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There’s No Sugarcoating It: Pocky’s Cookie Design Trade Dress Is Functional

Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was functional and therefore not subject to trade dress protection, affirming summary judgment for defendant Lotte International America Corp. Ezaki Glico Kabushiki Kaisha v. Lotte Int’l America Corp., Case No. 19-3010 (3d Cir. Jan. 26, 2021) (Bibas, C.J.)

Both Ezaki Glico Kabushiki Kaisha and Lotte make thin, stick-like cookies with one side dipped in chocolate or flavored cream. Ezaki Glico’s product, Pocky, and Lotte’s product, Pepero, can be seen in the images below. Ezaki Glico obtained two incontestable trade dress registrations for its Pocky product design as well as a utility patent for a “Stick Shaped Snack and Method for Producing the Same.”

In 2015, Ezaki Glico sued Lotte for trade dress infringement. The district court found the Pocky product configuration functional and therefore not subject to trade dress protection, and granted Lotte’s motion for summary judgment. In October 2020, on appeal, the Third Circuit issued its initial opinion affirming the district court’s decision and rejecting Ezaki Glico’s argument that its trade dress was not functional because it was not essential to its product. (Read more on the initial opinion here.)

Ezaki Glico petitioned for a rehearing en banc, which the Court rejected. Nonetheless, the original panel vacated its earlier ruling and issued a revised opinion that provided further clarification on the functionality doctrine, but likewise affirmed summary judgment for Lotte and held that the Pocky product configuration was functional.

The Third Circuit again rejected Ezaki Glico’s attempts to equate “functional” with “essential”: “If the Lanham Act protected designs that were useful but not essential, as Ezaki Glico claims, it would invade the Patent Act’s domain. Because the Lanham Act excludes useful designs, the two statutes rule different realms.” The Court cited examples from earlier cases to demonstrate that the proper inquiry for functionality looks to whether the particular design chosen for a feature, as opposed to the feature itself, is useful: “Though French press coffeemakers need some handle, there is no functional reason to design the particular handle in the shape of a ‘C.’ . . . And though armchairs need some armrest, there is no functional reason to design the particular armrest as a trapezoid.”

The Third Circuit looked to Ezaki Glico’s registrations for the features of the claimed trade dress, noting that in this case, “[e]very feature of Pocky’s registration relates to the practical functions of holding, eating, sharing, or packing the snack.” Accordingly, the designs chosen for the Pocky configuration rendered the product more useful as a snack and were “not arbitrary or ornamental flourishes that serve only to identify Ezaki Glico as the source.” Having determined that Lotte sufficiently demonstrated that the Pocky trade dress was useful, the Court held that it was “thus functional” and not subject to trade [...]

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Sticky Situation? Circumstantial Evidence Can Support Intent to Confuse in Trade Dress Claims

The US Court of Appeals for the 11th Circuit reversed a district court’s grant of summary judgment for the defendant on trade dress infringement and trade dress dilution claims, finding that evidence relating to the likelihood of confusion was not viewed in the light most favorable to the plaintiff. However, the Court affirmed the grant of summary judgment for the defendant on the plaintiff’s false advertising claims because the allegedly deceptive advertising was not material to consumer purchasing decisions. J-B Weld Co., LLC v. Gorilla Glue Co., Case No. 18-14975 (11th Cir. Oct. 20, 2020) (Tjoflat, J.) (Carnes, J., concurring).

J-B Weld and Gorilla Glue are competitors specializing in heavy-duty adhesive products. Gorilla Glue introduced an adhesive under the brand name GorillaWeld that mimicked the packaging of a J-B Weld product. Gorilla Glue advertised GorillaWeld as a steel bond epoxy based on the strength of the bond and its similarity to an epoxy-group polymer, even though the product was not a chemical epoxy and did not contain any steel. J-B Weld sued, alleging trade dress infringement based on the Lanham Act and Georgia law, trade dress dilution based on Georgia law, and false advertising under the Lanham Act. The district court granted Gorilla Glue summary judgment on all claims, finding no trade dress infringement or dilution based on insufficient evidence of likelihood of confusion, and no false advertising because the evidence did not demonstrate that Gorilla Glue’s steel bond epoxy claim was material to consumer purchasing decisions. J-B Weld appealed, arguing that the district court did not properly view the evidence in the light most favorable to J-B Weld.

The 11th Circuit reversed on the trade dress infringement and dilution claims and affirmed on the false advertising claim. On the trade dress infringement claims, the 11th Circuit found that the district court did not view the evidence in the light most favorable to J-B Weld in analyzing the likelihood of confusion between the respective trade dress of J-B Weld and GorillaWeld, as required in the context of summary judgment. The 11th Circuit found that the district court did not properly credit evidence relevant to the similarity of the designs, Gorilla Glue’s intent and instances of actual confusion. For example, despite multiple similarities between the J-B Weld and GorillaWeld packages (including a V-shape tube arrangement and the use, emphasis and location of certain text), the district court found that the presence of the Gorilla Glue logo, brand name and color scheme negated a finding of similarity. The 11th Circuit deemed this finding error in the context of summary judgment. The Court also determined that communications from Gorilla Glue’s packaging design team that repeatedly referenced J-B Weld’s packaging and expressed a desire to use similar elements (including a communication in which a Gorilla Glue employee referred to the GorillaWeld design as a “knock off”) were improperly ascribed to innocuous motives based on self-serving testimony from a Gorilla Glue employee. As the Court explained, summary judgment required drawing all inferences in the light [...]

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Cookie Trade Dress Infringement Case Crumbles in Face of Functionality Challenge

The US Court of Appeals for the Third Circuit found that trade dress protection did not extend to the design of a chocolate-dipped, stick-shaped cookie, because the product configuration was useful. Ezaki Glico Kabushiki Kaisha v. Lotte Int’l America Corp., Case No. 19-3010 (3d Cir. Oct. 8, 2020) (Bibas, J.).

Ezaki Glico is a Japanese confectionary company that makes and sells the snack food Pocky, which is a thin, stick-shaped cookie with one side dipped in chocolate (or a flavored cream) and the other uncoated. Pocky cookies have been sold in the United States for more than 40 years, during which time Ezaki Glico obtained two trade dress registrations for the Pocky design and a patent for a “Stick Shaped Snack and Method for Producing the Same.”

In 2015, Ezaki Glico sued its competitor, Lotte, alleging that Lotte’s similarly designed cookie, Pepero, infringed the Pocky trade dress. The district court granted Lotte’s motion for summary judgment, finding the Pocky product configuration functional and therefore not protected by trade dress. Ezaki Glico appealed.

Ezaki Glico argued that the Pocky trade dress is not functional because it is not essential to its design. The Third Circuit disagreed, stating “that test is too narrow.” The Court explained that functionality applies to features that are useful, even if they are not necessarily essential. The Court enumerated four indicators of functionality:

  • Evidence that the feature or design makes the relevant product work better
  • Examples of marketing materials touting the usefulness of the feature or design
  • Existence of a utility patent
  • Availability of other designs.

The Third Circuit found that most of these factors supported the finding of functionality. First, the design makes the product work better because “[e]very feature of Pocky’s registration relates to the practical functions of holding, eating, sharing, or packing the snack.” Ezaki Glico’s advertisements also promoted the functional features of Pocky’s design: they featured phrases such as “convenient design,” “the no mess handle of the Pocky Stick,” and “easier for multi-tasking without getting chocolate on your hand.” Likewise, the Court was unpersuaded by Ezaki Glico’s evidence of alternative designs, finding that “[e]very aspect of Pocky is useful. The nine other designs do not make it less so.”

The existence of the utility patent, however, was not a supporting factor in the functionality analysis. The Third Circuit explained that “the patent’s innovation is a better method for making the snack’s stick shape. The method is useful for making the shape whether or not the shape itself is useful for anything.” Although the district court improperly considered this factor in its analysis, the Third Circuit noted that the misstep was “immaterial” given that the district court ultimately reached the correct conclusion.

Practice Note: It is not necessary for a design feature to be essential for it to be considered functional. Trade dress may be considered functional—and therefore not protectable via trademark law—if it is merely useful to the design.




More Than a Feeling: No Fees for Frivolous Claim Where “Perceived Wrongs Were Deeply Felt”

Addressing the appropriateness of the district court’s decision to deny attorneys’ fees relating to a copyright claim it labeled “frivolous,” the US Court of Appeals for the Seventh Circuit affirmed the denial, despite the strong presumption in favor of awarding fees. Timothy B. O’Brien LLC v. Knott, Case No. 19-2138 (7th Cir. June 17, 2020) (Flaum, J).
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