Dear Doc:
Me want to protect cookie. How can do that?
Signed,
A Certain Monster
Dear Mr. Monster:
A recent case from the Third Circuit Court of Appeals may help you to understand how cookies are protected.
More than 50 years ago, Ezaki Glico Kabushiki Kaisha developed “Pocky” – a thin, elongated biscuit partially covered with chocolate. About five years after Pocky entered the United States market, Lotte Confectionery began selling a lookalike biscuit stick called “Pepero”. After obtaining trade dress registrations for the Pocky design, Glico sent cease and desist letters to Pepero in the 1990s. Nevertheless, Lotte continued to sell Pepero. In 2015, Glico sued Lotte for trade dress infringement and unfair competition under the federal Lanham Act and state law in the US District Court in New Jersey.
Glico not only registered its trade dress (the appearance of its cookie) but also was granted a patent on how the cookie is made, and on the cookie itself, made by that method. In the patent, it explained the benefits of its cookie (apart from tasting good): that one could pack many closely together and that the uncoated part of the biscuit forms a handle with which to hold the cookie without getting chocolate on one’s fingers.
Unfortunately for Glico, it tried to use trademark law (the Lanham act) to go after Pepero. You see, utility patents protect useful inventions, design patents (which have a term shorter than utility patents) protect ornamental features of an invention that are not useful, but trademark registrations protect only the goodwill associated with a product, and not anything about it that is useful. As the Court said, ironing board covers have no need to be gold, and coffee pot handles have no need to be “C” shaped, so those features are protectable using trade dress.
So, Mr. Monster, to protect a cookie, you may want to hide the cookie jar, apply for utility patent protection on how it’s made, design patent protection on its appearance (as long the features are not useful), trade dress registration on non-functional aspects (such as making the cookie hexagonal, or embossing it with your name), and so-forth. The best way to protect your cookie, after all is said and done, may, however, be just to eat it quickly. As the Glico Court said, “That’s how the cookie crumbles.”
Have a product that needs protecting? Haven’t eaten it yet? Call the attorneys at LW&H. They’d love to help you out, before you’re caught with your hand in the cookie jar.
Until next month,
The “Doc”
— Lawrence A. Husick, Esq.
*Originally posted on March 25, 2021