Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp.

Ezaki Glico Kabushiki Kaisha (Glico) (plaintiff) invented a partly coated rod-shaped cookie called Pocky, which it sold in the United States starting in 1978. Two variants of the confection had trade-dress registration. Glico’s advertising for Pocky focused on the role of the partly coated rod-shaped design in making Pocky easy to consume, rather than on the decorative aspects of this configuration. Alternative designs to that used by Glico existed. In 1983, Lotte Int’l Am. Corp. (Lotte) (defendant) began producing Pepero, a stick-shaped cookie similar to Pocky. Glico sent cease-and-desist letters to Lotte from 1993 to 1995, but Lotte continued selling Pepero. Glico filed suit against Lotte for trademark infringement and unfair competition in 2015. Notably, the court evaluated Glico’s utility patent dealing with an improved method in Pocky production. The district court granted Lotte’s motion for summary judgment, concluding that Pocky’s claimed trade dress (i.e., the product’s configuration as a partially coated cookie stick) was functional, and therefore not protectible, as the partly coated rod-shaped design made Pocky easier to eat. In response, Glico appealed to the United States Court of Appeals for the Third Circuit on the grounds that a product’s configuration could be considered functional for purposes of trade-dress protection only if the configuration played an essential role in the product’s use or purpose. Thus, Glico averred that Pocky’s configuration as a partly coated rod-shaped cookie could not be viewed as functional because this configuration was not essential for facilitating the consumption of Pocky.