Pocky-Stick-Like Cookie Isn't Trade-Dress Infringement


From Judge Stephanos Bibas's opinion today (joined by Judges Theodore McKee and Julio Fuentes) in Ezaki Glico Kabushiki Kaisha v. Lotte Int'l America Corp.:

Though Ezaki Glico created Pocky, it cannot use trade dress to keep competitors from copying it. Trade dress protects features that serve only to identify their source. It does not cover functional (that is, useful) features. That is the domain of patents, not trademarks. There is no real dispute that Pocky's design is useful, so the trade dress is invalid. We will thus affirm. That's the way the cookie crumbles.

Thanks to How Appealing for the pointer.

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  1. And the catchy closing line could have been used regardless, so (unlike in the Asimov short short story A Loint of Paw) there’s no room for doubts about perverse incentives.

  2. I like how if you invent something directly useful its covered by a patent that will give you much less time to make money than if you write a song where you are covered for life and beyond or scribble a logo which goes even further.

    1. Different types of IP have very different strengths and weaknesses. For example, copyright infringement requires copying. That means that independent creation is not actionable. It is under patent law. Trade dress is part of trademark law, which means that you typically have to prove likelihood of confusion. That means that it is most useful for huge companies with multimillion dollar advertising budgets that can use those advertising budgets to build secondary meaning. Much of trademark law is defensive – clients acquiring trademark registrations so that other companies cannot come by later and prevent them from using the mark that they have spent so many resources building. Patents, on the other hand are very often used offensively.

  3. Wait how is the design useful? I had these once I didn’t get why not have the whole stick set in chocolate, felt stingy I didn’t like it.

    1. It’s there so there’s a part of the cookie you can hold while eating without getting melted chocolate on your fingers.

  4. I think I speak for a lot of IP attorneys, who would find this decision completely reasonable, and probably would have advised their clients not to file this sort of law suit. It’s a loser on functionality and probably on likelihood of confusion too.

    1. This IP lawyer agrees. Decision is a no-brainer.

    2. Same here for this IP lawyer.

      Your last point, on likelihood of confusion, deserves a bit of elaboration. For a patent, using the protected design (in one of the ways the statute forbids, making, selling, importing, etc.) is an infringement. There is no need to show consumer confusion.

      For trademark and trade dress infringement, even if the defendant uses the exact same design, the trademark plaintiff still has to show that the use creates a likelihood of consumer confusion or deception. Courts look at the totality of the circumstances to decide this.

      If you look at the two pictures, it is clear that they are made and sold by different companies. They have different product names (POCKY v. PEPERO) and different packaging designs. Even if the cookie designs were identical, these differences would weigh heavily against finding likelihood of confusion.

      That is one way trade dress is weaker than patent protection. Even if you copy another company’s trade dress exactly, one might still dispell consumer confusion through use of different house marks and packaging.

  5. Having been stationed in Korea Pepero is better I assure you.

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