## Facts

- Ezaki Glico makes and sells “Pocky,” a thin, stick-shaped cookie partly coated with chocolate or flavored cream, leaving an uncoated end as a handle.
- Ezaki began selling Pocky in the United States in 1978 and obtained federal registrations for Pocky product-configuration trade dress; it also held a patent related to a stick-shaped snack and its production method.
- Lotte sells “Pepero,” a competing stick-shaped cookie snack that is similarly partly coated (sometimes with additional toppings).
- In the mid-1990s, Ezaki sent Lotte cease-and-desist letters referencing its registered trade dress, but did not sue until 2015.
- Ezaki sued under the Lanham Act for trademark infringement and unfair competition and asserted parallel New Jersey claims, relying on the registered product-configuration trade dress.

## Issues

1. Whether Pocky’s product-configuration trade dress (stick shape with partial coating and an uncoated handle) is functional and thus ineligible for protection under the Lanham Act.
2. Whether federal registration of the product-configuration trade dress prevents a finding of functionality.
3. Whether the availability of alternative designs defeats a functionality defense for product-configuration trade dress.

## Decision

- The Third Circuit affirmed summary judgment for Lotte.
- The court held that the asserted product configuration is functional because it provides utilitarian advantages in use and consumption.
- The court concluded that registration did not bar a functionality finding and that alternative designs did not render the configuration nonfunctional.

## Legal Principles

- Trade dress protects source-identifying design features, but not functional (useful) product features.
- A feature is functional if it is essential to the use or purpose of the article or affects its cost or quality; a design that yields practical advantages in handling, eating, packaging, or sale is functional.
- For product design, the analysis focuses on the overall configuration rather than isolated elements.
- Federal registration creates a rebuttable presumption of validity, but that presumption is overcome by proof of functionality.
- The existence of alternative designs is not dispositive; a design may be functional even if competitors could use different designs.
- A related utility patent can be strong evidence that claimed design aspects are functional.

## Conclusion

The court held that Pocky’s stick-and-partial-coating configuration is a useful product design that improves handling and consumption, so it is functional and cannot receive trade dress protection; summary judgment for Lotte was affirmed.


Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am. Corp., 977 F.3d 261 (3d Cir. 2020)