Herman Miller, Inc., Plaintiff-Appellant/cross-Appellee v. Palazzetti Imports and Exports, Inc., Defendant-Appellee/cross-Appellant

OPINION

“Beware of imitations,” warned a poster designed by Charles Eames for Herman Miller, Inc. in 1963. The poster instructed furniture customers to “enjoy the comfort of the real thing designed by Charles Eames for Herman Miller, Inc.” Over thirty years later, Herman Miller, Inc. (“Herman Miller”) filed a complaint in federal district court against a furniture company, Palazzetti Imports & Exports, Inc. (“Pa-lazzetti”), that it claims is producing imitations of a lounge chair and ottoman that Eames and his wife Ray designed for Herman Miller in 1956.

A jury returned a verdict in favor of Herman Miller on three of its claims: trademark infringement and dilution, unfair competition, and right of publicity. The district court dismissed Herman Miller’s remaining two claims: trade dress infringement and dilution and false advertising. Both parties have appealed certain aspects of the district court’s decisions.

Herman Miller appeals the dismissal of its trade dress and false advertising claims as well the damages limitation imposed by the district court on Herman Miller’s trade dress claims. In addition, it challenges a portion of the permanent injunction entered by the district court against Palaz-zetti, which allows Palazzetti to “fairly identify” Charles and Ray Eames as the original designers of the furniture reproduced by Palazzetti.

Palazzetti cross-appeals the district court’s denial of Palazzetti’s motion for summary judgment on Herman Miller’s right of publicity claim, as well as the geographic extent of the permanent injunction entered in favor of Herman Miller on the same claim.

For the following reasons, we affirm in part and reverse in part.

I. Facts

A. Herman Miller and the Eameses

Herman Miller has been manufacturing home and office furniture since 1905, originally as the Star Furniture Company and, after 1923, as the Herman Miller Furniture Company. From the mid 1940s until their deaths, Herman Miller had a business and personal relationship with noted California designer Charles Eames and his wife Ray Eames (and thereafter with the Eames estate). From 1961 to 1998, Her *302 man Miller sold over $377 million of furniture designed by the Eameses.

In 1949, Herman Miller, Charles Eames, and the Evans Product Company signed an agreement giving Herman Miller all of Evans’s rights to trademarks, trade names, trade secrets, and processes used in connection with Eames-designed furniture. From then on, Charles and Ray Eames designed furniture exclusively for Herman Miller. In 1990, Herman Miller signed an agreement with the Eames estate affirming that Herman Miller is the legal and equitable owner of rights to the EAMES 1 trademark, trade dress rights related to a lounge chair and ottoman designed by the Eameses, and rights of publicity in the names and likenesses of Charles and Ray Eames.

Charles and Ray Eames' designed a number of pieces of furniture during their relationship with Herman Miller, including a chair known colloquially as the “potato chip chair” and a table known as the “surfboard table.” In 1956, Charles and Ray Eames designed a lounge chair and ottoman of leather and wood. Herman Miller claims that this is “the most famous” of the pieces of furniture designed by the Eames-es for Herman Miller. The frames of the chair and ottoman were fabricated of curved, molded sheets of rosewood plywood, and the upholstery was cushioned leather. The chair tilts and is mounted on a swivel base.

Herman Miller cites nine different aspects of the lounge chair and ottoman that it claims make the lounge chair and ottoman worthy of trade dress protection:

(1)Smooth curved, molded shells; the lounge chair having three shells, the ottoman, one. (2) The molded shells being exposed from below the ottoman and from the back, sides, and underside of the chair.

(3) The edges of each molded shell being exposed from the front of the lounge chair and ottoman.

(4) Each of the molded shells being shaped like a flattened “U.”

(5) Each molded shell with cushioned upholstery.

(6) Each molded shell having “buttons” that create permanent creases in the upholstery.

(7) The back of the lounge chair consisting of two molded shells, connected in the rear by two exposed bars, each bar being angled to tilt the upper molded shell slightly forward of the lower molded shell.

(8) The angled bars spaced from the shells.

(9) Upholstered armrests that extend downwardly into the chair and that connect the two molded back shells to the molded seat shell.

Herman Miller presents numerous facts related to the lounge chair and ottoman in attempting to support its trade dress claim. It describes unsolicited media attention given to the lounge chair and ottoman when they were designed, including an interview by Arlene Francis of Charles and Ray Eames on NBC’s Today Show on March 14, 1956, introducing the lounge chair and ottoman that Charles Eames stated he designed “for Herman Miller.” Herman Miller notes that its Eames lounge chair and ottoman won the grand prize at the Milan Triennial, and that its Eames lounge chair and ottoman are on permanent exhibit at several museums.

Descriptions of the lounge chair and ottoman in various books and magazines are *303 also presented during the course of over five hundreds pages of the record. Many of these descriptions specifically identify the Eames lounge chair and ottoman as manufactured by Herman Miller and a number of the publications refer to the relationship between Herman Miller and the Eameses. Herman Miller also cites the Encyclopedia Americana, noting that it shows a photo of a lounge chair and ottoman with the phrase “Herman Miller, Inc.” below the photo. The encyclopedia entry states that Charles Eames “developed a series of chairs for the Herman Miller Company during the 1940s and 1950s” and that “[h]is most famous design was a soft leather-upholstered swivel tilt lounge chair and ottoman.”

Herman Miller also presents affidavits of design experts, historians, authors, and employees of Herman Miller recognizing Herman Miller as the only source for the lounge chair and ottoman. These affidavits attest to the unique nature and design of the lounge chair and ottoman and the fact that customers associate the Eames lounge chair and ottoman with Herman Miller. Herman Miller also offers evidence from various publications regarding owners of the Eames lounge chair and ottoman. In one interview, Indira Gandhi stated that she would sit in her “Eames chair,” referring to her Herman Miller Eames lounge chair and ottoman (although she did not mention Herman Miller specifically). Other articles describe celebrities, such as Barbara Walters, who own Herman Miller Eames chairs and ottomans (some specifically mention Herman Miller and others do not). Furthermore, Herman Miller offers articles mentioning that producers of two television series, the highly rated Frasier and the less highly rated It Takes Two, acquired Herman Miller-manufactured Eames lounge chairs and ottomans to furnish the sets of their shows.

Finally, Herman Miller offers evidence of specific recognition of the distinctiveness of the lounge chair and ottoman. In 1970, the Herman Miller Eames lounge chair and ottoman were declared among the “One Hundred Greatest Products of All Time” by a group of designers. In 1995, the Corporate Design Foundation, a non-profit research and educational organization, included in the premiere issue of its Journal of Business & Design a silhouette of the lounge chair as one of sixteen distinctive corporate “shapes.” The declaration was made in the context of a quiz in which readers were asked to match the shape with its identifying company. The correct match for the silhouette of the lounge chair was “Eames lounge chair.” Explaining the absence of “Herman Miller” from the answer, the publisher of the quiz stated, “[i]n fact, the EAMES lounge chair and ottoman is so closely associated with Herman Miller, Inc., that the chair was referred to as the EAMES lounge chair. This symbol of Herman Miller was selected over the famous Herman Miller “M” design as an identifying corporate symbol.” Also included in the quiz were the CBS eye, the Coca Cola bottle, the Apple computer apple, the McDonald’s arches, the Travelers Insurance Co. umbrella, and Mickey Mouse as a symbol of the Disney Company.

B. The Market for Eames Furniture

Herman Miller notes it has produced the Eames lounge chair and ottoman continuously since 1956 and has sold over 100,000 lounge chairs and ottomans. In addition, it points out that the lounge chair and ottoman have gained popularity as collectors’ items and antiques and that a strong secondary market has come into existence for Eames lounge chairs and ottomans produced by Herman Miller. Herman Miller produces evidence demonstrating *304 that buyers in this market specifically seek out Herman Miller Eames lounge chairs and ottomans.

In addition to this secondary collectors’ market for chairs and ottomans produced by Herman Miller, there is evidence of a market for reproductions of the chair and ottoman manufactured and sold by numerous other companies. Herman Miller offers several media articles pointing out to modern furniture consumers the existence of this secondary market of “knockoffs” of the lounge chair and ottoman and stating that Herman Miller produces the original.

For over thirty years, Herman Miller has been aware of this market for reproductions of the chair and ottoman. James Christenson, the general counsel of Herman Miller, gave deposition testimony stating that since 1971, Herman Miller has learned of at least sixty-six different entities that were selling furniture patterned after the Eames lounge chair and ottoman. Herman Miller wrote at least seventy-seven letters to these entities. In none of the letters did Herman Miller request that the company cease production or marketing of the lounge chairs and ottomans. Herman Miller demanded only that the entities cease using the EAMES trademark in marketing the reproductions. A recipient of one of the letters asked Herman Miller how it might subsequently sell its reproduction of the lounge chair and ottoman without infringing on the EAMES trademark. Herman Miller’s intellectual property counsel responded: ‘it is proper to refer to a chair designed by Charles Eames. Appropriate use of Mr. Eames’ [sic] name would be as follows: “Patterned after a chair designed by Charles Eames.” In addition, there is evidence of letters sent by Herman Miller’s counsel to at least three furniture manufacturers and one distributor that also were known to be selling reproductions of the Eames lounge chair and ottoman. In each ease, Herman Miller asked that the entity not use the EAMES trademark.

C. Palazzetti and Its Business

Palazzetti is a New York corporation with its principal office in New York City and showrooms in New York, Long Island, Connecticut, Boston, Los Angeles, Dallas, and Washington. Palazzetti markets reproductions of modern classic furniture popularized between 1950 and 1980. In late 1989, Palazzetti started marketing a reproduction of the Eames-designed lounge chair and ottoman. The lounge chair and ottoman have been manufactured by several Italian companies, always with the requirement that the product be an exact replica of the original Eames design. Beginning in January 1990, Palaz-zetti advertised the lounge chair and ottoman in The New York Times. Palazzetti continued to advertise the lounge chair and ottoman in that publication periodically during the next five years.

D. Herman Miller’s Knowledge of Pa-lazzetti’s Activities

As early as March 1990, Herman Miller became aware that Palazzetti was manufacturing furniture patterned after designs created by Charles and Ray Eames. Herman Miller discovered that Palazzetti was advertising a reproduction of the Eames-designed molded plywood chair, known as the “potato chip chair.” From March 23, 1990 through June 5, 1990, Herman Miller and Palazzetti corresponded regarding Pa-lazzetti’s manufacturing and marketing of the “potato chip chair.”

In Herman Miller’s first letter to Palaz-zetti, Herman Miller’s counsel demanded that Palazzetti “immediately cease and desist all further use of the designation EAMES ... in your advertising. We also demand that you immediately cease and *305 desist from all further sale of the goods which simulate the EAMES ... designs.” After a response from Palazzetti indicating that it was making “fair use” of the name “Eames,” Herman Miller responded with a letter stating that “it may be possible to resolve this dispute simply by having you indicate clearly in your literature that your products are in no way associated with Herman Miller, Inc. and are not the authorized or licensed versions of Charles Eames’ [sic] designs.”

Palazzetti’s counsel responded to Herman Miller’s second letter by stating that Palazzetti did not intend “to change its practices where it is not legally required to do so.” Herman Miller then sent a third letter to Palazzetti requesting that Palaz-zetti indicate in its marketing material that the “product is in fact a reproduction, and not a product manufactured by the official licensee, Herman Miller, Inc.” Palazzetti responded by a letter dated June 5, 1990, in which it continued to refuse to accede to Herman Miller’s requests, and repeated that it was making fair use of the name “Eames.”

Herman Miller did not respond to Palaz-zetti’s final letter of June 5, 1990. Thinking that Herman Miller either abandoned its claims or recognized the validity of Palazzetti’s position, Palazzetti continued to sell the lounge chair and ottoman and other Eames-designed furniture and to advertise the lounge chair and ottoman in The New York Times.

Herman Miller presents testimony that it had no knowledge of Palazzetti’s advertising of its Eames-designed lounge chair and ottoman until 1994. When Herman Miller discovered Palazzetti’s advertising of Eames-designed furniture in 1990, it only discovered advertising of the “potato chip chair.” Palazzetti advertised its lounge chair and ottoman in The Neiv York Times for four days in 1990, three days in 1991, none in 1992, fourteen days in 1993, and nineteen days by September 1994.

Herman Miller again wrote Palazzetti on September 29, 1994, demanding that Pa-lazzetti cease use of the designation “C. Eames.” Palazzetti declined to do so, but stated that it would make clear that it only used the Eames name to identify the original designer. Herman Miller did not respond to the letter and, in June 1995, filed its initial complaint in this case.

During discovery, Herman Miller found various reference to Eames in Palazzetti’s advertisements, catalog, poster, price list, and invoices. Herman Miller also discovered customer letters referring to Palaz-zetti’s furniture as an “Eames chair and ottoman” and as an “Eames chair.” In addition, customers in Palazzetti’s stores asked to purchase Palazzetti’s “Eames” products.

Herman Miller refers to evidence that Palazzetti was aware that Herman Miller was using the EAMES trademark when Palazzetti began to manufacture and sell its reproductions. In addition, Herman Miller notes that none of Palazzetti’s printed materials making reference to its Eames-designed furniture indicate that the furniture is a reproduction and that it was only when customers were in Palazzetti’s showrooms that Palazzetti employees referred to the products as “reproductions.”

II. Procedural History

A. Herman Miller’s Complaint

Herman Miller filed a complaint in the United States District Court for the Western District of Michigan on June 7, 1995. The complaint alleged that Palazzetti was violating Herman Miller’s rights in the EAMES trademark and the Eames lounge chair and ottoman trade dress, and Herman Miller’s rights of publicity in the names and likenesses of Charles Eames *306 and Ray Eames. Specifically, Herman Miller alleged that Palazzetti was using the trademark, trade dress, and names and likenesses of the Eameses to sell imported copies of Herman Miller’s Eames lounge chair and ottoman. Palazzetti objected to jurisdiction, contending that there was an insufficient nexus to sustain personal jurisdiction in federal district court in the Western District of Michigan. On December 27, 1995, Herman Miller voluntarily dismissed the action.

On June 25, 1996, based on the same factual allegations, Herman Miller filed the present action in the United States District Court for the Eastern District of Michigan. Herman Miller’s claims were that: (1) Palazzetti’s sale of the lounge chair and ottoman constituted trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1501 et seq., and the common law of Michigan, and a false designation of origin under 15 U.S.C. § 1125(a); (2) Palazzetti engaged in false advertising under the Lanham Act and the common law of Michigan; (3) Palazzetti’s actions constituted trade dress infringement under the Lanham Act; (4) Palazzet-ti was diluting Herman Miller’s EAMES trademark and trade dress; and (5) Palaz-zetti’s conduct violated Herman Miller’s right of publicity in the “Eames” name under the laws of California and Michigan.

B. Summary Judgment to Palazzetti as to Laches, but not as to Estoppel

On March 5, 1997, Palazzetti filed a motion for summary judgment on the issues of laches and estoppel, urging the court to deny Herman Miller any monetary recovery. On February 5, 1998, the district court entered an order granting the motion in part and denying it in part. The court ruled that: (1) Herman Miller knew of Palazzetti’s use of the name “Eames” in connection with furniture as early as March 1990; (2) furniture sold by Palaz-zetti in 1990 was the same furniture covered by the lawsuit; (3) it did not matter whether Palazzetti knew in 1990 of each and every particular piece of furniture sold by Palazzetti that may become subject to the lawsuit; and (4) the period of delay in bringing suit began in 1990. As a result, the court held that a rebuttable presumption of laches was created by Herman Miller’s failure to bring suit until 1995. The court determined that Herman Miller could not rebut the presumption of laches. The court ruled that laches barred Herman Miller from recovering damages for past trademark and trade dress infringement. The court also ruled, however, that the delay did not estop Herman Miller from future injunctive relief or post-suit monetary relief.

C. Summary Judgment to Palazzetti as to Trade Dress

On April 7, 1997, Palazzetti filed a second motion for summary judgment on Herman Miller’s trade dress infringement and dilution claims, arguing that Herman Miller had abandoned any rights that it might have had in the trade dress of the lounge chair and ottoman. Palazzetti’s motion was based on the argument that, for forty years, Herman Miller had permitted many companies to manufacture or sell lounge chairs and ottomans in the style originally designed by Charles and Ray Eames. Palazzetti argued that Herman Miller only asked the companies not to use the name “Eames,” but did not stop their production or sale of the lounge chairs and ottomans.

The district court granted Palazzetti’s motion. The court did not base its decision on the issue of abandonment, however. Instead, the court ruled that it need not reach the issue of abandonment since Herman Miller presented insufficient evi *307 dence to demonstrate that the lounge chair and ottoman were entitled to trade dress protection under the Lanham Act. Dismissal of Herman Miller’s trade dress infringement claim resulted in dismissal of Herman Miller’s trade dress dilution claim sub silentio.

D. Denial of Palazzetti’s Motion for Summary Judgment as to Right of Publicity

On June 25, 1997, Palazzetti filed a third motion for summary judgment. Palazzetti sought dismissal of Herman Miller’s claims with respect to its rights of publicity in the names and likenesses of Charles and Ray Eames under California and Michigan law. Palazzetti argued that neither Michigan nor New York (Palazzetti’s home state) recognized a post-mortem right of publicity. On February 5,1998, the court denied Palazzetti’s motion. The court found that Michigan law applied to the claim even though Michigan courts had yet to address either the existence of a right of publicity or whether a post-mortem right of publicity exists under Michigan law. The district court concluded that a post-mortem right of publicity exists under Michigan common law.

E. The Trial and its Aftermath

In late September and early October, 1998, a jury trial was held as to the remaining issues. On October 5, at the close of Herman Miller’s evidence, Palazzetti moved for judgment as a matter of law on Herman Miller’s false advertising claim. The motion was granted from the bench.

On October 5, 1998, the jury returned a verdict against Palazzetti on the issue of liability as to the remaining claims, finding that: (1) Palazzetti had infringed Herman Miller’s EAMES trademark; (2) Palazzetti had diluted Herman Miller’s EAMES trademark; (3) Palazzetti had engaged in unfair competition; and (4) Palazzetti had violated Herman Miller’s right of publicity in the names and likenesses of Charles Eames and Ray Eames.

On October 16, 1998, the district court issued a permanent injunction enjoining Palazzetti from: (1) using “Eames,” “C. Eames,” “Charles Eames,” or “Ray Eames” as a trademark; (2) acts causing dilution of the EAMES trademark; and (8) using the names and likenesses of Charles or Ray Eames in connection with Palazzetti’s furniture. The injunction applied nationwide. The permanent injunction permitted Palazzetti to “fairly identify” Charles and Ray Eames as the original designers of furniture after which Palaz-zetti patterned or reproduced its own furniture.

On October 26, 1998, the district court approved a stipulated partial judgment: (1) awarding Herman Miller post-filing damages of $72,500 for the trademark infringement, trademark dilution, unfair competition, and right of publicity claims; (2) allowing Palazzetti to seek appellate review of the verdict; and (3) allowing Herman Miller to seek appellate review of the grant of summary judgment on the trade dress issue and additional damages on account of trade dress infringement.

On December 1, 1998, the court entered a final judgment in this case consistent with its earlier rulings and the jury verdict. Both Herman Miller and Palazzetti filed timely appeals.

III. Analysis: Herman Miller’s Appeal

Herman Miller raises four issues in its appeal of the district court proceedings. We will address each of these four arguments in turn.

A. Summary Judgment to Palazzetti as to Herman Miller’s Trade Dress Claims

1. Standard of Review

This court reviews a district court’s grant of summary judgment de novo, using *308 the same standard employed by the district court. See Holloway v. Brush, 220 F.3d 767, 772 (6th Cir.2000) (en banc); Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 280 (6th Cir.1997). Summary judgment is appropriate where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R.Civ.P. 56(c). In deciding a motion for summary judgment, this court views the factual evidence and draws all reasonable inferences in favor of the non-moving party. See National Enters., Inc. v. Smith, 114 F.3d 561, 563 (6th Cir.1997).

2. Analysis

a. Trade Dress Background and the Effect of Samara Brothers

Herman Miller brings its trade dress claims under section 43(a) of the Lanham Act, which prohibits any person from using "any false designation of origin" that "is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin ... of his or her goods. . . ." 15 U.S.C. § 1125(a)(1)(A). 2 Trade dress refers to "the image and overall appearance of a product." Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 812 (5th Cir.1989). It "embodies that arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale." Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235, 1239 (6th Cir.1991) (citation and internal quotations omitted).

To prove a claim of trade dress infringement under § 43(a) of the Lanham Act, Herman Miller must establish, by a preponderance of the evidence: (1) that its trade dress in the Eames lounge chair and ottoman is protectable; (2) that there is a likelihood of confusion between Herman Miller's lounge chair and ottoman and that of Palazzetti; and (3) that the appropriated features of the lounge chair and ottoman are primarily nonfunctional. See ibid. The district court granted summary judgment to Palazzetti on the basis that Herman Miller's trade dress in the Eames lounge chair and ottoman is not protecta-ble. 3

Since the district court issued its decision in this case, the protectability analysis in a trade dress claim based on product design has changed considerably. At the time of the district court's decision, trade dress was protectable if it was proven either to be inherently distinctive or to have acquired distinctiveness through secondary meaning. See Two Pesos, 505 U.S. at 776, 112 S.Ct. 2753. The district court determined that Herman Miller's Eames lounge chair and ottoman neither were *309 inherently distinctive nor had acquired secondary meaning. Therefore, the court granted summary judgment to Palazzetti on Herman Miller’s trade dress claim.

In Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 216, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), the Supreme Court held that “in an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, a product’s design is distinctive, and therefore protect-able, only upon a showing of secondary meaning.” (emphases added). This decision resolved a circuit split in which the circuits differed as to which law to apply to determine whether trade dress was inherently distinctive. Some courts applied different tests depending on whether the trade dress was for the package containing the product or for the product itself. Part of this confusion was a result of the fact that it was only in 1992 that the Supreme Court held that trade dress, like a trademark, could be inherently distinctive. See Two Pesos, 505 U.S. at 773, 112 S.Ct. 2753.

In Samara Brothers, the Supreme Court noted several reasons why the inherently distinctive test should not be applied in trade dress cases based on product design. The Court noted the fact that product design “almost invariably serves purposes other than source identification,” such as making products more useful or appealing. 529 U.S. at 213, 120 S.Ct. 1339. The Court also stated that application of the inherently distinctive test in product design cases could deprive consumers of “the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves.... ” Ibid.

The Court then differentiated Samara Brothers from Two Pesos. Samara Brothers concerned a claim brought by a children’s clothing designer and manufacturer alleging that WalMart was selling “knockoff’ copies of the designer’s clothes, namely “a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like.” 529 U.S. at 207, 208, 120 S.Ct. 1339. In Two Pesos, the Court held that the trade dress of a chain of Mexican restaurants, which the plaintiff described as “a festive eating atmosphere having interior dining and patio areas decorated with antiques, bright colors, paintings and murals,” id. at 214-15, 120 S.Ct. 1339 (quoting Two Pesos, 505 U.S. at 765, 112 S.Ct. 2753), could be protected under § 43(a) without a showing of secondary meaning. Samara Bros., 529 U.S. at 215, 120 S.Ct. 1339 (citing Two Pesos, 505 U.S. at 776, 112 S.Ct. 2753). The Samara Brothers Court differentiated Two Pesos on the basis that the “trade dress at issue, the decor of a restaurant, seems to us not to constitute product design.” Samara Bros., 529 U.S. at 215, 120 S.Ct. 1339. The Court stated that it was either “product paekaging-which, ... normally is taken by the consumer to indicate origin” or “some tertium quid that is akin to product packaging and has no bearing on the present case.” Ibid.

After Samara Brothers, trade dress claims based on product packaging can be proven upon a showing of either inherent distinctiveness or secondary meaning, but trade dress claims based on product design can be proven only upon a showing of secondary meaning. The Court noted that this distinction could produce some hard cases “at the margin.” Ibid. The Court cited one example:

a classic glass Coca Cola bottle, for instance, may constitute packaging for those customers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle, *310 rather than a can, because they think it more stylish to drink from the former.

Ibid. To the extent that difficult cases exist, the Court stated that “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Ibid.

This is not a hard case, however. Herman Miller’s trade dress claims regarding the Eames lounge chair and ottoman are based on product design and cannot be confused with product packaging. Therefore, on appeal we must analyze Herman Miller’s trade dress claims solely to determine if Herman Miller can demonstrate that its Eames lounge chair and ottoman have acquired sufficient secondary meaning in the marketplace that they have become associated in the public’s mind with Herman Miller. The district court’s inherently distinctive analysis is no longer relevant to this case in light of the Supreme Court’s holding in Samara Brothers.

b. Protectable Trade Dress and Abandonment

Before analyzing whether Herman Miller’s Eames lounge chair and ottoman have become protectable trade dress by acquiring secondary meaning, we must note the procedural posture of Herman Miller’s trade dress claims. Palazzetti’s summary judgment motion as to Herman Miller’s trade dress claims was based on the argument that Herman Miller had abandoned any trade dress rights it may have had in the Eames lounge chair and ottoman. It was only in Herman Miller’s response brief that Herman Miller raised the issues of inherent distinctiveness and secondary meaning related to the protectability of its trade dress. Palazzetti responded to these issues in its reply brief.

Herman Miller raised the issue of the protectability of its trade dress to the district court as a defense against Palazzetti’s claim of abandonment. In its brief to the district court, Herman Miller noted that abandonment occurs “[o]nly when all rights of protection are extinguished.” Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 765 (C.C.P.A.1982). Herman Miller used the inherently distinctive and secondary meaning inquiries related to protectable trade dress as a means of arguing to the district court that its lounge chair and ottoman have retained their “strength as an indicator of source” and, therefore, have not been abandoned. Herman Miller appears to have been conflating the protectable trade dress inquiry and the abandonment inquiry. They are separate and distinct. According to Section 45 of the Lanham Act, trade dress may be abandoned:

when any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.

15 U.S.C. § 1127. Therefore, the fact that trade dress may be protectable by acquiring secondary meaning does not mean it is automatically protected since the owner’s trade dress rights might have been abandoned through actions of the owner that caused the trade dress to become generic or lose its significance as a mark.

The district court ruled in favor of Pa-lazzetti on the basis that Herman Miller had not presented sufficient factual evidence demonstrating that the Eames lounge chair and ottoman were either inherently distinctive or had acquired secondary meaning. In other words, the district court concluded that there was no genuine issue of material fact that the lounge chair and ottoman were protectable trade dress. Since the court concluded *? that the lounge chair and ottoman were not protectable trade dress, the court did not address the issue of abandonment, since there was no trade dress that Herman Miller could have abandoned.

Our task on appeal is to determine if the district court erred in concluding that Herman Miller had presented insufficient factual evidence to demonstrate that its trade dress in the lounge chair and ottoman is protectable. As we will explain, Herman Miller has presented sufficient factual evidence to raise a genuine issue of material fact as to the protectability of its trade dress. Therefore, it has preserved this issue for trial. However, the fact that Herman Miller has raised a genuine issue of material fact as to whether its Eames lounge chair and ottoman trade dress is protectable, does not dispose of the issue of abandonment, which we will remand to the district court for further consideration, as the district court did not consider this issue in its summary judgment decision.

c. Have the Lounge Chair and Ottoman Acquired Secondary Meaning?

In contrast to the inherently distinctive test, the secondary meaning test focuses on acquired distinctiveness. Secondary meaning has been defined as follows:

To acquire a secondary meaning in the minds of the buying public, an article of merchandise when shown to a prospective customer must prompt the affirmation, “That is the article I want because I know its source,” and not the negative inquiry as to “Who makes that article?” In other words, the article must proclaim its identification with its source, and not simply stimulate inquiry about it.

Ferrari, 944 F.2d at 1289, quoting West Point Mfg. Co. v. Detroit Stamping Co., 222 F.2d 581, 595 (6th Cir.1955). Herman Miller must demonstrate that its Eames lounge chair and ottoman have become identified with Herman Miller in the minds of the potential customer.

The district court applied a six-factor test devised by the Second Circuit in analyzing the issue of secondary meaning. See Centaur Communications, Ltd. v. A/S/M Communications, Inc., 880 F.2d 1217, 1222 (2d Cir.1987). Since the district court’s decision, this court has adopted a similar, but slightly broader, seven-factor test. See Marketing Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 937 (6th Cir.1999), rev’d on other grounds sub nom. TrafFix Devices v. Marketing Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) (adopting test articulated in Sassafras Enters., Inc. v. Roshco, Inc., 915 F.Supp. 1, 7 (N.D.Ill.1996)). 4

In considering this case on appeal we must apply the TrafFix factors that this court has adopted to analyze secondary meaning in a trade dress case. The factors are:

1. direct consumer testimony;

2. consumer surveys;

3. exclusivity, length, and manner of use;

*312 4. amount and manner of advertising;

5. amount of sales and number of customers;

6. established place in the market; and

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