifying manufacturers of furniture that will be sold at Restoration

Hardware, which does not own or operate any manufacturing facilities, but rather contracts with

third-party vendors for the manufacture of its merchandise. I make the statements herein based

upon my personal knowledge and on records maintained in the ordinary course of business.

2. Our sourcing strategy focuses on identifying and using vendors that can provide

the quality materials and craftsmanship that our customers expect of our brand, while still

offering value on the price. To ensure that our high standards of quality and timely delivery of

merchandise are met, we work closely with vendors and manufacturers, including those that are

located in China. We have personnel in China who work on a direct basis with vendors there.

3. In May of this year, our product team asked me to find manufacturers of new

products for a Fall catalogue, which eventually was named “Big style, small spaces.” Given the

timeline, we needed to find sources for scores of new products in an expedited fashion.

4. One of the new product lines included “mid-century modern” chairs to be included

in the new catalogue, and I asked one of our employees in China, Stone Liu, Senior Leader-

Sourcing and Product Integrity, to investigate manufacturers of such products. He visited two

possible manufacturers of metal chairs, Amanson and Xuda, at their factories in China, and had

each of them send exemplars of the chairs that they had in their existing line.

5. We eventually received metal chairs from Xuda and from Amanson in Corte

Madera and decided to include in our catalogue one of the aluminum exemplars that was in the

existing Amanson line. This chair was later described as the “1940s aluminum naval chair” in

our “Big style, small spaces” catalogue.

6. After negotiating the pricing, Restoration Hardware placed initial orders with

Amanson on July 13, 2012. Attached as Exhibit 1 is a true and correct copy of the first purchase

order that we sent to Amanson.

7. Restoration Hardware cancelled all orders with Amanson on October 3, 2012.



1

2 Attached as Exhibit 2 is a true and correct copy of an email cancelling Restoration Hardware's

3 orders with Amanson. I was copied on this letter and received it on October 3, 2012. Thereafter,

4 we also reconfirmed with Amanson that they received the cancellation and understood that they

5 should cease all further manufacturing of the product. Attached as Exhibit 3 is a true and correct

6 copy of an email exchange with Amanson confirming the cancellation of Restoration Hardware's

7 orders and the fact that all inventory had been shipped, which I received on October 17, 2012.

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8. Amanson chairs that were shipped prior to the cancellation of orders have begun to

arrive in the United States at the Restoration Hardware distribution centers. To my knowledge,

these chairs have been held in the distribution centers where they were shipped and have not been

released for sale to customers.

I declare under penalty of perjury that the foregoing is true and correct and that this

declaration was executed by me this 14th day ofNovember 2012 in Corte Madera, California.

DECLARA TJON OF FRAN HANNAM

CASE No. 3:12-cv-5072 MMC sf-3216953

Frances Hamman

2

EXHIBIT 1



RESTORATION" HARDvV ARE 15 Koch Road, Suite J

C::ortR MnrRc1n, C::A 949~5 Phone: (415) 924,1005 Fax: (415) 927-9133

I RH MAIN L_Purchase Order

Vendor# 17422

PO OrderDate 7/13/12 7/13/12

1 .Revision.# SbipVra I I 7 Ocean I

t:ariiest ;-;;h_lppate LatSst·b_hlp Dafe_ I I 9/15/12 9/20/12

ReVisiqn-'Date

L___ FURN CASE - MARK SVERDLiK

I Bill To: !Restoration Hardware

115 Koch Road

!Suite J

!Corte Madera, CA 94925

I US United States

~-hi'nTn• -.. - . - -- .

Page 1 of 3

PO#: I 13521771 L__.__.__.___ _______ ~

~~~~~ -~O_ASi- Fl JRNITi iRF nc::' r'oo~7i

11116~0 H_AR~EL Sr~EE~ -- - ,-- ,

SlJlTF R

I ~~au~~:;·;;;e~17" ··.•:F.O$.: I paymen~ ·1 errns Guangzhou I :~Due Date ' t~-6rnarks l I 0/18/12

l!q~·e:_'oa!~-:-~-,-- -1:.rY{1.B!i2 11 :~:1~:~ ~:h1f}.b.;1te_~ 9lt5!l? _ -l~at!1~t Ship:Date-:; ft/20/12 -- ;_J~ht~\n~~-: -, .Ocearr· ·:. ~~~-" ;. :.; .. } -: ·- '-:-J1

:- ->- .:: .-l _,. _ _.- ··-- -- _:_:.-- :-/·---:-:·. -f ·.: :··:- :~ - ~ < .. :.~- I 1AMS-90iC/SH76 1cavunc jl•.LUM t.~.~~~y~-~~8.V.8.LBl\RSTOOL,l\LUM I 2·5r < ~;.060~ ;·,,Q?~-~~0-~

IDueD'ate: 1011?1!2 lcilrliestShip Date: !)115/12 [Latest Ship Date:. 9/201.12 j~hlp'M' 'kJCean> .. .. ..... ><; r ··r ·• ........ T ' - ... ...... I



Page 2 of 3

RESTORATIOt~ HARDvVARE PO#: I 13521771

15 Koch Road, Suite J Corte ~/!areda, C.A. 94925

Phone: (415) 924-1005 Fax: (415) 927-9133

Vendor# 17422

1

vend6r:

~~;~·:;~s~~:7:~:;: ~;-·LTD ~~~,A~~o;J~;~~~;~ ~~ADU 1Guo.ngzhou 510897 leN Chin<3

RH MAIN Purchase Order I

jBii!To: I Restoration Hardware j15 Koch Road jsuite J

jcorte Madera, CA 94925

jus United States

rc;.:;;..,T;..,.., -.. - ,, - . . . -- , , . . ,,

I fjevisl<ll'(# :·Ship Via 1 .• >F,OcB ·• ,,--- I ·.·PayinentT erms · 7113112 I 7/13/12 I 7 Ocean I Guangzhou I

1 EarlieSt Ship pate Late~tShiP l)ate I ~ :uue_·uat~'- I HemcukS: :,;;:·· 9ii5ii 2 9/;:::0/iz i0!i8/i2

. suyet: t-UHN cA::>t:- MAHK ::>Vt:HULiK

[ALLJM NAVAL BARSTOOLWHT j -· 2ol 46 oool !Ship Via: Ocean I I . I

920.0001

jALUM NAVAL COUN I EH s I OOL t5LK I 251 44.0001 i ,iOO.OOOj

I Due Date: 1 D/18112 I Earliest Ship Date: 9/15/12 I latest Ship Date: 9/20/12 I Ship Via Ocean I j I I

jAM$:~18-WH,. · .· J6;12001zo · '·\Wrrr' · jALUf11NAVALCOUNTEA$TooL\IJHT 1 < 25j' _44.0o0f , 1.1oo.pooj

IDuerDate: 1M8!12 < )EadiestShlp [)ate: .. 8{cJ5/12 _::jt.atest Ship Dateo :9fi20112:



RESTORATION" HARDvV ARE 15 Koch Road, Suite J

Corte Mareda, CA 94925 Phone: (415) 924"1005 Fax: (415) 927-9133

Vendor# 17422

1 :;~·:~Js;;~7:~:;;; PcnO., LTD

~~~.~~~~;J~~~~~;;~, ~~ADU IGu~mgzhou 510897 CN China

Re.visfori DatE;! I

I

RH MAIN Purchase Order

7/13/12 1 7/13/12 7 Ocean

9ii5/i 2 l 9i20ii2 Buyer~

t-UHN t.:A:::>t::.- MAHK :::>Vt:HULiK I Earltest !';hlR Pate, + l,.a1esJ $hiP Qa1e

Terms and Conditions: !This is a Restoration Hardware Purchase Order. Refer to RH Vendor Operations Manual fori lpac~~~ing an~_ticketi~g_guide_line~, a~d P~ Terms_ ~.r:ct ~~ndit.ions. Fail.ure to comp~y may I result 1n pen ames ana cnargeoacKs. uo nm accept mts t-'V umess you nave agreea,

1executed and submitted the RH PO Terms and Conditions. Please confirm receipt of this i!3mcltase 01de1 to t11e cunesootJdilla Buve1 a11d II tat t11e otoduct wills · · · I specified ship dates above. · - - · ·

'"Shipments past the Latest date shown will result in Vendor to be liable for penalties and Air Freight dwrge~. ""Shipping 'v'Vindow is u·1e tirnefn:trne when the rnerchandise rnust be delivered to the consolidator or in gated at the designated port

CONFIDENTIAL

Page 3 of 3

PO#: I 13521771

lsuyro·':c' ~c;----c-~~~~~~'--~--'--'--'--1 I Restoration Hardware

115 Koch Road

1Sui1e J )corte Madera, CA 94925

I US United States

Guangzhou "~ uue: Date-.

i 0/i tsii <:::

Total Units: Total Dollars:

Hemarks I

I swl c=--33,o-66:6ooj

REST00000277

EXHIBIT 2



From: Sent: To: Cc: Subject: Attachments:

Dear Aian,

Bonnie Orofino [[email protected]] Wednesday, October 03, 2012 4:09 PM [email protected] Fran Hamman; Mark A. Steiner; Jason Edelman Amanson Group Emeco v. RH Complaint. pdf

We are writing to inform you that on October 1, 2012 US. chair manufacturer Emeco Industries, Inc. filed a lawsuit against Restoration Hardv•.rare, Inc. and Gary Friedman in lJ. S. federal district cou..rt in California w·ith regard to the aluminum chairs you have supplied to us. As you can see in the attached copy of the Complaint, Emeco alleges that the chairs are knockoffs of its "Navy Chair," and brings claims for unfair compent10n and infringement of its trade dress and trademarks under U.S. federal and California state law, counterfeiting of its trade dress and trademarks under US. federal law, and dilution of its trade dress and trademarks under US. federal law We will need to cancel all pending orders with A manson Group while we investigate and respond to Emeco's claims. Please confirm immediately that you \x.rill cancel these orders.

Thank you.

Very truly yours,

Bonnie Orofino Chief1'v1erchandising Officer Restoration Hardware (415) 497-6740


EXHIBIT 3



Jason Edelman <[email protected]>

Amanson Purchase orders

Joseph Brody <[email protected]> Wed, Oct 17, 2012 at 5:39AM To: Leah Reed <[email protected]>, Jason Edelman <[email protected]>, Karen Johnson-Levitt <[email protected]> Cc: Sarah Dashfield <[email protected]>, Fran Hamman <[email protected]>, Stone Liu <stoneliu@restorationhardware_com>, Am anson Alan <alan@amanson_com>

Hi All,

FYI, Alan replied to my e-mail (see below) that as of September the factory already shipped orders:

PO#l352177

P0#1352181

P0#1352184

PO#l352187

PO#i372492

PO#i372493

Over the phone, he aiso confirmed with me that he received the notices for order canceiiation, and the factory has stopped producing product for orders not iisted aiJove.

He aiso confirmed that there is no finished inventory of RH product in the factory, and none is being produced.

Raw materials were ordered for tr1e cancelled orders, but the factory will try to make use on other products.

Best,

Joseph Brody



1/4



www.restorationhardware.com

Mobile: +86 189 3069 0101

From: Amanson Alan [mailto:[email protected]] Sent: \1\fednesday, October 17, 2012 6:13PM To: RH D- Joseph Brody Cc: RHD- stoneliu Subject: @1~: FVV: Amanson Purchase orders

HI jos-eph Brody:

HJliTdi':;ct±:WriTJflPO#l352177, 1352181. 1352184, 1352187, 1372492, 1372493

2012-10-17

Best Regards Alan

AMAI\'SOI\' GROUP ********* AMANSOr\ ':":":":'*****

AMA!I!SO!I! GROUP GO., LTD

E-Jv1AIL: [email protected]

:&itf'FA: .losepill>rody

Jltitlt.tliil: 2012-10-17 14:40

J&ft A : 'A manson Alan'

fj)}~: 'Leah ReexJ; 'Jason Edelman'; 'Sarah Dashriehl'; 'Fran Hamm;m'; 'SLone Liu'; 'Karen Johnson-LevitL'

.±JIIIlJ : F\V: A manson Purchase orders

Hi Alan,

https:l/mail.google.com/mail/?ui=2&ik=695d4778ce&view=p1&as_from=jbrody%40restorationhardware ..

CONFIDENTIAL

2/4

REST00000356


Alan f!f</,i(

Nice to speak with you just novv.

The US office would like to confiim you have ieceived cancellation notices foi the Oideis belovv.

Piease aiso confirm that there is no finished product stiii in the factory. Finished product made for RH has already aii been shipped to I<.H.

Cancelled Purchase orders 10.15.12

Store I(AII); '"I !~<.MANSON GROUP CO .. LTD '·rl

'I 52rlDI 13521a11 r 13s21fl4l

i3.5.21ll71 i352HJOI 13521931 H52196l 13521\l!ll iJS€5221 13565261 135B5:m I 1356SJ21

1 1:lsfi~.1:l1 I 1:i~fi~:i~l

II i :i~fi~.i 41

135..3;451 G~na·ro:tar··········l ···············································································t

if you have any questions, feei free to be in touch.

Thanks for your help.

I Total I MG I 4(){}

1,.275 a9n il5D HQ

1.245 392

j ,303 B49 845 .>92

3..298 1,.298 }.g2

I 12:760



3/4


Best,

Joseph Biody

Restoration Hardware


www. restorationhardware.com

iviobile: +86 189 3069 0101

https:l/mail.google.com/mail/?ui=2&ik=695d4778ce&view=pt&as_from=jbrody%40restorationhardware .. 4/4


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DECLARATION OF HAL PORET CASE NO. 3:12-CV-5072 MMC







Plaintiff,

v.


Defendants.


DECLARATION OF HAL PORET


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DECLARATION OF HAL PORET CASE NO. 3:12-CV-5072 MMC 1

I, Hal Poret, declare:

1. I am a Senior Vice President at ORC International. I have personally designed,

supervised, and implemented over 450 consumer surveys concerning consumer perception,

opinion, and behavior. Over 150 of these surveys have concerned consumer perception regarding

trademarks and/or trade dress. I have personally designed numerous studies that have been

admitted as evidence in legal proceedings and I have been accepted as an expert in survey

research on numerous occasions by U.S. District Courts, the Trademark Trial and Appeal Board,

the FTC, and the National Advertising Division of the Council of Better Business Bureaus

(NAD).

2. I have frequently spoken at major intellectual property and legal conferences on

the topic of how to design and conduct surveys that meet legal evidentiary standards for

reliability, including conferences held by the International Trademark Association, American

Intellectual Property Law Association, Practicing Law Institute, Managing Intellectual Property,

Promotions Marketing Association, American Conference Institute, and various bar

organizations. In 2010, I published an article regarding trademark surveys in The Trademark

Reporter, a journal published by the International Trademark Association.

3. In addition to my survey research experience, I hold a B.S. from Union College, a

M.A. in Mathematics from S.U.N.Y. Albany, and a J.D. from Harvard Law School.

4. I understand that Emeco Industries, Inc. (“Emeco”) filed a lawsuit against

Restoration Hardware, Inc. (“Restoration Hardware”) and Gary Friedman alleging that a chair

advertised by Restoration Hardware infringes Emeco’s trade dress and trademark rights in

Emeco’s Navy Chair.

5. Restoration Hardware, through its counsel at Morrison & Foerster LLP, retained

me to design and conduct a survey to determine the extent to which, if at all, consumers who see

the accused Restoration Hardware chair would confuse it with Emeco’s Navy Chair or would

otherwise associate it with Emeco’s Navy Chair.

6. The methodology and results of the survey I conducted are detailed in the Expert

Report of Hal Poret in Matter of Emeco Industries, Inc. v. Restoration Hardware, Inc. et al. (the


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DECLARATION OF HAL PORET CASE NO. 3:12-CV-5072 MMC 2

“Report”). Attached as Exhibit 1 is a true and correct copy of the Report and its appendices.

7. For the survey, a total of 301 actual and prospective consumers of Restoration

Hardware furniture participated in this online survey, primarily individuals with annual household

incomes of $200,000 and above. A total of 200 respondents participated in a Test Group. The

purpose of the Test Group was to determine the extent to which the type of consumer who would

look at furniture in a Restoration Hardware catalog or website would be likely to see the accused

Restoration Hardware chair and to associate it with Emeco’s Navy Chair or to mistakenly believe

the Restoration Hardware chair is made by, affiliated with, or authorized by Emeco (or the Navy

Chair).

8. The survey also included a Control Group of 101 respondents. The purpose of the

Control Group was to measure the level of survey noise, which would be subtracted from the Test

Group result. As it turned out, the Control Group was unnecessary because the Test Group

showed no more than a negligible level of association/confusion of the Restoration Hardware

chair with Emeco’s Navy Chair. Accordingly, there was no need to test for noise to discount the

Test Group result. The Control Group took the identical survey with the one exception that the

images of the Restoration Hardware chair were replaced with images of a Crate & Barrel Delta

Side Chair. This was an ideal control in that Emeco has identified the Delta Side Chair as an

example of a non-infringing alternative design to Restoration Hardware’s chair. There would

have been no reason to expand the Control Group beyond 101 respondents given that the Test

Group showed virtually zero association/confusion and that the Control Group result was also

virtually zero. Increasing the Control Group size would have had no impact on the reliability of

the survey.

9. I have summarized the key findings of the survey as follows:

a. Only 2 respondents in the Test Group (1%) associated the look of the

Restoration Hardware chair (when shown on its own) with Emeco or its Navy

Chair.

b. Only 2 respondents (the same two noted above) answered that they believe the

Restoration Hardware chair appearing in the catalog is made by, affiliated



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13 10.

with, or authorized by Emeco or its Navy Chair. This represents a total

confusion level of 1 %. One other respondent may have confused the chair

with Emeco's Navy Chair, which would bring the confusion level to 1.5%.

c. No respondents in the Control Group mentioned Emeco or the Navy Chair. To

be conservative, no vague or ambiguous responses were interpreted as possibly

referring to Emeco. Accordingly, nothing is being subtracted from the Test

Group to account for survey noise.

d. Based on the 1% confusion rate (or maximum of I. 5% ), it is my opinion that

there is no more than a negligible likelihood that consumers who encounter the

accused Restoration Hardware chair will confuse it with or associate it with

Emeco's Navy Chair.

As explained more fully in the Report, based on the survey results, it is my opinion

14 that there is no more than a negligible likelihood that the Restoration Hardware chair will be

15 confused with Emeco or its Navy Chair. In addition, based on the survey results, it is my opinion

16 that there is no more than a negligible likelihood that the appearance of the chair in the

17 Restoration Hardware catalog will cause an association with Emeco' s Navy Chair.

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II. Attached as Appendix A to the Report are my curriculum vitae; a list of the cases

in which I have testified as an expert, either at trial or by deposition; a list of relevant

presentations I have given; a list of my publications, papers, and commentary; and a list of my

professional memberships and affiliations.

I declare under penalty of perjury that the foregoing is true and correct and that this

declaration was executed by me this lSth day ofNovember 2012 in ~ewf~ew York.

D ECLARATION OF H AL PO RET CASE NO. 3: 12-cv-5072 MMC

Hal Poret

3

EXHIBIT 1


EXPERT REPORT OF HAL PORET IN MATTER OF

EMECO INDUSTRIES, INC. V. RESTORATION HARDWARE, INC. ET AL.

*************************

SURVEY TO DETERMINE WHETHER THERE IS A LIKELIHOOD

THAT CONSUMERS WHO VIEW THE RESTORATION HARDWARE ALUMINUM NAVAL CHAIR WILL CONFUSE IT OR ASSOCIATE IT

WITH EMECO’S NAVY CHAIR

REPORT PREPARED FOR: Morrison & Foerster

Attorneys for Restoration Hardware, Inc. et al.

PREPARED BY: Hal Poret

ORC International 625 Avenue of the Americas

New York, NY 10011

November 2012


TABLE OF CONTENTS Page # BACKGROUND AND PURPOSE ------------------------------------------------ 1 STUDY AUTHORSHIP AND RESPONSIBILITY ----------------------------- 2 STUDY DESIGN ---------------------------------------------------------------------- 3 SUMMARY OF KEY FINDINGS -------------------------------------------------- 11 METHODOLOGY -------------------------------------------------------------------- 12 THE RELEVANT UNIVERSE OF INTEREST ------------------------- 12 SAMPLING PLAN ---------------------------------------------------------- 13 DOUBLE-BLIND INTERVIEWING ------------------------------------- 16 INTERVIEWING PROCEDURES ---------------------------------------- 16 DATA PROCESSING ------------------------------------------------------- 16 INTERVIEWING PERIOD ------------------------------------------------- 16 VALIDATION/QUALITY CONTROL --------------------------------- 16 DETAILED FINDINGS -------------------------------------------------------------- 17 CONCLUSIONS ---------------------------------------------------------------------- 21 APPENDIX A: CURRICULUM VITAE OF STUDY’S AUTHOR APPENDIX B: QUESTIONNAIRES/INSTRUCTIONS APPENDIX C : SURVEY DATA


BACKGROUND AND PURPOSE

Emeco Industries, Inc. (“Emeco”) makes a chair it calls the Navy Chair. Emeco sells the

Navy Chair for over $400. Restoration Hardware, Inc. (“Restoration Hardware”)

advertised chairs, at a price of $129, next to the following language: 1940s Aluminum

Naval Chair. Emeco has filed a lawsuit against Restoration Hardware and Gary

Friedman alleging that the Restoration Hardware Aluminum Naval Chair infringes

Emeco’s trade dress and trademark rights in its Navy Chair. Emeco alleges that

consumers who see the Restoration Hardware chair, along with the description “Naval

Chair,” will confuse it with Emeco’s Navy Chair. Aside from its trade dress/trademark

infringement argument, Emeco also appears to allege that it will be harmed because

consumers will see that an alternative to Emeco’s Navy Chair is available at Restoration

Hardware for $129 and will thereafter be less likely to pay over $400 for Emeco’s chair.

Restoration Hardware is not currently selling the challenged chair in stores and has

removed it from its website and online catalog. The chair did appear in Restoration

Hardware catalogs that were distributed in hard copy.

Restoration Hardware, through its counsel Morrison & Foerster LLP, has retained me to

design and conduct a survey to determine the extent to which, if at all, consumers who

see the accused Restoration Hardware chair would confuse it with Emeco’s Navy Chair

or would otherwise associate it with Emeco’s Navy Chair. This report details the

methodology and results of the survey.

The fee charged for the design and conduct of the survey and preparation of this report

is $50,000. Additional time spent in connection with this matter will be billed at my

ordinary rate of $500/hr. In the course of designing this survey and preparing this

report I reviewed the following materials: (1) Complaint; (2) Blavin Declaration; (3)

Buchbinder Declaration; (4) Motion for Preliminary Injunction; (5) Emeco’s website; (6)

Restoration Hardware website (including online catalogs); (7) Restoration Hardware

catalogs; (8) Crate & Barrel website; (9) Restoration Hardware Customer Metrics report;

(10) Restoration Hardware household income demographic data.


STUDY AUTHORSHIP AND QUALIFICATIONS

This study was designed, supervised, and implemented by ORC International under

the supervision of Hal L. Poret, Senior Vice President.

I have personally designed, supervised, and implemented over 450 consumer surveys

concerning consumer perception, opinion, and behavior. Over 150 of these surveys

have concerned consumer perception regarding trademarks and/or trade dress. I have

personally designed numerous studies that have been admitted as evidence in legal

proceedings and I have been accepted as an expert in survey research on numerous

occasions by U.S. District Courts, the Trademark Trial and Appeal Board, the FTC, and

the National Advertising Division of the Council of Better Business Bureaus (NAD).

I have frequently spoken at major intellectual property and legal conferences on the

topic of how to design and conduct surveys that meet legal evidentiary standards for

reliability, including conferences held by the International Trademark Association

(INTA), American Intellectual Property Law Association, Practicing Law Institute,

Managing Intellectual Property, Promotions Marketing Association, American

Conference Institute, and various bar organizations. In 2010, I published an article

regarding trademark surveys in The Trademark Reporter, a journal published by the

International Trademark Association.

In addition to my survey research experience, I hold bachelors and masters degrees in

mathematics and a J.D. from Harvard Law School. Additional biographical material,

including lists of testimony and publications, is provided in Appendix A.



STUDY DESIGN

A total of 301 actual and prospective consumers of Restoration Hardware furniture

participated in this online survey, primarily individuals with annual household

incomes of $200,000 and above.1

A total of 200 respondents participated in a Test Group.2 The purpose of the Test

Group was to determine the extent to which the type of consumer who would look at

furniture in a Restoration Hardware catalog or website would be likely to see the

accused Restoration Hardware chair and to associate it with Emeco’s Navy Chair or to

mistakenly believe the Restoration Hardware chair is made by, affiliated with, or

authorized by Emeco (or the Navy Chair).

Respondents were first instructed as follows:

In a moment, you are going to be shown images of a chair. Please take your time

to look at the chair as you would if you were shopping and saw this chair in a

catalog, on a website or in a store.

You will then be asked some questions. If for any question, you don’t know or

have no opinion, please indicate so. Please do not guess.

If for any question you are unable to clearly see the image of the chair, please

indicate so.

1 See Relevant Universe and Sampling sections below for additional detail on the respondents who participated in the survey. As discussed in more detail below, heavily focusing the survey on respondents with incomes of $200,000 and above favored Emeco in that respondents with higher incomes would be more likely to be prospective purchasers of Emeco’s Navy Chair and more likely to be familiar with Emeco’s Navy Chair. 2 200 was more than sufficient as a sample size to produce reliable results. As discussed below, the rate of association/confusion of the chair with Emeco's Navy Chair was negligible. Accordingly, an increase in sample size would not have increased the reliability of the results.


Respondents were then shown the following image of the Restoration Hardware chair:3

This image was taken from the actual Restoration Hardware catalog. This image was

also used in Emeco’s pleadings as representative of the look of the Restoration

Hardware chair and to illustrate how Emeco believes it would be confused with


3 For all images shown in the survey, respondents were given a response option to indicate if they could not view the image clearly. Any respondent who could not view all images clearly was terminated.


With this image of the chair on the screen, respondents were then asked:

Do you associate the overall look of this chair with any particular company or

brand of chair or do you not?

Respondents who answered that they associate the overall look of the chair with any

company or brand were then asked:

With what company or brand of chair do you associate the overall look of this

chair?

Respondents who named a company or brand were asked what makes them associate

the overall look of the chair with that company or brand. Respondents who did not

name a company or brand were instead asked why they answered that they associate

the overall look of the chair with a particular company or brand of chair. This gave

respondents an opportunity to express that they associate the look of the chair with

Emeco’s Navy Chair even if they do not know the name Emeco or do not know of

“Navy Chair” as a brand name.

The purpose of this initial question series was to test the extent to which respondents

would associate the look of the Restoration Hardware chair with Emeco or its Navy

Chair even when seen outside the context of a Restoration Hardware catalog or web

page. This question gave respondents an opportunity to express that they associate the

look of the chair with Emeco or its Navy Chair, whether or not they actually believed

the chair shown was Emeco’s chair.

All respondents were then shown the pages from the Restoration Hardware catalog

advertising the accused aluminum naval chair and were asked questions to test for

confusion. Showing respondents the actual Restoration Hardware catalog pages was an


ideal replication of marketplace conditions. Since the Restoration Hardware chair is not

in stores and has not been sold, the primary way (and perhaps the only way) consumers

would see the chair is in the catalog (or on the website prior to it being removed).

Emeco’s primary argument is that it will be harmed by the distribution of the catalog

containing the chair. Accordingly, testing perception of the chair in the context of the

catalog simulates the manner in which real consumers would encounter it and directly

tests Emeco’s allegation.

Specifically, respondents were instructed:

We are now going to show you two pages from a Restoration Hardware catalog

showing the same chair that you just looked at. Please take your time to look at

the two catalog pages of the chair as you ordinarily would if you were looking at

a Restoration Hardware catalog. If you cannot clearly see either catalog page,

please indicate so.

It was appropriate and necessary to instruct respondents that the pages they were being

shown are from a Restoration Hardware catalog, as actual consumers encountering the

pages would clearly be aware they were looking at the catalog.

Respondents were then shown the first of the catalog pages showing the accused chair:4

4 Images shown in this report necessarily appear smaller to fit on a page. Images shown in the survey were larger and consistent with the size of catalog and web pages.


Respondents were then instructed:

Here is the first catalog page showing the same chair that you already looked at.

Please take your time to look at it.

Respondents were then shown the second page from the catalog showing the accused

chair:


Respondents were then instructed:

Here is the second catalog page showing the same chair. Please take your time to

look at it.

Respondents were then asked:

Do you have any opinion about what company or brand makes the chair you just

saw images of?

Respondents who answered in the affirmative were then asked:

What company or brand do you believe makes the chair?

Please identify the company or brand you are thinking of as specifically as possible, or

select “don’t know” if you do not know.


Respondents who named a company or brand were asked what makes them believe the

chair is made by that company or brand. Respondents who did not name a company or

brand were instead asked what made them answer that they have an opinion about

what company makes the chair. As noted earlier, this gave respondents an opportunity

to express an opinion about the source of the chair even if they do not know the names

“Emeco” or “Navy Chair.”

All respondents were next asked:

Do you believe the chair you saw images of is affiliated with or authorized by

any company or brand that you are aware of, or do you not?

Respondents who answered in the affirmative were next asked:

What other company or brand do you believe the chair is affiliated with or

authorized by?

Respondents who named a company or brand were asked what makes them believe the

chair is affiliated with or authorized by that company or brand. Respondents who did

not were asked what made them answer that they believe the chair is affiliated with or

authorized by a company or brand that they are aware of.

The survey also included a Control Group of 101 respondents. The purpose of the

Control Group was to measure the level of survey noise, which would be subtracted

from the Test Group result. As it turned out, the Control Group was unnecessary

because the Test Group showed no more than a negligible level of

association/confusion of the Restoration Hardware chair with Emeco’s Navy Chair.

Accordingly, there was no need to test for noise to discount the Test Group result. The

Control Group took the identical survey with the one exception that the images of the

Restoration Hardware chair were replaced with images of a Crate & Barrel Delta Side


Chair. This was an ideal control in that Emeco has identified the Delta Side Chair as an

example of a non-infringing alternative design to Restoration Hardware’s chair.5 There

would have been no reason to expand the Control Group beyond 101 respondents

given that the Test Group showed virtually zero association/confusion and that the

Control Group result was also virtually zero. Increasing the Control Group size would

have had no impact on the reliability of the survey.

5 See Appendix for images shown to the Control Group.


SUMMARY OF KEY FINDINGS

1) Only 2 respondents in the Test Group (1%) associated the look of the Restoration

Hardware chair (when shown on its own) with Emeco or its Navy Chair.

2) Only 2 respondents (the same two noted above) answered that they believe the

Restoration Hardware chair appearing in the catalog is made by, affiliated with,

or authorized by Emeco or its Navy Chair. This represents a total confusion level

of 1%. One other respondent may have confused the chair with Emeco’s Navy

Chair, which would bring the confusion level to 1.5%.

3) No respondents in the Control Group mentioned Emeco or the Navy Chair. To

be conservative, no vague or ambiguous responses were interpreted as possibly

referring to Emeco. Accordingly, nothing is being subtracted from the Test

Group to account for survey noise.

4) Based on the 1% confusion rate (or maximum of 1.5%), it is my opinion that there

is no more than a negligible likelihood that consumers who encounter the

accused Restoration Hardware chair will confuse it with or associate it with


See Detailed Findings section below for additional information on results. The full data

(Appendix C) will be provided in its original electronic form.


METHODOLOGY

THE RELEVANT UNIVERSE OF INTEREST

Since the universe of consumers who might see the Restoration Hardware chair

overwhelmingly consists of individuals who would might shop for furniture at

Restoration Hardware (either through the catalog, website or store), the universe for the

survey consisted of individuals who: (1) have personally shopped for furniture within

the past 2 years at Restoration Hardware; and/or (2) are likely to personally shop for

furniture in the next two years and are likely to shop at Restoration Hardware the next

time they shop for furniture. Respondents were excluded from the survey if they or

anyone in their household work in either advertising or market research or for a

company or store that sells furniture.

The actual wording of the screening questions used is shown in Appendix B.


SAMPLING PLAN

The sampling plan involved random selection of consumers who are part of an online

panel. Online surveys are well-accepted in the field of survey research as a standard,

reliable methodology. Indeed, online surveys are now the most common method of

conducting market research among consumers. Businesses and other organizations

routinely make decisions of importance based on the results of online survey research,

and online surveys have been accepted in evidence in numerous U.S. District Court and

Trademark Office proceedings. I have personally designed and executed numerous

internet surveys that have been accepted by courts.

The sample of panelists used in the survey was provided by Research Now, a leading

supplier of online sample for surveys. Respondents were required to take the survey on

a desktop or laptop computer and were excluded if attempting to take the survey on a

tablet, mobile phone or other mobile electronic device so that the images of the marks

would appear sufficiently large and so that respondents would be focused on the

survey.

An online methodology was particularly ideal in this scenario for several reasons. First,

an online survey is a standard and appropriate way to present catalog pages. Seeing

the catalog pages on a computer screen is a standard and reliable simulation of how

respondents would see the pages in an actual catalog, whether in hard copy or online.

The actual chairs are not in stores and were not sold to consumers, so virtually 100% of

consumer exposure will be to images rather than the physical chair. Second, an online

survey was an ideal way to get through to consumers with higher incomes who would

be likely to be actual and prospective consumers of the relatively expensive furniture in

the Restoration Hardware catalog (and would also be the most likely to have familiarity

with the $400+ Emeco Navy Chair.)


It is my understanding that Restoration Hardware’s furniture is targeted at consumers

with annual household incomes of $200,000 and above but I also reviewed data

showing that Restoration Hardware also has significant percentages of furniture

consumers with lower incomes. Since the Emeco Navy Chair is a very expensive

product (over $400), Restoration Hardware customers with incomes over $200,000

would presumably be the most likely to be a potential customer of Emeco and be aware

of Emeco’s Navy Chair. For that reason, I believe it was erring in Emeco’s favor to

heavily draw the survey universe from this income group. Focusing the survey on the

set of Restoration Hardware customers who would be most likely to know the Emeco

Navy Chair allowed us to measure the likelihood of confusion (or association) in the

market segment where it would be expected to be highest. The following is the

breakdown of survey respondents based on household income level.

INCOME LEVEL %

$100,000 to $149,999 2%

$150,000 to $199,999 12%

$200,000 to $249,999 33%

$250,000 to $299,999 30%

$300,000 or over 24%

It is also my understanding that Restoration Hardware’s furniture is targeted to the 45

to 64 age group, but that Restoration Hardware has customers in all age groups. The

following shows the age and gender breakdown of participants in the survey:

Age %

25-44 33%

45-64 50%

65+ 17%


Gender %

Female 56%

Male 44%

I also consulted data regarding the geographic locations where Restoration Hardware

has the greatest numbers of consumers. As the catalog is distributed nationally (and the

website is of course available nationally), the survey invitations were generally

distributed in a nationally representative fashion. Survey invitations were distributed

in somewhat greater percentages to the following markets, which have the highest

percentages of Restoration Hardware consumers:

NewYork

Los Angeles

Washington DC

Chicago

Connecticut

Boston

Philadelphia, PA

Dallas-Ft Worth, TX

New Jersey

Atlanta, GA

South Bay

Orange County

Miami-Ft. Lauderdale, FL

East Bay

Houston, TX

The precise breakdown of the survey universe among various age, gender, income, and

geographical groups was immaterial as the levels of associating or confusing the

Restoration Hardware chair with Emeco’s Navy Chair was negligible among all groups.


DOUBLE-BLIND INTERVIEWING

It is important to point out that the study was administered under “double-blind”

conditions. That is, not only were the respondents kept uninformed as to the purpose

and sponsorship of the study, but the services involved in providing the sample and

administering the online interviews were similarly “blind” with respect to the study’s

purpose and sponsorship.

INTERVIEWING PROCEDURES

The online survey was programmed and hosted by Decipher, Inc., a company

specializing in web survey programming and data collection and processing. I

thoroughly tested the programmed survey prior to any potential respondents receiving

the invitation to participate in the survey.

DATA PROCESSING

Data was collected by Decipher and made available to ORC International through an

electronic portal on an ongoing basis. The data set showing each respondent’s answers

to all questions will be provided in electronic form.

INTERVIEWING PERIOD

Interviewing was conducted from October 25, 2012 through November 1, 2012.

VALIDATION/QUALITY CONTROL Respondents were asked several validation/quality control questions. Respondents

were required to enter their date of birth to enter the survey and the date needed to

match the birth date of the panelist in order to ensure the identity of the respondent.

Additionally, respondents were instructed to select the answer choice “South” out of

four choices of directions to continue. These questions permitted us to screen out

respondents who were paying insufficient attention to the survey.


DETAILED FINDINGS

Association of the look of the chair with Emeco’s Navy Chair

When initially shown the Restoration Hardware chair and asked whether they associate

the overall look of the chair with any company or brand of chair, only 2 respondents

(1%) answered in the affirmative and named Emeco.6

One other respondent (#617) answered that it is a Restoration Hardware chair

“modeled on the Navy Chair.” This respondent explained that they believed this

because they had read about the lawsuit against Restoration Hardware. This

respondent also indicated that they believed it was the Navy that had filed a complaint

against Restoration Hardware. Based on these answers it is clear that this is not an

instance of a consumer who genuinely associated this look with Emeco’s Navy Chair

but rather an instance of publicity surrounding the lawsuit having caused a consumer

to believe the Restoration Hardware chair is modeled on a different chair.

One other respondent (#608) answered that they associated the look of the chair with

one company or brand but did not know which one. The respondent indicated they

had seen the chair before. This raises some possibility they could have been thinking of

Emeco’s Navy Chair. On the other hand, this respondent subsequently answered that

they believe the chair is affiliated with Crate & Barrel because they saw it in a catalog,

which suggests the chair they had seen before is a Crate & Barrel chair and not Emeco’s

chair.

No other respondents gave any answers reflecting any belief that the overall look of the

Restoration Hardware chair shown is in any way associated with Emeco or its Navy

Chair.

6 Respondents 434 and 1205.


A total of 33 other respondents answered that they associated the look of the chair with

Restoration Hardware even prior to being told that the chair was in a Restoration

Hardware catalog. Most of these respondents gave answers indicating that they found

the style of the chair to be consistent with the style of Restoration Hardware furniture.

There were also 25 respondents who associated the look of the chair with Crate &

Barrel, Pottery Barn, and/or Ikea. Combined without duplication, this represents 57

respondents who found the look of the chair consistent with what they would expect

from furniture from these stores and gave no indication they associated the look with

any other source or chair.

There were also four respondents who answered that they associate the chair with

Design Within Reach. As it is my understanding that Design Within Reach sells

Emeco’s Navy Chair, I considered these respondents’ verbatims individually.

One of the respondents (#557) answered that they had read about a legal controversy

with Restoration Hardware over a knock-off of a Design Within Reach chair. This

respondent cannot be classified as confused because their association of the chair with

Design Within Reach is due to publicity surrounding the lawsuit.

Another of the respondents that associated the chair with Design Within Reach (#1634)

answered that “they do a Navy side chair like this, although there are cheaper

knockoffs from Target.” This respondent also later answered that the chair was

authorized because “others have done it before.” This respondent seems to view “Navy

Chair” as a style of chair and not a brand and to believe that a variety of sources have

made chairs of that type. Accordingly, it would not be appropriate to count them as

viewing the chair design as a trademark of, or confusing the chair with, any single

source.

Respondent 1367 answered that they have seen this chair in Design Within Reach’s

catalogue and respondent 1402 answered that the chair has an edgy industrial style they


associate with Design Within Reach. It is possible that these respondents associated the

chair with Design Within Reach due to having seen Emeco’s Navy Chair at Design

Within Reach, which would mean there is an additional 1% association with Emeco. On

the other hand, two control group respondents (2%) also answered that they associate

the Crate & Barrel Delta chair with Design Within Reach. Accordingly, the Test Group

rate of mentioning Design Within Reach is equivalent to the Control Group rate and

should be negated as survey noise.

Office Depot, Officedesigns.com, Room & Board, the Door Store, and MacDonalds were

also mentioned by one respondent each.

The remaining 133 respondents did not associate the look of the chair with any

company or brand.

In sum, 1% of the 200 Test Group respondents associated the look of the Restoration

Hardware chair with Emeco with a small possibility of that number rising to 1.5% if

respondent #608 is counted.

Confusion of the chair with Emeco or Navy Chair

When shown the Restoration Hardware catalog images and asked if they had an

opinion about the maker of the chair or if they believed the chair was affiliated with or

authorized by any other company or brand, two respondents (1.0%) identified Emeco --

the same two respondents who had already mentioned Emeco in the initial association

question.

One other respondent gave an answer that might possibly indicate confusion.

Respondent #143 answered that they have an opinion about who makes the chair but

then answered that they did not know what company or brand makes it. They

answered that they had an opinion about the maker because the catalog page had the


name “naval.” Although this respondent had not previously indicated they associate

the look of the chair with any company or brand when first shown the chair, it is

possible that the reference to “naval” indicates that they are thinking of Emeco’s Navy

Chair. It is also possible the respondent was thinking of the Navy or just guessing. If

this respondent was assumed to be confused, the confusion level would go up to 1.5%.

There were also two respondents who associated the chair with Restoration Hardware

and did not indicate confusion but did express a belief that the chair was a version of a

more expensive chair. Respondent 724 answered that the chair is made by Restoration

Hardware but also commented that it “looks like the other” and that it is a “copy of a

more expensive chair.” Respondent 976 answered that “I think it is a good knockoff

chair but not as classy and expensive looking as the first one.” This respondent also

answered they think the chair is affiliated with or authorized by “World Market”

because they carry some good knock-off chairs. Although they did not name Emeco or

the Navy Chair, it is possible that these respondents’ verbatim comments indicate that

they were thinking of Emeco’s Navy Chair. As they never named Emeco or “Navy

Chair,” it is also possible they were thinking of other chairs or generally commenting on

a style of chair. In either case, they were not confused, as they clearly stated that they

thought the Restoration Hardware chair was a copy of another chair, not that it was

actually made by, affiliated with, or authorized by the maker of another chair. If these

respondents are assumed to have been thinking of Emeco’s Navy Chair, it would not

increase the confusion level but it would increase the percentage that associated the

look of the Restoration Chair with Emeco’s Navy Chair to 2.0% (or 2.5%) if respondent

608 were also counted).

There were also two other respondents who mentioned the Navy, but were clearly

referring to the military entity and not Emeco. Respondent 1037 answered that the

chair was made by “Navy” because it was “named this in the ad.” Respondent 624

named Restoration Hardware and specified that they did not think “the Navy would


have to authorize a naval chair.” There is no indication either of these respondents

were thinking of Emeco’s Navy Chair.

There was also one respondent (#1869) who answered that the chair was authorized by

Design Within Reach (which sells the Emeco chair) and answered that their office has

the chairs. However, this respondent also initially answered that they associate the

chair with Crate & Barrel. Accordingly, it appears that this respondent was generally

naming stores that have furniture of this style rather than indicating a belief that Emeco

authorized the chair.7

No other respondents gave any answers indicating that they might be confused or that

they were otherwise thinking of Emeco’s Navy Chair.

In sum, the confusion rate was in the range of 1.0% to 1.5%.

CONCLUSION

Based on the survey results (1.0% confusion or 1.5% at most), it is my opinion that there

is no more than a negligible likelihood that the Restoration Hardware chair will be

confused with Emeco or its Navy Chair. In addition, based on the low rate of

Restoration Hardware furniture customers associating the look of the accused chair

with Emeco’s Navy Chair (1.0% or 2.5% at most), it is my opinion that there is no more

than a negligible likelihood that the appearance of the chair in the Restoration

Hardware catalog will cause an association with Emeco’s Navy Chair.

7 A second respondent (#1367) who had mentioned Design Within Reach in the first question and was already discussed above also repeated “DWR” in the authorization question. It was already noted above that this respondent could possibly represent an additional instance of association/confusion, although the Control Group instances of naming Design Within Reach would then also need to be counted, which would negate any increase in confusion levels.


APPENDIX A


APPENDIX A

CURRICULUM VITAE OF STUDY’S AUTHOR


Hal L. Poret

([email protected]; 212-329-1018; 914-772-5087)

Education

1998 Harvard Law School, J.D., cum laude Editor/Writer – Harvard Law Record Research Assistant to Professor Martha Minow

1995 S.U.N.Y. Albany, M.A. in Mathematics, summa cum laude Statistics Taught calculus/precalculus/statistics

1993 Union College, B.S. in Mathematics with honors, magna cum laude Phi Beta Kappa Resch Award for Achievement in Mathematical Research

Employment

2004 - Senior Vice President, ORC International (formerly Guideline) Designed, supervised, and analyzed over 350 consumer

surveys, including Trademark, Trade Dress, Advertising Perception, Fraud/Consumer Deception, Claims Substantiation studies, Damages, and Corporate Market Research Surveys

Provided expert testimony at deposition and/or trial regarding survey research in over 40 U.S. District Court litigations and proceedings in front of TTAB, NAD and the FTC.

Review and comment on third party surveys

2003 – 2004 Internet Sports Advantage Developed and marketed proprietary internet sports product,

and licensed trademark and intellectual property rights. 1998 – 2003 Attorney, Foley Hoag & Eliot, Boston, MA

Represented corporations and individuals in trademark, trade dress, advertising, product, and related legal disputes.

Worked with survey experts in developing and using surveys as evidence in trademark, trade dress and advertising disputes.

Advised clients in the selection, adoption, use, licensing, and protection of trademarks/trade dress; represented clients in trademark/trade dress litigations, administrative proceedings before the Trademark Trial and Appeal Board and United States Patent and Trademark Office, and domain name proceedings under the Uniform Domain-Name Dispute-Resolution Policy.


Testimony at Trial or by Deposition (Party who retained me shown in bold) 2012 Forest River v. Heartland USDC Northern District of IN (Deposition) 2012 SPD v. Church & Dwight USDC District of NJ (Deposition) 2012 Brighton Collectibles v. Texas Leather USDC Southern District of CA (Deposition) 2012 Cytosport v. Vital Pharmaceuticals USDC Eastern District of CA (Deposition) 2012 Apple v. Samsung USDC Northern District of CA (Deposition and Trial) 2012 Authors Guild v. Google USDC Southern District of NY (Deposition) 2012 Clear Choice v. Real Choice TTAB (Opposition testimony) 2011 Borghese v. Perlier et al. USDC Southern District of NY (Deposition) 2011 My Favorite Company v. Wal-Mart USDC Central District of CA (Deposition) 2011 PepsiCo v. Pirincci TTAB (Opposition testimony) 2011 Merck Eprova v. Brookstone USDC Southern District of NY (Deposition and trial) 2011 Wella, Inc. v. Willagirl LLC USDC Southern District of NY (Deposition) 2011 Bauer Bros. v. Nike USDC Southern District of CA (Deposition)


2011 Aviva Sports v. Manley USDC District of Minnesota (Deposition) 2011 American Express v. Black Card LLC USDC Southern District of NY (Deposition) 2011 Gosmile v. Dr. Levine USDC Southern District of NY (Preliminary Injunction Trial) 2010 Nat’l Western Life v. Western Nat’l Life USDC Western District of TX (Deposition) 2010 3M v. Mohan USDC District of Minnesota (Trial) 2010 Active Network v. EA Sports USDC Central District of CA (Preliminary Injunction declaration) 2010 FIJI Water Co. v. FIJI Mineral USA USDC Central District of CA (Deposition) 2010 Hansen Beverage v. CytoSport USDC Central District of CA (Deposition) 2010 People’s United Bank v. PeoplesBank USDC District of CT (Deposition and Preliminary Injunction trial) 2010 Don Henley v. Charles Devore USDC Central District of CA (Deposition) 2010 Pegasus v. Allscripts USDC Middle District of FL (Deposition and Mediation) 2010 Jelmar, Inc. v. Zep Commercial USDC Northern District of IL (Deposition) 2010 Dollar Bank v. Emigrant Bank USDC Western District of PA (Deposition) 2009 LG Electronics v. Whirlpool USDC District of DE (Deposition) 2009 Farberware v. Meyer Marketing USDC Southern District of NY


(Deposition and trial) 2009 NEC v. Ampad USDC Southern District of NY (Deposition) 2009 GAP Inc. v. G.A.P. Adventures USDC Southern District of NY (Deposition and trial) 2009 Lumber Liquidators v. Stone Mntn USDC Eastern District of VA (Deposition and trial) 2009 CytoSport v. Vital Pharmaceuticals USDC Eastern District of CA (Deposition) 2009 REDC v. NHA USDC Southern District of CA (Deposition) 2008 1800Contacts v. Lens.com USDC District of UT (Deposition) 2008 Tokidoki v. Fortune Dynamic USDC Central District of CA (Deposition and trial) 2008 Brighton Collectibles v. Dynasty USDC Southern District of CA (Deposition)


Presentations Internet Survey Issues (PLI Hot Topics in Advertising Law Conference, March 2012) Measuring Consumer Confusion Through Online Surveys (2011 Midwest IP Institute) (September, 2011) Online Surveys as Evidence in Trademark Disputes (International Trademark Association Annual Conference, May 2011) Managing Intellectual Property Trademark Roundtable (April 7, 2010) Recent Trends in Trademark Surveys (Virginia State Bar Intellectual Property Conference, October 2009) Trademark Surveys in US Litigation (presentation for International Trademark Association Annual Conference) (May 2009) How to Conduct Surveys for use in Trademark Disputes (Practicing Law Institute Advanced Trademark Law Conference) (May 2009) Trademark and Advertising Perception Studies for Legal Disputes (Opinion Research Corporation Seminar, June 2008) Understanding Advertising Perception Surveys (Promotions Marketing Association Annual Law Conference) (November 2007) Designing and Implementing Studies to Substantiate Advertising Claims (American Conference Institute Claims Substantiation Conference, October 2007) Surveys in Trademark and False Advertising Disputes (InfoUSA Webinar, June 2007) Measuring Consumer Perception in False Advertising and Trademark Cases, (multiple presentations) (2007) Potential Errors to Avoid In Designing a Trademark Dilution Survey (American Intellectual Property Association paper, April 2007) Consumer Surveys in Trademark and Advertising Cases (presentation at Promotions Marketing Association Annual Law Conference) (December 2006)


Use of Survey Research and Expert Testimony in Trademark Litigation, (International Trademark Association Annual Conference, May 2006) Survey Research as Evidence in Trademark/Trade Dress Disputes (multiple presentations) (2006) Using Surveys to Measure Secondary Meaning of Trade Dress, Legal Education Seminar, Boston, April 2006 Publications/Papers Trademark Litigation Online Consumer Surveys (Practical Law Company Intellectual Property and Technology, May 2012) Hot Topics in Advertising Law 2012 (Contributor to Practising Law Institute publication) A Comparative Empirical Analysis of Online Versus Mall and Phone Methodologies for Trademark Surveys, 100 TMR 756 (May-June 2010) Recent Trends in Trademark Surveys (paper for Virginia State Bar Intellectual Property conference, October 2009) Trademark Dilution Revision Act breathes new life into dilution surveys (In Brief PLI website, June 2009) The Mark (Survey Newsletter; three editions 2009) Hot Topics in Trademark Surveys (paper for Practicing Law Institute Advanced Trademark Law Conference) (May 2009) The Mark (Survey Newsletter, 2008) Trademark and Advertising Survey Report (Summer 2007) Avoiding Pitfalls in Dilution Surveys under TDRA (AIPLA Spring Conference, Boston, May 2007) Commentary Comment on Hotels.com case (on TTABLOG.COM, July 24, 2009)


Comment on Nextel v. Motorola (on TTABLOG.COM, June 19, 2009) PLI All-Star Briefing Newsletter, “What does the Trademark Dilution Revision Act mean for the future of Dilution Surveys?” (June 2009) Can I Get By Without a Survey, Managing Intellectual Property (May 2009) Professional Memberships/Affiliations Council of American Survey Research Organizations International Trademark Association National Advertising Division of Council of Better Business Bureaus


APPENDIX B


APPENDIX B

INSTRUCTIONS/QUESTIONNAIRES


SCREENER SECTION BASE: ALL RESPONDENTS 100. Please enter your date of birth [PROGRAMMER: TERMINATE IF DOES NOT MATCH

PANELIST’S PRELOAD. PROGRAMMER: USE DOB TO CLASSIFY IN ONE OF FOLLOWING AGE RANGES:]

1. 25-44 2. 45-64 3. 65+

BASE: ANY NON-TERMINATES 105. Are you… 1. Female

2. Male BASE: ANY NON-TERMINATES 107. Which of the following includes your total annual household income?

1. Less than $100,000 2. $100,000 to $149,999 3. $150,000 to $199,999 4. $200,000 to $249,999 5. $250,000 to $299,999 6. $300,000 or over

[MUST SELECT 2-6 TO CONTINUE] [SET A QUOTA FOR Q107/2-3 AND A SEPARATE QUOTA FOR Q107/4-6. KEEP BOTH OPEN INITIALLY] BASE: ANY NON-TERMINATES 110. What type of electronic device are you using to complete this survey? 1. Desktop computer 2. Laptop/notebook computer 3. Tablet computer terminate 4. Mobile phone terminate 5. Other mobile device terminate BASE: ANY NON-TERMINATES 115. In what state do you live? [PROGRAMMER: Drop down menu of states.] BASE: ANY NON-TERMINATES 120. Do you or does anyone in your household work in any of the following areas?

(Select all that apply) [RANDOMIZE]

1. For a company or store that sells furniture [TERMINATE] 2. For a company or store that sells mobile phones 3. For a company or store that sells digital cameras 4. For a company or store that sells watches 5. For a company or store that sells luggage 6. None of these [ANCHOR; EXCLUSIVE]

BASE: ANY NON-TERMINATES


125. Do you or does anyone in your household work in either advertising or market research? (Select all that apply) [RANDOMIZE] 1. Yes, advertising [TERMINATE] 2. Yes, market research [TERMINATE] 3. Neither of these [ANCHOR; EXCLUSIVE]

BASE: ANY NON-TERMINATES 127. Which of the following, if any, have you personally shopped for in the past 2 years? [RANDOMIZE]

1. Furniture 2. Mobile phone 3. Digital camera 4. Watch 5. Suitcase 6. None of the above [ANCHOR; EXCLUSIVE]

BASE: ANY NON-TERMINATES 128. Which of the following, if any, are you likely to personally shop for in the next 2 years? [REPEAT LIST FROM Q127] [RESPONDENT MUST SELECT “1-FURNITURE” IN Q.127 OR Q.128 TO CONTINUE] BASE: 127=1 130. At which of the following stores, if any, have you shopped for furniture in the past 2 years,

either in the store or by looking at its website or catalog? (Select all that apply or “none”) [RANDOMIZE]

1. Restoration Hardware 2. Crate & Barrel 3. Pottery Barn 4. Home Decorators 5. Pier One 6. None of these [ANCHOR; EXCLUSIVE]

BASE: 128=1 135. At which of the following stores, if any, would you be likely to look the next time you shop

for furniture, either in the store or by looking at its website or catalog?

[Show choices in same order as 130] [RESPONDENT MUST SELECT 1-RESTORATION HARDWARE IN 130 OR 135] BASE: ANY NON-TERMINATES 165. Please select South from the following list in order to continue with this

survey. [RANDOMIZE]

1. North 2. South [must select to continue] 3. East 4. West

MAIN SURVEY


BASE: ALL QUALIFIED RESPONDENTS 200. In a moment, you are going to be shown images of a chair. Please take your time to look

at the chair as you would if you were shopping and saw this chair in a catalog, on a website or in a store.

You will then be asked some questions. If for any question, you don’t know or have no opinion, please indicate so. Please do not guess. If for any question you are unable to clearly see the image of the chair, please indicate so.

BASE: ALL QUALIFIED RESPONDENTS 210. [DISPLAY IMAGE 1000 TO CELL 1 OR IMAGE 2000 TO CELL 2]

Do you associate the overall look of this chair with any particular company or brand of chair or do you not?

1. Yes, I do associate the overall look of this chair with a particular company or brand of

chair continue to 215 2. No, I do not associate the overall look of this chair with a particular company or brand of chair skip to 230

3. Don’t know/No Opinion skip to 230 4. Cannot see image of chair clearly terminate BASE: 210=1 215. [DISPLAY IMAGE 1000 TO CELL 1 OR IMAGE 2000 TO CELL 2] With what company or brand of chair do you associate the overall look of this chair? Please identify the company or brand of chair you are thinking of as specifically as possible, or select “don’t know” if you do not know. (Programmer: include text box to right of “Company/brand” and a “Don’t know” button below text box) (if respondent enters an answer, go to 220) (if respondent selects “don’t know”, go to 225) BASE: 215=Entered text Q.220 [DISPLAY IMAGE 1000 TO CELL 1 OR IMAGE 2000 TO CELL 2] What makes you associate the overall look of this chair with (insert answer from 215)? Please be as detailed and specific as possible. [Text box for response] BASE: 215=Don’t know Q.225 [DISPLAY IMAGE 1000 TO CELL 1 OR IMAGE 2000 TO CELL 2] What made you answer that you associate the overall look of this chair with a particular company or brand of chair?


Please be as detailed and specific as possible. [Text box for response] BASE: ALL QUALIFIED RESPONDENTS Q.230 We are now going to show you two pages from a Restoration Hardware catalog showing

the same chair that you just looked at. Please take your time to look at the two catalog pages of the chair as you ordinarily would if you were looking at a Restoration Hardware catalog. If you cannot clearly see either catalog page, please indicate so.

BASE: ALL QUALIFIED RESPONDENTS Q.231 Here is the first catalog page showing the same chair that you already looked at. Please

take your time to look at it. [DISPLAY IMAGE 1001 TO CELL 1 OR IMAGE 2001 TO CELL 2]

1. Continue 2. Cannot view catalog page clearly terminate

BASE: ALL QUALIFIED RESPONDENTS Q.232 Here is the second catalog page showing the same chair. Please take your time to look

at it. [DISPLAY IMAGE 1002 TO CELL 1 OR IMAGE 2002 TO CELL 2]

1. Continue 2. Cannot view catalog page clearly terminate

BASE: ALL QUALIFIED RESPONDENTS Q.233 Do you have any opinion about what company or brand makes the chair you just saw?

1. Yes, I do have an opinion 2. No, I do not have an opinion

BASE: 233=1 Q.235 What company or brand do you believe makes the chair?

Please identify the company or brand you are thinking of as specifically as possible, or select “don’t know” if you do not know. (Programmer: include text box to right of “Company/brand” and a “Don’t know” button below text box) (if respondent enters an answer, go to 240) (if respondent selects “don’t know”, go to 245)

BASE: 235=Entered text Q.240 What makes you believe the chair is made by (insert answer from 235)?


Please be as detailed and specific as possible.

[Text box for response] BASE: 235=Don’t know Q.245 What made you answer that you have an opinion about what company makes the chair?

Please be as detailed and specific as possible. [text box]

BASE: ALL QUALIFIED RESPONDENTS 250. Do you believe the chair you saw is affiliated with or authorized by any company or brand

that you are aware of, or do you not? 1. Yes, I do 2. No, I do not 3. No opinion

BASE: 250=1 255. What other company or brand do you believe the chair is affiliated with or authorized by?

(Programmer: include text box to right of “Company/brand” and a “Don’t know” button below text box) (if respondent enters an answer, go to 260) (if respondent selects “don’t know”, go to 265)

BASE: 255=entered text on at least one line 260. What makes you believe the chair is affiliated with or authorized by (insert answer from

255)? Please be as detailed and specific as possible.

[Text box for response]

BASE: 255=Don’t know Q.265 What made you answer that you believe the chair is affiliated with or authorized by a

company or brand that you are aware of?

Please be as detailed and specific as possible. [text box]


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MFN RE: APP’X C TO PORET REPORT CASE NO. 3:12-CV-5072 MMC sf-3219424







Plaintiff,

v.


Defendants.


APPENDIX C TO THE EXPERT REPORT OF HAL PORET (EX. 1 TO THE DECLARATION OF HAL PORET)

Date: Dec. 14, 2012 Time: 9:00 a.m. Ctrm: 7 Hon. Maxine M. Chesney


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MFN RE: APP’X C TO PORET REPORT CASE NO. 3:12-CV-5072 MMC 1sf-3219424

MANUAL FILING NOTIFICATION

Regarding: APPENDIX C TO THE EXPERT REPORT OF HAL PORET (EX. 1 TO THE

DECLARATION OF HAL PORET)

This filing is in physical form only, and is being maintained in the case file in the Clerk’s

office.

If you are a participant on this case, this filing will be served in hard-copy shortly.

For information on retrieving this filing directly from the court, please see the court's main

web site at http://www.cand.uscourts.gov under Frequently Asked Questions (FAQ).

This filing was not e-filed for the following reason(s):

___ Voluminous Document (PDF file size larger than e-filing system allowances)

___ Unable to Scan Documents

___ Physical Object (description):

___ Non Graphical/Textual Computer File (audio, video, etc.) on CD or other media

___ Item Under Seal

___ Conformance with the Judicial Conference Privacy Policy (General Order 53).

_X_ Other (description): Excel spreadsheet that requires review in native format


WESLEY E. OVERSON JENNIFER LEE TAYLOR NATHAN B. SABRI JULIA D. KRIPKE MORRISON & FOERSTER LLP

By: /s/ Nathan B. Sabri NATHAN B. SABRI



26 - oppn re pi

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