Ezaki Gliko Kabushiki Kaisha v. Lotte International America Co
Precedential, 3d Cir. (Filed: January 26, 2021) (2021)
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Rule of Law:
A product's design feature is functional, and therefore not protectable as trade dress, if it is useful. A feature does not need to be essential to the product's purpose to be deemed functional; it is sufficient that the feature improves the cost, quality, or use of the product.
Facts:
- Ezaki Glico, a Japanese confectionery company, invented and produces Pocky, a thin, stick-shaped cookie partially coated with chocolate or flavored cream, leaving an uncoated portion to serve as a handle.
- Ezaki Glico began selling Pocky in the United States in 1978 and secured two registered trade dresses for the product's configuration.
- In 1983, Lotte, another confectionery company, began producing Pepero, a snack with a design and appearance remarkably similar to Pocky.
- Lotte has been selling its Pepero snack in the United States for over three decades.
- From 1993 to 1995, Ezaki Glico sent cease-and-desist letters to Lotte regarding the sale of Pepero.
- Lotte initially assured Ezaki Glico it would halt sales but later resumed, and Ezaki Glico took no further action for nearly two decades.
- Ezaki Glico's advertising for Pocky has promoted the utilitarian advantages of its design, including its 'no mess handle' and the compact stick shape that makes it portable and easy to share.
Procedural Posture:
- Ezaki Glico sued Lotte in the U.S. District Court for the District of New Jersey, alleging federal and state trade-dress infringement and unfair competition.
- The District Court granted summary judgment in favor of Lotte, holding that the Pocky product configuration is functional.
- Ezaki Glico, as the appellant, appealed the District Court's summary judgment ruling to the United States Court of Appeals for the Third Circuit, with Lotte as the appellee.
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Issue:
Is the product configuration trade dress for the Pocky snack, which consists of a thin, stick-shaped biscuit partially coated in cream, functional and thus ineligible for trademark protection?
Opinions:
Majority - Judge Bibas
Yes, the product configuration trade dress for the Pocky snack is functional and thus ineligible for trademark protection because its features are useful. The functionality doctrine prevents trademark law from providing patent-like protection for useful product designs. A feature is functional if it is useful, not only if it is essential. Pocky's design elements—the uncoated handle, the slender stick shape, and the compact form—are all useful, as they make the snack easier to hold without mess, easier to eat, and more efficient to package and share. Ezaki Glico's own advertising, which touts these convenient and utilitarian aspects, serves as strong evidence of functionality. While alternative designs exist, this does not negate the usefulness of Pocky's specific configuration. Therefore, because the design is functional, it cannot be protected as trade dress.
Analysis:
This decision reinforces a broad interpretation of the functionality doctrine in trade dress law, clarifying that 'functional' means 'useful' rather than 'essential.' It solidifies the boundary between patent law, which protects useful inventions for a limited time, and trademark law, which protects source identifiers indefinitely. The ruling makes it more difficult for manufacturers to claim trade dress protection for product designs that offer any significant utilitarian, ergonomic, or cost-saving advantages. Future cases involving product configuration trade dress will likely place greater weight on evidence of a feature's usefulness, including the manufacturer's own marketing claims.
