A sticky mess: Pocky ruling further splits the circuits
Last week, the Court of Appeals for the Third Circuit issued a simplistic decision on product configuration trade dress that, if adopted, could effectively eliminate most trade dress claims within that circuit. The Third Circuit’s decision is troubling on multiple levels.
Although plaintiff’s trade dress in a partially chocolate-dipped cookie stick was the subject of two incontestable federal registrations, the court affirmed (on summary judgment) that plaintiff’s trade dress was useful and therefore functional without any consideration of competitive alternatives.
That the decision was reached on summary judgment is notable as the case involves one of the most nuanced and challenging areas of trademark law—the intersection of patent and trademark law.
The court’s decision relies on a standard dictionary definition to construe a complicated legal term of art. It drastically changes the functionality standard without transparency into its analysis or guidance on a new test. And it charts a path that diverges dramatically from its fellow circuits and from the prior directives of the US Supreme Court.
Functionality
Whereas utility patents afford protection for useful and novel processes, machines, and material inventions for a finite period of time, trade dress protection can be perpetual. To encourage innovation and fair competition, US trademark law excludes from perpetual protection both specific product features and overall product configurations which qualify as “functional”.
While the concept of functionality has long existed in trademark parlance, courts today follow the functionality test articulated by the Supreme Court in Qualitex Co v Jacobson Products Co (1995)—a case addressing the protectability of a single colour—which defined a product feature as functional “if it is essential to the purpose of the article or if it affects the cost or quality of the article”.
