Pocky can’t convince SCOTUS to rehear trade dress suit
The US Supreme Court won’t reconsider a precedential ruling on trade-dress protection against the makers of Pocky biscuits.
Ezaki Glico failed to convince the high court to review a Third Circuit ruling that invalidated its trade dress protection for the stick-shaped confectionery, according to a notice denying Ezaki’s writ of certiorari published on 1 November.
The Third Circuit noted that the cookie design was “functional” and therefore not entitled to trade dress protection, which allowed competitor Lotte International America Corp to continue selling its own similarly shaped snacks.
The Japanese confectioner started selling Pocky in the US in 1978 and secured trademarks and patents in order to ward off imitators, including two product configurations registered as trade dresses.
It also had a utility patent for a “Stick Shaped Snack and Method for Producing the Same”.
Lotte started making its own stick-shaped biscuits called Pepero in 1983, which prompted Ezaki to send letters to Lotte notifying them of its registered trade dress and asking them to cease and desist selling Pepero in the US.
But Lotte continued selling Pepero, with no action taken until 2015 when Ezaki filed a lawsuit against the competitor with the US District Court for the District of New Jersey, alleging trademark infringement and unfair competition.
The New Jersey court granted a summary judgment for Lotte, holding that because Pocky’s “configuration” is functional it can not be protected as trade dress.
This led Ezaki to appeal to the summary judgment to the Third Circuit, which claimed that patents, not trademarks or dresses, covered useful inventions, stripping Ezaki of its decades-old trade dress protections.
When judging the functionality of Pocky, it cited Ezaki’s internal documents that show that it wanted to make a snack that people could eat without getting chocolate on their hands. The stick shape was also created in order to make it “easy to hold so it can be shared with others”. This, according to the Third Circuit, constituted functional value.
“If an inventor created a new light-bulb shape that improved illumination, he could not trademark that shape,” the Third Circuit noted.
Writing for WIPR last year, Julia Anne Matheson of Potomac Law said Pocky’s loss at the Third Circuit could have repercussions for US trade dress law.
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