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Intellectual property: Protection of trade dress

On Behalf of | Dec 21, 2020 | Intellectual Property, Trademark |

Entrepreneurs and companies of all sizes and types must vigilantly protect their intellectual property. A brand, invention or creative work can be the basis of an entire business plan and if it becomes vulnerable to competitors, the business could face market loss and financial decline.

Trade dress is part of trademark law

Many people are not familiar with trade dress as an intellectual property asset. The U.S. Patent and Trademark Office (USPTO) in its Trademark Manual of Examining Procedure explains that trade dress falls under the umbrella of trademark law, historically protecting a product’s “dressing” (i.e., packaging) as an indication of the product’s source.

Over time, according to the USPTO, leading federal cases have expanded trade dress beyond just packaging to include other aspects of a product or service like:

  • Design, meaning “shape or configuration”
  • Image, look and appearance
  • Physical makeup, including color, graphics, shape and similar elements
  • Flavor

The Manual quotes the U.S. Supreme Court, which said that “almost anything at all … capable of carrying meaning” could be a “device” or “symbol” that functions as trade dress by identifying the product’s origin.

Trade dress that is functional is unprotected

The Trademark Act prohibits registration as a trademark or trade dress any “matter that … is functional,” which has been widely described as meaning “useful.” A recent case from the U.S. Court of Appeals for the 3rd Circuit interpreted functionality in the context of cookie design. (The case text at the link includes pictures of the baked goods in question.)

Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. is a trade-dress infringement dispute about similar long, skinny cookie sticks dipped in chocolate or flavored cream. The opinion cleverly begins: “This is a tale of more than just desserts.”

Japanese company Ezaki Glico is known for its famous Pocky cookie stick, sold in the U.S. for decades, where it eventually faced Lotte and its competing product Pepero. Despite Ezaki Glico having federal trade-dress registration for Pocky, Lotte prevailed in the trade-dress infringement lawsuit because the court found the design of Pocky was functional and therefore not protectable.

A cookie handle is functional and therefore up for grabs for competitors’ use

The court explained that the “functionality doctrine … protect[s] competition by keeping a producer from monopolizing ‘a useful product feature,’” quoting the U.S. Supreme Court, but “’merely … ornamental, incidental, or arbitrary aspect[s] of the device” are not functional. Here, Ezaki Glico designed Pocky with usefulness in mind – the end of the stick functions as a handle to keep chocolate off the hand and make it easy to eat. The thin design also makes it easy to pack several into a box to take with you and share with others.

Because the trade dress was functional, and not “arbitrary or ornamental flourishes … to identify … the source,” it was not protectable.

We will touch further on trade dress in future posts. In the meantime, a lawyer can provide information and representation to an individual or company seeking to protect trade dress or facing accusations of trade dress infringement.

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