Third Circuit Deems Watermelon Candy Color and Shape “Functional”

The Third Circuit has upheld a district court’s decision that a candy company may not trademark the color and shape of its watermelon candy because these features are “functional”: they tell consumers that the candies are watermelon flavored.

The case is PIM Brands Inc. v. Haribo of America, Inc.

As the court explained,

PIM makes candies. Two decades ago, it rolled out a new chewy candy: Sour Jacks Wedges. The original version is watermelon-flavored. Its colors match its flavor: a green layer topped by a thin white band and then a larger red section. And the candy is shaped like a wedge. PIM advertised the candy as "The Ultimate Shape of Sour" and told consumers to "Respect the Wedge" and to keep "Livin' on the Wedge."

After the candy had been on the market for more than ten years, PIM tried to trademark just "the shape of a wedge for candy."

The US Patent and Trademark Office (USPTO) rejected the application, requiring the company to add colors.

PIM did so, and registered

the shape of a wedge for candy, with an upper green section with white speckles, followed by a narrow middle white section and followed by a lower red section with white speckles.

PIM later started making Sour Jacks Wedges in other flavors, such as green for green apple or yellow for lemonade.

Haribo is also a candy company. It recently introduced its own chewy watermelon candy, which is also wedge-shaped and red, white, and green.

PIM sued Haribo for trademark and trade-dress infringement under the Lanham Act and for unfair competition under New Jersey common law.

Haribo countered that PIM's trade dress was functional and asked the court to cancel PIM’s trademark.

The court noted that trademark law doesn’t protect useful designs:

A design is functional if it is useful for anything beyond branding. Trademarks protect buyers and sellers by flagging the goods' source. Trade dress, a subset of trademark, protects distinctive choices (like size, shape, and color) that make up "the overall look of a product." Ezaki Glico, 986 F.3d at 255 (internal quotation marks omitted). Unlike utility patents, which protect useful designs, trademarks protect features that are arbitrary, ornamental, or the like. Id. at 255-56. Compare 35 U.S.C. § 101, with 15 U.S.C. § 1127. So a trademark can be canceled if it "comprises any matter that, as a whole, is functional."

Functionality isn’t a high bar. Said the court:

Trade dress is limited to design choices that serve only to brand a product. If a design choice "would put competitors at a significant non-reputation-related disadvantage," then it is functional.

The parties agreed that the candy's color scheme is functional because it helped to identify its watermelon flavor. Communicating the candy's flavor, said the court, is a legally recognizable function. The candy’s colors serve the same function.

As the court concluded,

Hot summer days call for a slice of watermelon: a juicy, red wedge with a green-and-white rind. Some candy companies evoke this image by using colors alone, making their candies red, white, and green. But the watermelon effect is significantly stronger if the red-white-and-green candy is shaped like a wedge. Because the tricolored shape is recognizable as watermelon flavored, the whole appearance is useful. So a candymaker cannot block competitors from using the combined shape and colors by trademarking that combination. We will thus affirm the District Court's grant of summary judgment.