On October 8, 2020, the US Court of Appeals for the Third Circuit (the Court) released its decision in Ezaki Glico Kabushiki Kaisha v Lotte International America Corp, No. 19-3010 (3d Cir. 2020), in which it upheld the decision of the District Court finding that the "Pocky" stick-shaped cookie design was functional and therefore not eligible for trade dress protection.

The appellant, a Japanese confectionary company, Ezaki Glico Kabushiki Kaisha (Ezaki) manufactures and sells thin, stick-shaped cookies under the brand "Pocky".  The stick-shaped cookies are partly covered in chocolate or flavoured cream, with the end of each cookie left uncoated.

In 2015, Ezaki sued Lotte International America Corp. (Lotte) for trademark infringement, alleging that Lotte’s "Pepero" product infringed Ezaki’s trade dress registrations for its "Pocky" cookie configuration (see image for a comparison of the two cookies).  The lower court granted summary judgement for Lotte, holding that Ezaki’s Pocky product was not entitled to trade dress protection because the product design was functional.

On appeal, the Court noted that the key issue was whether the "Pocky" cookie design was functional.  The Court held that “functional” means useful, and that “[a] product’s design, including its shape, is often useful and thus functional.”  The Court concluded that the cookie design makes "Pocky" more useful as a snack, noting that the uncoated handle of the cookie allows people to eat the cookie without getting chocolate on their hands, and the cookie’s thin stick-shape “lets people eat the cookie without having to open their mouths wide.” Therefore, the Court held that the trade dress is functional and invalid, concluding “[t]hat’s the way the cookie crumbles.”

Summary By: Michelle Noonan


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