Just Desserts: the Short and Sweet of Trade Dress Litigation

A version of this article was originally published in Trademarks + Brands Blog, August 11, 2016.

Few indulgences could be less complicated than enjoying the sweet crunch of a cookie. Unburdened by the fussy pretensions of designer cakes and faddish, portmanteau pastries—no cronuts for me, thank you—snacking on a cookie calls to mind nothing so much as youthful innocence.

But cookies, candies, and other goodies are not just childhood pleasures; they’re big business as well. Food producers pour substantial resources in creating and promoting distinctive brands that inspire unique associations in consumers’ minds. In jostling for consumers’ attention and loyalty, food companies do not rely solely on word marks and logos, but on beguiling packaging, and, in certain cases, on the distinctive shape of the morsels themselves. In so doing, food producers continue to expand the borders of trade dress jurisprudence.

Product packaging is typically employed solely as a canvas upon which food companies display trademarks and other branding elements. In some case, however, the overall design of a product’s packaging may function as a source identifier in its own right.

In order to establish that product packaging is entitled to protection, a claimant must successfully establish each of two distinct elements, including:

  • The claimed design or combination of elements is inherently distinctive—in that it is inherently capable of expressing a unique commercial impression—or has acquired distinctiveness by accruing secondary meaning in the marketplace; and
  • The claimed trade dress is non-functional—in other words, the design of the product is not integral to its use, purpose, cost, or quality, and, moreover, granting a monopoly over the claimed design will not place competitors at a non-reputation-related disadvantage.

Of course, in order to effectuate trade dress rights in a suit for infringement, a plaintiff must further establish that the junior user’s packaging or design is likely to cause consumer confusion.

Food producers have had mixed success in seeking to carve out trade dress rights in their product packaging. By way of prominent example, both Coca Cola and Maker’s Mark have secured protection for and effectively enforced trade dress rights in their respective bottles’ designs. On the other hand, in 2014 Kind LLC unsuccessfully sought to enjoin its rival Clif Bar & Company from using allegedly infringing “slender, semi-clear” wrappers on its competing Clif Bars. In thwarting Kind’s motion for a preliminary injunction, the Court held that “despite the tendency for trade dresses to be inherently distinctive because the whole universe of materials and designs in available for packaging, [Kind’s] very common packaging design”—consisting chiefly of transparent panels and a description of the bar within—lacked distinctiveness, whether inherent or acquired, and was not entitled to protection.

Kind’s inability to secure protection notwithstanding, given that the virtually limitless store of potential designs for product packaging, food producers are often able to create fresh, distinctive packaging alternatives that lend themselves to cultivating trade dress rights. By contrast, food producers are not as spoiled for choice in the design of food items themselves.

Nevertheless, a recent case reinforces that the principles of trade dress are as applicable to configuration of food products as they are to their packaging, provided that the claimant can show secondary  meaning—in other words, that consumers recognize the product’s design itself as a source identifier in its own right.

On December 2, 2015, Pepperidge Farm brought suit in the District of Connecticut for trademark infringement (and a host of related claims) against Trader Joe’s, claiming that the defendant infringed its unique rights in the configuration of its famed MILANO cookies.
Pepperidge Farm owns a valid U.S. trade dress registration for the “configuration of a cookie comprised of a filling sandwiched between two oval-shaped cookies [as well as a notch that] represents a small portion of the cookie that bumps out of [the cookie’s otherwise flat contoured surface.” Trader Joe’s cookies, meanwhile, consist of two rectangular cookie layers with rounded edges cemented by chocolate filling.

Pepperidge Farms may well have found inspiration and support for its claims in a decades-old decision finding protectable trade dress in the “distinctive shape” of Lifesavers candy (consisting of a “ring configuration with the raised letters ‘LIFESAVERS’”) and further holding that defendant’s “virtually identical” candy. The court in the Lifesavers case relied on a finding of acquired distinctiveness in validating plaintiff’s claimed trade dress rights, pointedly noting that “Plaintiff’s Lifesavers candy is the best selling candy in history and … its distinctive shape has been in continuous use for over seventy-five years.”

Shortly after filing suit Pepperidge Farm entered into a confidential settlement with Trader Joe’s, and agreeing to dismiss its case. As such, the district court was deprived of the opportunity to review the merits of Pepperidge Farm’s claim that the form of MILANO cookies is not dictated by its sandwich-like function, or to evaluate whether consumers uniquely associate the configuration of MILANO cookies with its producer, and, finally, whether they are likely to mistakenly believe that any similarly-shaped cookie—even though sold in distinct packaging—is a Pepperidge Farm MILANO.

Nevertheless, Pepperidge Farm’s case (to say nothing of the trademark registration upon which it was based), like the Lifesavers case before it, is a vivid reminder that trademark rights may attach not only to brand names and product packaging, but also to the shape of products themselves—even something as humble and commonplace as a cookie or candy.