Cookies, candies, and other goodies are not just childhood pleasures; they’re big business as well. Food producers pour substantial resources into creating and promoting distinctive brands that inspire unique associations in consumers’ minds. In jostling for consumers’ attention and loyalty, food companies don’t 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.
Food producers have had mixed success in seeking to carve out trade dress rights in their product packaging. 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.
Although often able to create fresh, distinctive packaging alternatives that lend themselves to cultivating trade dress rights, food producers are not as spoiled for choice in the design of food items themselves. 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.
Last year, Pepperidge Farm brought suit 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 US 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 Farm may well have found inspiration and support for its claims in a decades-old decision finding protectable trade dress in the “distinctive shape” of Life Savers candy and further holding that defendant’s “virtually identical” candy. The court in the Life Savers case relied on a finding of acquired distinctiveness in validating plaintiff’s claimed trade dress rights, pointedly noting that “Plaintiff’s Life Savers candy is the best selling candy in history and ... its distinctive shape has been in continuous use for over seventy-five years.”
Pepperidge Farm entered into a confidential settlement with Trader Joe’s, 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 Life Savers 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.