Partner Dyan Finguerra-DuCharme spoke to Bloomberg Law about the U.S. Court of Appeals for the Third Circuit's recent decision related to a long-standing trade dress suit involving the U.S. arm of the Japanese company that owns Pocky, a famous chocolate-dipped biscuit snack. A trade dress is a trademark on the overall look of a product and its packaging. The suit sought to challenge the similarly shaped cookie snack Pepero for infringement. The court determined that the cookie's stick design could not be trademarked by calling into question the definition of functionality and usefulness as it relates to trademark laws.

Here is an excerpt from Bloomberg Law:

"Trademark attorney Dyan Finguerra-DuCharme of Pryor Cashman LLP said [...] it ultimately relied on the Third Circuit taking too broad a view of use of the word "essential" in Supreme Court precedents such as the 2001 decision in Traffix Devices Inc. v. Marketing Displays [...].

 "That's not the test," Finguerra-DuCharme said. "Traffix didn't say only, but that if it's essential to use then it's functional. But there are other ways for trade dress to be functional.

 She said the Third Circuit "got it right" and called the opinion "trade dress 101" and one "that should be read by every first year associate in an IP trademark group." She said the U.S. Patent and Trademark Office and the courts "have to walk a fine line, because brand owners can't be trying to have a patent in the guise of a trade dress." Trademarks, unlike patents, can offer perpetual protection as long as they're used."

Read the article in full by logging in to view Bloomberg Law's article titled, "Loose Definition of 'Functionality' Kills Pocky Trade Dress."

More About Finguerra-DuCharme's Practice

Partner Dyan Finguerra-DuCharme is a member of Pryor Cashman's Intellectual Property, Litigation, and Media + Entertainment Groups, where she provides hands-on, end-to-end service to a diverse roster of clients.

With more than 20 years of experience litigating and advising on complex IP matters, Dyan has earned the reputation as the go-to lawyer for a trademark, trade dress, false advertising, patent, and copyright disputes.

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