Trademark on Product Design: Are these biscuit sticks functional

by Dennis Crouch

A potentially important product design trademark case is pending before the U.S. Supreme Court involving those chocolate covered bready-sticks. Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., Docket No. 20-1817 (Supreme Court 2021). 

Glico’s Pocky product has been sold since 1966 and are apparently popular. Lotte’s Pepero’s are a knock-off version. Glico sued for trademark infringement, asserting Glico’s trademark rights in the product design of chocolate-covered elongated rod biscuits. Glico registered this particular mark back in 1989. Reg. No. 1,527,208.

The lawsuit ended fairly quickly. The district court found that the design is functional and therefore not protectable by trademark.  On appeal, the 3rd Circuit affirmed.

If you have eaten one of these, then you know a bit about the shape functionality:

  1. Biscuit end can be handled without getting chocolate on your hands;
  2. Rod design allows for close-packing in a compact box suitable for sharing;
  3. Rod design allows for eating “one bite at a time … without opening your mouth

According to the third circuit, these aspects were utilitarian and therefore functional as a matter of law.

In its petition, Glico presents the following questions:

The Lanham Act protects trade dress from unlawful copying. Trade dress includes a product’s design, such as the red wax seal on a bottle of Maker’s Mark, the shape of the Chanel No. 5 perfume bottle, and the configuration of the Pepperidge Farm Milano cookie. To qualify for trade dress protection, a product’s design cannot be “functional,” among other requirements. At issue in this case is the test for “functionality” in trade dress law and the role of alternative product designs in creating a dispute of fact that prevents summary judgment. This petition presents two questions:

1. Whether trade dress is “functional” if it is “essential to the use or purpose of the article” or “affects the cost or quality of the article,” as this Court and nine circuit courts have held, or if it is merely “useful” and “nothing more,” as the Third Circuit held below.

2. Whether the presence of alternative designs serving the same use or purpose creates a question of fact with respect to functionality, where the product’s design does not affect cost or quality and is not claimed in a utility patent.

[Petition].  AIPLA, IPO, and INTA have all filed briefs supporting certiorari.  Their argument is that the Third Circuit used an unduly expansive definition of “functional” that is contrary to the precedent of the Supreme Court and every other circuit court of appeals.

The briefs include lots of pictures of chocolate covered cookies (biscuits).

= = = =

Glico also holds a patent titled “Stick-shaped snack and method for producing the same.”  U.S. Patent No. 8,778,428.  The US patent claims a particular method of making these tasty snacks as well as “A stick-shaped snack made by the [claimed] method.” (product-by-process claim) The district court found the patent relevant to showing functionality. On appeal though, the Third Circuit disagreed since the patent focused on a particular method of manufacture rather than novel features of the product itself.  There is also a Japanese Utility Model patent but did not feature in the litigation.

51 thoughts on “Trademark on Product Design: Are these biscuit sticks functional

  1. 11

    In the context of this case, it is important to understand that knowledge of the manufacturing processes for these products reveals shape extrusion technology and baking mechanics that can produce a very wide range of equally functional shapes but that do not embody the actually claimed configuration. Ergonomically, there are other configurations that reduce the problem of “food-product” ending up on the hand. There are many factors at play in this matter that is not considered in the tread that make the finding of infringement more likely.

  2. 10

    The point is that from a conceptual point of view this same product category can be produced in many different configurations that are equally functional or even more so. The technology for baked food production allows the biscuit portion to be extruded and baked in a wide range of other shapes and cross-sections….in fact, dozens of alternatives.

    1. 10.1

      Thanks brother anon – see also CLM CHFP’s comment above.

      (Venn diagrams would reflect the veracity of both comments)

  3. 9

    The wax seal on Maker’s Mark isn’t part of the product design, it’s part of the product *packaging* design. Same thing for the Chanel bottle, or the Coca Cola bottle. The product itself – viz. the bourbon or perfume or Coke – is not what’s protected. So those are poor analogies to make. Here plaintiff is trying to say that its dipped sticks, viz. the food itself, are protected, i.e. that people associate such sticks specifically with that company. Give me a break. The proper comparison here is between the packaging, and the two packages look nothing alike.

    1. 9.2

      While the Traffix case still portends a certain outcome (but based on function), I do have to point out that you are not correct here in the attempt to pivot on product versus packaging.

      From the Traffix case (and note in particular the use of the conjunctive ‘or’ – emphasis added:


      It is well established that trade dress can be protected under federal law. The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods.

    2. 9.3

      The dipped sticks are associated with a single source. Packaging has nothing to do with it. The infringer copied the dipped sticks when there were plenty of alternative designs, e.g., popsicle-shaped sticks, that they could have used. Distinctiveness of the originator’s dipped sticks was not challenged.


          These sticks are 100 percent functional.

          This is an unequivocally false statement.

          The instant that a different stick can serve the SAME function you have introduced a meaningful difference.

          I gave that to you straight up. That you attempted to dismiss it, does not — in fact — dismiss it.

          As I noted (and if I may be so bold as to speak for Perry), the ISSUE here is the distinction between having ANY functionality and having the specific item have the essence of essential functionality..

    3. 9.4

      Exactly right Atari Man. It would be like you were the first to invent a box for moving and tried to Trade Mark a square box.

      1. 9.4.1

        What would be a popsicle stick to the rod of your packing box?

        If you cannot think of one, then you may realize that your analogy does not fit nearly as well as you may have initially thought.

  4. 8

    OT, but scary. After commenting on the post about Biden’s executive order to permit hearing aids to be sold over-the-counter, ads started to be served to me about hearing aids.

  5. 7

    This seems like a pretty easy case of “cert. denied.”

    The Third Circuit decision here rested largely on the tension between trademark law and patent law, i.e., trademarks can last forever but patents are temporary and expire. It was not lost on the Third Circuit that had Glico had obtained a broad patent covering the design of its chocolate-covered elongated rod biscuits when they came out in the 1960s, that patent would have expired decades ago and the patented design would have fallen into the public domain. The court’s concern was overwhelmingly with using trademarks as “back-door patents” that provide obtain perpetual patent-like monopolies over useful product designs. Resolving the tension between patent protection (which is temporary) and trademark protection (which can last forever), is the key policy behind the non-functionality doctrine as applied to product design.

    One could argue that the non-functionality doctrine as applied to product design could be vastly simplified into a binary test, even simpler than the one adopted by the Third Circuit–if the product design is useful and would be eligible for design or utility patent protection, it should be deemed functional as a matter of law and protectable (if at all) only through the patent system, and thus not protectable as trade dress. That would be much easier standard to apply than multi-factor tests, etc., that are currently used. I suspect the only reason regional circuits like the Third Circuit haven’t adopted a simple patent eligibility test is that they have no direct experience with patent law given the CAFC’s exclusive jurisdiction since 1982, so we’re left with a bunch of amorphous factors that imprecisely attempt to approximate the same inquiry.

    1. 7.1

      I would take issue with your lumping in “eligible for design patent” into your functionality regime.

    2. 7.2

      More complicated than that. Something can be useful overall but have portions of it that are eligible for TM.

    3. 7.3

      I agree with your general statements about “back-door patents” and “a bunch of amorphous factors” but disagree that cert. denied should be a “pretty easy case”. The two specific questions raised in the petition are legit and need to be answered, especially the one about alternate designs. If the latter exist, then the trade dress is not a back-door patent since only the particular trade dress is protected, not the general concept which competitors are free to make rather than copy the petitioner’s product.

  6. 6

    Come on. Those sticks are functional. It would be like you were the first to come up with a popsicle stick and tried to claim it was trade dress.

    No cert. Functional.

      1. 6.2.1

        “Dress” is more or less de facto functional.

        I think that the lesson from Traffix has to do with the explicit functionality (and whether or not THAT functionality suffers from any promise to devote to the public after an exchanged time of intellectual property protection.

        Although I can see that some would hold the “functionality bar” lower.

      2. 6.2.2

        Perry, look at them. You don’t take them as whole but look at what portions of the product are not functional.

        Twists in bottles. Shapes of bottles that aren’t there to increase volume vs. material but are there to provide a particular shape.



          Night Writer (whoever you are), that’s exactly the problem with the test for functionality: any 3rd year law student (or you) could argue that a product feature affects the use or purpose or cost or quality of the article. Boom – it’s FUNCTIONAL.


            Perry (whoever YOU are), you missed the point. One can argue anything is functional but that doesn’t make it so. Something as simple as an arc in a bottle is not functional and so can be used for a Trademark. A basic shape like a stick cannot.

            The question–again–is what portion of that stick is not functional?

            If the stick had say waves in it in, then one could successfully argue that the waves are not functional but were meant as a Trademark.


              Granted, Perry’s “whoever you are” was a bit gratuitous, but Perry is pretty well known.

              Perry, please do not fall into the trap that one “must use their real name” – you are far better than that.

              Night Writer, to answer your question, the portion of the stick that is not functional is the chosen shape. This can be readily seen because the function of holding is FULLY met by a shape other than a pure rod. I noted this to you before, but you seemed to not grasp the legal concept.

              You would be better off attempting to HELP DISTINGUISH the use the Traffix ‘language’ and not rest on mere functionality (which is Perry’s point of contention).

              Try this (noting my added emphasis):

              “ ‘[i]n general terms, a product feature is functional,’ and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’ ” Qualitex, 514 U.S., at 165 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10 (1982)).


                anon, what portion of the stick do you think is not essential?

                Your answer is “a pure rod.” That is ridiculous. A “a pure rod” meets this test: ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’ ”

                Again, what part of the “pure rod” do you think doesn’t meet that test? (1) “essential to the use”: (check); and, (2) “affects the cost or quality”: (check).

                1. My answer is a bit more subtle than you appear ready to grasp.

                  ANY ‘essential’ functionality would lie in the intersection of a Venn Diagram between ALL items that may serve as a ‘holder’ (if that is the essential functionality), and ANYTHING outside of that intersected Venn Diagram would thus be NON-essential.


          Twists in bottles. Shapes of bottles that aren’t there to increase volume vs. material but are there to provide a particular shape.


          Twists and other shapes have (or may have) explicit intention to imbue functionality, such as easier or more sturdy to grasp. Further, even the intent to differentiate, such as, being easier to see on a grocery shelf filled with similar products is a function.

          It helps to understand this if you had some real world experience dealing with design houses and how they come up with product designs (as I have had) — there is most always some aspect of function that will drive product design.


            anon, “Twists in bottles” is not wrong but correct. Some twists in bottles may be functional but not all.


              You do realize that you just made my point for me – that the single case of an exception to your attempted universal rule dooms the universality of that rule – eh?

              As above – think Venn diagram.

                1. Simply saying “no” does nothing Night Writer.

                  That’s even worse than not bothering to answer the points put to you.

  7. 5

    Hope they do not have the same problem as the Spangler Candy Co. TM suit in N.D.IL more than 50 years ago. Someone took or ate all the candy exhibits in the Court’s exhibits storage room right after the trial.

  8. 3

    I’ve had Pocky before. They are out of Japan and exceptionally popular there.

    To the extent you can trademark the shape of a product, there is ALWAYS an argument to make that certain features are “functional.”

    Biscuit end can be handled without getting chocolate on your hands;
    Rod design allows for close-packing in a compact box suitable for sharing;
    Rod design allows for eating “one bite at a time … without opening your mouth

    The first two could be accomplished with a rectangular shaped biscuit (think the Keebler Grahams in the photo above) that is only partially covered with chocolate. Consequently, the rod shape isn’t necessary to accomplish these functions. The last point is a bit of a stretch — “without opening your mouth wide”? Do you think that rationale is going to speak to a judge?

    If product shape is capable of receiving a trademark, then I don’t see anything particular onerous about this shape.

    1. 3.4

      >If product shape is capable of receiving a trademark, then I don’t see anything particular onerous about this shape.

      Because it is all utilitarian. It is a stick dipped in chocolate with the end not having chocolate so you can hold and eat it.

      What about this do you think is not functional? The other shapes you mention have elements that are not functional so they portions can go towards a Trademark.

      This is a stick with chocolate. No none functional elements.

      And the way to analyze it is look at the product and say which portions of the product are not functional.

      1. 3.4.1

        Can only a purely “cylinderical” stick be dipped in chocolate?

        Clearly not — think popsicle stick.


          The issue is not “only”. The issue is what portion of the product is non-functional. This isn’t a copyright analysis.

          Moreover, note that the “cylindrical” is the most efficient shape.

          No way is this going anywhere.


              TrafFix cited a test for functionality that had been previously stated in Qualitex that in turn elevated a FOOTNOTE from Inwood to create an almost impossible test for trade dress functionality.

                1. Judge Linn’s dissent in In re Becton Dickinson, 675 F.3d 1368 (Fed. Cir. 2012) is an excellent example of a proper analysis of trade dress functionality. The chance of SCOTUS adopting such an analysis is close to naught.

  9. 2

    Hmm, no honorable mention of the classic M&M (candy shell expressly made for its functional aspect of allowing a non-melting hand-held candy snack)…?

    1. 2.1

      And look at M&Ms. They couldn’t Trademark that shape as that shape is functional. They had to use colors and stamp each one with their Trademark.

  10. 1

    Only an attorney desperate for work could possibly support the ridiculous petition here. “I’m entitled to a trademark on my partially chocolate – covered snack stick! It’s not fair to make me compete with other makers of chocolate covered sticks!!”

    Sure, buddy.

    1. 1.1

      Malcolm, yet again you want to make this personal to an attorney.

      Sir Thomas More called – he has a lesson for you.

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