INTA Amicus Urges U.S. Supreme Court to Hear Product Feature Protection Case

Published: August 18, 2021

PockyINTA has filed an amicus brief before the U.S. Supreme Court in the case of Ezaki Glico Kaisha d/b/a Ezaki Glico Co., Ltd. et al. v. Lotte Int’l America Corp. et al., which concerns the protection of product features as trademarks, and the extent to which such protection is not available based on the concept of functionality. The Third Circuit’s new formulation of functionality tied to “usefulness” conflicts with long-standing case law, the Association emphasizes.

INTA asks the Court to grant a petition for certiorari and agree to hear an appeal from a decision of the U.S. Court of Appeals for the Third Circuit during its upcoming term.

The underlying dispute concerns whether the configuration of a snack product called POCKY—a stick-shaped chocolate-covered cookie, with a non-chocolate-covered end (or handle) designed for holding—is functional and therefore not protectable as a trademark under U.S. law. The Third Circuit affirmed a district court decision that the POCKY stick configuration is functional, but in doing so also held that the appropriate test for assessing whether a product feature is functional is simply whether the feature is “useful.” If so, then trademark protection is unavailable. The Third Circuit also held that if a product feature is “useful,” then the availability of alternative designs for the feature is irrelevant.

In its amicus filing, INTA argues there are multiple problems with this new formulation of functionality. First, it conflicts with more than a century of case law in which the concept of functionality was considered, articulated, and applied, both by the Supreme Court and in every judicial circuit.

Second, the test ignores the rationale for the concept of functionality: to enable courts to draw lines between product features necessary for competitors to use, and that are therefore unprotectable. It also ignores product features unnecessary for competition that would, if used by competitors after becoming associated with a particular seller, cause consumer confusion.

A test of functionality that focuses solely on the issue of “usefulness” would enable competitors to take advantage of product features associated exclusively with particular sellers and thereby promote consumer confusion. This is because all product features, to varying degrees, have some “useful” purpose, otherwise there would be no need to include them.

Third, to discard the careful framework courts have applied for so long in determining functionality—in which design choices and the availability of alternative product features have played a crucial role—in favor of a test that asks only whether a feature is “useful” would call into question the existence of trademark protection for dozens of well-known product features registered as trademarks. Were the Third Circuit test for functionality to be widely applied, the practical ramifications for both brand owners and consumers would be substantial, in INTA’s view.

Thus, INTA argues that the Supreme Court should reaffirm, “once and for all,” that the “traditional rule” for functionality first articulated in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10 (1982), and later reaffirmed in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995), and TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001), remains controlling: “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Labs., 456 U.S. at 850 n. 10. The necessary corollary to this formulation is that an inquiry cabined to the assessment whether a product feature is “useful” is not the appropriate standard.

Likewise, INTA also asks that the Court clarify that alternative designs can be considered as evidence of non-functionality in appropriate cases. Indeed, by incorporating this important principle into the doctrine of functionality, the Court will further clarify an area of law which necessitates clear standards and that the courts can apply in very fact-intensive cases. This will simultaneously enable courts to consider evidence that can be of great importance in reaching a just determination as to whether a product feature is or is not functional.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2021 International Trademark Association