In Brief:   Trade dress protects the “look”. The “look” has to be non-functional and create a connection with the consumer. When the “look” is purely functional or for manufacturing convenience, like the design of a cookie, it’s not protectable as trade dress.

Pocky is a cookie stick that comes in several flavors including chocolate or strawberry. The cookie was first produced in Japan in 1966. Pocky’s manufacturer, Ezaki Glico Co., Ltd. can boast of world-wide popularity for its cookie sticks.

Lotte International America Co., decided to get into the cookie stick game. It came out with its own version called Pepero. There’s no question that the Pepero cookie stick is identical to the Pocky cookie stick.

Ezaki Glico sued Lotte International for trade dress infringement in New Jersey district court. 

The Third Circuit Court of Appeals ruled that the cookie sticks were not protectable as trade dress. U.S. Circuit Judge Stephanos Bibas, writing for the panel stated that: "Trade dress is limited to features that identify a product's source.” The Court held that the shape of the cookie stemmed from a utilitarian advantage; not from an attempt to serve as distinctive trademark. "The claimed features are not arbitrary or ornamental flourishes that serve only to identify Ezaki Glico as the source," "The design makes Pocky more useful as a snack, and its advantages make Pocky more appealing to consumers."

Ezaki Glico argued that invalid trade dress should be limited to essential product designs. The court rejected this argument.  "So long as the design improves cost, quality, or the like, it cannot be protected as trade dress.”

WHY YOU SHOULD KNOW THIS. Goldfish crackers are protected trade dress. You can’t really separate the shape of the crackers from the cracker itself. So why wouldn’t the same philosophy apply to Pocky cookies? The key is in whether the design is essential to the function of the product. A goldfish design is not essential to a cracker. But the design of the cookie sticks can only be in the shape of a stick.