In Brief:  Trade dress protection is not available for functional elements of a product. 

Here’s What Happened:  

PIM Brands, Inc. makes candy. So does Hairbo of America Inc.

About 20 years ago, PIM started selling a chewy sour candy it called “Sour Jack Wedges”. The candy looked like a watermelon edge, complete with the red interior, a white band and green “rind”. PIM registered the trade dress of the candy which was described as “the shape of a wedge for candy, with an upper green section with white speckles, followed by a narrow middle white section and followed by a lower red section with white speckles.”

Haribo introduced its own chewy watermelon candy in an elongated watermelon wedge. Like PIM’s candy, Haribo’s candy was red, white and green. Haribo says it designed the candy’s shape and colors to match its flavor, i.e. watermelon.

PIM sued Haribo for trademark and trade dress infringement. The district court granted Haribo’s motion for summary judgment on the basis that PIM’s design and color combination was functional and therefore not protectable as trade dress.

PIM appealed to the Third Circuit Court of Appeals.

The Third Circuit analyzed the protectability of designs as trade dress. Trade dress, a subset of trademark, protects distinctive choices (like size, shape, and color) that make up “the overall look of a product.” But the design can’t be functional. A design is functional if the design is useful for anything beyond branding. Functionality is not a high bar. Trade dress is limited to design choices that serve only to brand a product. If a design choice “would put competitors at a significant non-reputation-related disadvantage,” then it is functional.

In this case, there are two elements to PIM’s design, the shape and the colors. The two elements serve to indicate the flavor of the candy, namely, watermelon.

The Third Circuit affirmed summary judgment in Haribo’s favor.

Why You Should Know This: Trade dress can cover a wide range of non-functional designs. The Coca-Cola glass bottle or the design of Apple stores are good examples. In each case, the design is not a matter of function. The designs do not put their competitors at a disadvantage because there are numerous ways to bottle a soft drink or design a store to sell electronics. Trade dress can be a useful tool to distinguish a product from competitors. But creating a design capable of being registered has to elevate form over function.

Case Information: PIM Brands Inc. v. Haribo of Am. Inc., 81 F.4th 317 (3d Cir. 2023)

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