Pim Brands Inc v. Haribo of America Inc
81 F.4th 317 (2023)
Rule of Law:
A product's trade dress, comprising a specific shape and color combination, is functional and therefore unprotectable under trademark law if the combination as a whole serves a useful purpose beyond merely identifying the product's source, such as clearly signaling its flavor.
Facts:
- PIM Brands Inc. (PIM) introduced a new chewy candy called Sour Jacks Wedges approximately two decades ago.
- The original Sour Jacks Wedges candy was watermelon flavored, featuring a green layer topped by a thin white band and a larger red section, all shaped like a wedge.
- PIM advertised the candy using phrases such as “The Ultimate Shape of Sour,” “Respect the Wedge,” and “Livin’ on the Wedge.”
- PIM later expanded Sour Jacks Wedges to include other flavors, each matching its fruit flavor with color but retaining the distinctive wedge shape.
- Haribo of America Inc. (Haribo) recently introduced its own chewy watermelon candy.
- Haribo’s watermelon candy is designed as an elongated watermelon wedge, colored red, white, and green.
- Haribo designed its candy's shape and colors specifically to match its watermelon flavor.
Procedural Posture:
- PIM Brands Inc. sued Haribo of America Inc. in the United States District Court for the District of New Jersey for trademark and trade-dress infringement under the Lanham Act and for unfair competition under New Jersey common law.
- Haribo moved for summary judgment, arguing that PIM's trade dress was functional and asked the court to cancel PIM's trademark registration for the watermelon-colored wedge.
- The District Court granted summary judgment to Haribo, ruling that PIM's combination of colors and shape was functional because it helped identify the candy's watermelon flavor, making it unprotectable as trade dress.
- PIM (appellant) appealed the District Court's grant of summary judgment to the United States Court of Appeals for the Third Circuit (appellee is Haribo).
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Issue:
Is a product's trade dress, comprising a specific shape and color combination, functional and therefore unprotectable under trademark law when the combined features primarily serve to identify the product's flavor?
Opinions:
Majority - Bibas, Circuit Judge
Yes, a product's trade dress, comprising a specific shape and color combination, is functional and therefore unprotectable under trademark law when the combined features primarily serve to identify the product's flavor. Trademark law protects distinctive product features (trade dress) that identify a source, but it does not protect designs that are useful or functional. A design is deemed functional if it serves a purpose beyond branding, such as improving cost, quality, or making the product “work better,” thereby putting competitors at a significant non-reputation-related disadvantage. Functionality is a low bar; a design need only be useful, not essential. When analyzing a trade dress composed of multiple features, if those features’ designs together serve a single function, the court considers them holistically, consistent with the Lanham Act's directive to assess whether the mark 'as a whole' is functional. In this case, PIM's registered trade dress combines a wedge shape with red, white, and green colors. The parties agreed that the color scheme alone is functional because it identifies the watermelon flavor. The court concluded that the wedge shape, when combined with these specific colors, further contributes to and strengthens the function of identifying the candy’s watermelon flavor. The visual resemblance of the candy (its shape, colors, and orientation) to a watermelon slice is undeniable and serves to eliminate any ambiguity about the flavor. Although PIM argued that the shape separately identifies the brand, the court found that the shape and colors work together to create a product reminiscent of a juicy watermelon wedge. Because this combined trade dress usefully signals the candy's flavor, providing a competitive advantage beyond mere source identification, it is functional and thus unprotectable.
Analysis:
This case reinforces the 'functionality doctrine' in trade dress law, clarifying that a combination of otherwise distinct features (like shape and color) will be considered functional if, taken together, they serve a useful purpose beyond source identification. It emphasizes that features contributing to the same utility should be analyzed holistically, rather than attempting to isolate non-functional aspects. The ruling limits the scope of trade dress protection for product designs that naturally evoke their contents or flavor, promoting competition by preventing one company from monopolizing useful or descriptive product attributes. It highlights that the bar for functionality is low, requiring only that the design provides a 'significant competitive edge' beyond branding.
