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Any Way You Slice It, Functionally No Trademark

Posted by James Juo | Sep 11, 2023 | 0 Comments

Trade dress protects “the overall look of a product.” Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp., 986 F.3d 250, 255 (3d Cir. 2021) (internal quotation marks omitted). But trademark protection is not available for trade dress “that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). If the trade dress is “functional,” then it is not protectable and competitors can copy it freely. Ezaki Glico, 986 F.3d at 258 (trade dress as a whole “need only be useful, not essential,” to be found functional).

If a design choice “would put competitors at a significant non-reputation-related disadvantage,” then it is functional. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). Even if the design chosen both promotes a brand and also “makes a product work better,” it is functional and unprotectable. Ezaki Glico, 986 F.3d at 258 (finding trade dress of POCKY® sticks to be functional). “So long as the design improves cost, quality, or the like, it cannot be protected as trade dress.” Id. If the design gives the product a significant competitive edge beyond identifying its source, then it is functional. See Qualitex, 514 U.S. at 164, 169.

Watermelon-Colored Wedge-Shaped Candy

PIM Brands sells “Sour Jack” watermelon candies, which are wedge-shaped and red-and-green-colored like a slice of watermelon. The Third Circuit has affirmed that the combined color and shape functions to tell consumers the candy is watermelon-flavored, and thus is not protectable as a trademark. PIM Brands Inc. v. Haribo of Am. Inc., No. 22-2821, — F.3d — (3rd Cir. Sept. 7, 2023).

            Hot summer days call for a slice of watermelon: a juicy, red wedge with a green-and-white rind. Some candy companies evoke this image by using colors alone, making their candies red, white, and green. But the watermelon effect is significantly stronger if the red-white-and-green candy is shaped like a wedge. Because the tricolored shape is recognizable as watermelon flavored, the whole appearance is useful. So a candymaker cannot block competitors from using the combined shape and colors by trademarking that combination.


            Any reasonable juror would agree: The whole trade dress, not just the colors, makes this candy resemble a watermelon slice. The candy and the fruit share similar shapes and colors. Even the orientations match: each has a long, wide, green base; a thin, white layer running the length and width of the green base; and a triangular, reddish-pink top covering that white layer and angling up to a point.

The Third Circuit held that the color and shape of watermelon candies to resemble watermelon slices is “functional” and thus not protectable trade dress.

Functionality is not a high bar. Trade dress is limited to design choices that serve only to brand a product.

The Court also discussed a prior case, Ezaki Glico, involving POCKY® sticks or thin, elongated cookies partially coated with chocolate. The stick shape let it fit more cookies into each package; and dipping only part of the stick in chocolate helped people eat it without getting chocolate on their hands. Id., 986 F.3d at 259. Although that combined design was claimed as a trade dress, each element of the claimed trade dress served a function (or in that case, two separate functions), so the whole trade dress was functional. Id. at 257–59.

[H]ere, we have two features (shape and color) whose designs serve a single function—identifying the flavor. So this case answers a follow-up question: When a trade dress has an identifiable function, do we need to analyze each feature separately to see if it independently contributes to that function? No.

            Rather than divide and conquer, when features' designs together serve a function, we look at those designs together. As we noted in Ezaki Glico itself, we analyze functionality “at the level of the particular design chosen for feature(s).” Id. at 257. When a product's overall look serves some function, we ask whether that function is served by the whole or by some discrete part of the trade dress.

Because one cannot use a functional trade dress to shut down a competing product, the Third Circuit affirmed the District of New Jersey's summary judgment to cancel PIM's trademark, Registration No. 5,029,701 (for “the shape of a wedge for candy, with an upper green section with white speckles, followed by a narrow middle white section and followed by a lower red section with white speckles”) for being functional, “with further instructions to limit the cancellation order to the primary registration, leaving the [later] supplemental registration [for a tricolored wedge with unspecified colors] intact for another day.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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