In a recent decision, Ezaki Glico v. Lotte International American Corporation, the Third Circuit rejected a manufacturer’s claims of trade dress infringement regarding Pocky, a chocolate covered cookie stick which Ezaki Glico invented in the 1970s.[1] The court concluded that Pocky’s overall shape and look—cookie sticks partially coated in chocolate—were functional and thus not protected from competitor imitation.
The Third Circuit’s decision, which focused on the definition of “functionality” as it pertains to product design, carries important implications for marketing products in the food and beverage industries.
Trade Dress Background
Before diving into the Ezaki Glico facts, a few words on trade dress:
In the world of marketing and advertising, certain product features, such as color and shape, may—in the mind of the consumer—become synonymous with the product itself. For example, a little blue box, with a white ribbon, evokes images of a shimmering diamond Tiffany solitaire. Red soles on a pair of high-heeled pumps left two luxury footwear brands, Louboutin and YSL, waging war in the courtroom for several years.
These features, which the Lanham Act refers to as “trade dress,” encompass the “design and appearance of the product” as well as features like graphics, packaging, size, shape, and even color.[2] A company can gain protection for its trade dress by registering it with the United States Patent and Trademark Office. Alternatively, even if unregistered, trade dress can acquire protected status through the company’s repeated and consistent use of it such that it acquires “secondary meaning”—which is to say that consumers who see a certain container shape, graphic, or packaging come to associate that feature with the manufacturer.
Trade dress owners often seek to prevent competitors from using their trade dress and trading on their goodwill in the marketplace by bringing claims for infringement under the Lanham Act. To assert trade dress infringement, a party must prove that the design has acquired a secondary meaning or is inherently distinctive, and that the infringer’s use of the design or feature is likely to create confusion about who makes the product.[3]
However, as particularly relevant to Ezaki Glico, even product features that are distinctive and have become important marketing tools are not necessarily protected from imitation if they are also “functional.” Unlike patent law, which protects product inventions for a limited time, trademark and trade dress protections allow the manufacturer to monopolize the feature in perpetuity. To encourage competition in the marketplace, the functionality doctrine prohibits a manufacturer from monopolizing “a useful product feature” and acts as a defense against infringement claims.[4] If a court concludes that a feature is functional, then it is not entitled to protection as...
