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Product configurations, including cookie shapes, are protectable as trade dress only to the extent the product features are incidental, arbitrary, or ornamental aspects that identify the product’s source. Functional product features are never protectable as trade dress. These tenets of trade dress law were recently affirmed by the U.S. Court of Appeals for the Third Circuit in <a href="https://www2.ca3.uscourts.gov/opinarch/193010ppan.pdf">Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp</a>. (Jan. 26, 2021).

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In this case, Ezaki Glico, the manufacturer of Pocky cookie sticks, owned two trademark registrations for the configuration of its chocolate-dipped cookie sticks and asserted that Lotte’s PEPERO brand chocolate-dipped cookie sticks infringed its trade dress. The PEPERO product, the court observed, “looks remarkably like Pocky”:

Lotte moved for summary judgment, claiming that Ezaki Glico’s asserted trade dress was functional and therefore incapable of being infringed. Ownership of a registration covering trade dress entitles the trade dress to a presumption that it is nonfunctional and shifts the burden to the defendant to show that it is functional.

Lotte introduced undisputed evidence that the Pocky configuration was designed with functionality in mind: that the stick was partially uncovered with chocolate to serve as a handle, that the long sticklike design was made for ease of consumption and convenience in packaging and sharing as a snack, and that Ezaki Glico had advertised the benefits of these features. The district court granted summary judgment to Lotte, reasoning that so long as the Pocky design was driven “at least in part by functional considerations,” the configuration was functional, as opposed to “merely arbitrary, incidental, or ornamental.”

The Third Circuit affirmed, rejecting Ezaki Glico’s argument on appeal that “functional” means “essential.” The appellate court found this test too narrow, noting that while the Lanham Act does not define functionality, plain meaning and Supreme Court precedent support defining “functional” as “useful.” Although the Supreme Court stated in Qualitex Co. v. Jacobson Prod. Co., Inc., 514 U.S. 159, 165 (1995), that product configuration is functional “if it is essential to the use or purpose of the article,” the Third Circuit noted that this is not the only way to demonstrate functionality; other means of establishing functionality include showing that the feature “affects the cost or quality of the article” or that “exclusive use of [the feature] would put competitors at a significant non-reputation-related disadvantage.” TrafFix Devices, Inc. v. Mktg. Displays Inc., 532 U.S. 23, 29 (2001). Moreover, the court noted, the burden on the defendant is not to show that the entire product or type of feature is functional, but rather to show that the particular design chosen for the feature is functional.

Accordingly, the Third Circuit assessed the evidence and found that the Pocky configuration was useful, and thus functional, as “[e]very feature of Pocky’s registration relates to the practical functions of holding, eating, sharing, or packing the snack.” The court further found that evidence of alternative designs did not make the features of Pocky less useful. Finally, the Third Circuit addressed the fact of Ezaki Glico’s utility patents covering a method for making Pocky. It found that the district court had erred in considering those utility patents to be evidence of functionality, because the trade dress features of Pocky were not the “central advance” of those utility patents. However, the Third Circuit ruled this to be harmless error in view of the many other factors establishing that the Pocky trade dress was functional. As the court concluded: “That’s the way the cookie crumbles.”

Third Circuit Finds Pocky Trade Dress Functional, Not Protectable