## Facts

- Ezaki Glico produced and sold “Pocky,” a thin, elongated biscuit stick partly coated with chocolate or flavored cream, leaving an uncoated end used as a handle.
- Ezaki sold Pocky in the United States beginning in 1978 and obtained two federal product-configuration trade dress registrations (including a variant with crushed almonds) and a utility patent covering a stick-shaped snack and its production method.
- Lotte sold “Pepero,” a similar stick-shaped cookie partly coated in chocolate or flavored cream.
- In the 1990s, Ezaki sent cease-and-desist letters to Lotte asserting trade dress rights, then did not pursue further action for many years.
- In 2015, Ezaki sued Lotte in federal court under the Lanham Act and New Jersey law for trade dress infringement and unfair competition based on the Pocky product configuration.
- The record included evidence that Pocky’s design made it easier to hold, share, and eat without getting chocolate on the hands, and aided efficient packaging and display.
- Ezaki’s marketing materials emphasized these practical benefits, including that the snack was “perfect for sharing” and could be eaten without getting hands dirty.

## Issues

1. Whether the asserted Pocky product-configuration trade dress was functional, making it ineligible for protection under the Lanham Act.
2. Whether Lotte rebutted any presumption of non-functionality arising from Ezaki’s federal trade dress registrations.
3. Whether the same functionality determination defeated Ezaki’s parallel New Jersey trademark and unfair competition claims.

## Decision

- The Third Circuit affirmed summary judgment for Lotte.
- The court held the Pocky product configuration functional and therefore unprotectable as trade dress under federal law.
- The court held Lotte’s evidence overcame the rebuttable presumption of non-functionality created by Ezaki’s registrations.
- Because New Jersey law tracked federal trademark principles on functionality, the court affirmed judgment against the state-law claims as well.

## Legal Principles

- Trade dress protection extends only to non-functional features that identify source; functional product features are not protectable by trademark law.
- A feature is functional if it is useful or provides a practical advantage in the product’s use, manufacture, packaging, or cost, even if the feature is not strictly necessary.
- The existence of alternative designs does not defeat a finding of utilitarian functionality when the challenged design improves the product’s performance or efficiency.
- Federal registration creates strong but rebuttable evidence of non-functionality; an accused infringer may prove functionality despite registration.
- A brand owner’s marketing touting utilitarian benefits is probative evidence that the design was chosen for functional reasons.
- Functionality analysis supports the boundary between patent protection for useful designs and trademark protection for source-identifying, non-functional features.

## Conclusion

The Third Circuit concluded that Pocky’s stick shape and partial coating with an uncoated “handle” provided practical advantages in eating, sharing, and packaging, rendering the product configuration functional and ineligible for trade dress protection; this finding defeated both the Lanham Act and New Jersey claims.


Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp., 986 F.3d 250 (3d Cir. 2021)