PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

_______________

No. 2 2

- 2821

_______________

PIM BRANDS INC.,

Appellant

v.

H A RIBO OF AMERICA INC.

_______________

On A ppeal from t he United States District Court

for the District of New Jersey

(D.C. No. 2 : 19

- cv

- 14183 )

District Judge : Honorable Madeline C. Arleo

_______________

Argued: June 2 0

, 2023

Before: CHAGARES, Chief Judge

, and BIBAS and MATEY,

Circuit Judges

(Filed: September 7, 2023 )

Jonathan Z. King [ARGUED]

Richard S. Mandel

C OWAN

, L IEBOWITZ & L ATMAN

, P.C.

114 W

. 47th St

. , 21st Floor

New York, NY 100362 Lea h Kelman

David R. King

H ERRICK

, F EINSTEIN LLP

One Gateway Center, 9th Floor

Newark

, NJ 0 7102

Counsel for Appellant

Michael Cukor [ARGUED]

M C G EARY C UKOR LLC

150 Morristown Rd

. , Suite 205

Bernardsville

, NJ 079 24

Mark J

. Liss

Tamara A. Miller

Laura M. Schaefer

L EYDIG

, V OIT & M AYER

, L TD

. 180 N

. Stetson Ave., Suite 4900

Chicago, IL 60601

Counsel for A

ppellee

_______________

OPINION OF THE COURT

_______________ BIBAS, Circuit Judge

.

H ot summer day s call for a slice of watermelon: a juicy

, red

wedge with a green

- and

- white rind. Some candy companies

evoke this image by using color s al one

, making the ir cand ies

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 as3 watermelon flavored

, the whole appearance is useful. So a candy

maker cannot block competitors from using the combined

shape and colors by trademark ing that combination

. We will

thus affirm the District Court’s grant of summary judgment.

I. C OMPETING C ANDIES : W ATERMELON W EDGES

PIM makes candies

. Two decades ago

, it rolled out a new

chewy candy : Sour Jack s Wedges. The original version is water

melon 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 th e candy as

“The Ultimate Shape of Sour” and told consumers to “Respect

the Wedge” and to keep “Livin’ on the Wedge.” Compl

. ¶¶ 15

– 18

.

Once the new candy had been on the market for more than

a decade

, PIM tried to trademark just “the shape of a wedge for

candy.” JA 194. The Patent and Trademark Office reject ed it

, requiring the company to add color s

. PIM obliged, registering

a trademark in “the shape of a wedge for candy, with an upper

green section with white speckles, followed by a narrow middle white se ction and followed by a lower red section with

white speckles.” Registration No. 5,029,701

. Its trademark

looks like this :4 JA 137

. It is this trademark

— the watermelon

- colored wedge

—

that is at issue

.

PIM later started making Sour Jack s Wedges in other flavors. Each has a color to match its fruity flavor, like green for

green apple or yellow for lemonade. But all ar e in the same

wedge shape. The Patent Office later granted PIM a supplemental registration for a tricolored wedge with unspe cified colors. That trademark is not before us today.

Haribo also makes candies. I t recently introduced its own

chewy watermelon candy. Its version is an elongated watermelon wedge. Like PIM’s, Haribo’s candy is red, white, and

green

. Haribo says it designed the candy’s shape and colors to

match its flavor: watermelon.

PIM thinks Haribo ’s design copies its own. So it sued for

trademark and trade

- dress infringement under the Lanham Act

and for unfair competition under New Jersey common law.

15 U.S.C. §§ 1114(1), 1125(a)(1)(A)

. Haribo countered that

PIM’s trade dress was functional ( and unprotectable for other

reasons not before us on appeal)

, so it asked the court to cancel

PIM’s trademark. But because PIM’s mark is registered, it is

presumptively valid

. § 1057(b). So Haribo bore the burden of

proving that it is functional. § 1115(a), (b)(8).

T he District Court held that Haribo had borne that burden

and granted it summary judgment on functionality. B ecause

PIM’s combination of colors and shape helps identify the

candy’s watermelon flavor, the court reasoned, it is functional

and so not protectable as trade dress.5 PIM now appeals

. It criticiz es the Distric t Court for not focusing on the wedge shape in isolation from the colors

. It admits that the candy’s color is functional because it identifies

the flavor. But it argues that the wedge shape separately identifies the brand.

The District Court had jurisdiction under 15 U.S.C.

§§ 1119

, 1121(a)

, and 28 U.S.C. §§ 1331, 1338, and 1367. We

have jurisdiction under 28 U.S.C. § 1291.

We review the District Court’s grant of summary judgment

de novo. Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am.

Corp.

, 986 F.3d 250, 255 (3d Cir. 2021)

. We ask whether any

material fact is genuinely disputed and whether

, viewing the

facts most favorably to PIM, Haribo merits judgment as a matter of law. Id. A dispute is “ ‘genuine’

... if the evidence is such

that a reasonable jury could return a verdict for the nonmoving

party.” Anderson v. Liberty Lobby, Inc.

, 477 U.S. 24 2, 248

(1986)

. Functionality turns on a finding of fact

. Ciba

- Geigy

Corp. v. Bolar Pharm. Co.

, 747 F.2d 844, 850 (3d Cir. 1984)

.

S o summary judgment is proper only if

, given the correct legal

standard, no reasonable jury could find t he trade dress nonfunctional

.

Functionality is materially the same under federal and state

law. Ezaki Glico

, 986 F.3d at 255

. So we, like the parties, focus

on federal trademark law.

We consider the trade dress as it is presented to us. See J.

Thomas McCarthy, 1 McCarthy on Trademarks and Unfair

Competition § 7:76 (5th ed. 2023) (“[I]t is largely up to the

plaintiff to define what aspect is claimed as protectable trade

dress.”). PIM limited its claims to the trade dress described in6 its primary federal trademark registration : a wedge shape in

watermelon colors.

II. PIM ’ S W EDGE S HAPE

, T OGETHER WITH I TS C OLORS

,

U SEFULLY S IGNALS THE C ANDY ’ S W ATERMELON F LAVOR

A. Trademark law does not protect useful designs

1. 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 pa t ents,

which protect useful desi gns, trademarks protect features that

are arbitrary

, ornamental , or the like

. Id. at 255

– 56

. C ompare

35 U.S.C. § 101, with 15 U.S.C. § 1127. So a trademark can be

cancelled if it “comprises any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5 ) ; see also § 1064(3). To be functional, the trade dress as a whole “need only be useful, not essential.” Ezaki Glico , 986 F.3d at 258. If it is functional, competitors may copy it freely

.

Functionality is not a high bar. 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 dis advantage,” then it is functional. Qualitex Co. v. Jacobson Prod

s

. Co.

, 51 4 U.S. 159, 165 (1995). E ven if the design chosen both promotes a brand and also “makes a product

work better,” it is functional and unprotectable. Ezaki Glico

, 986 F.3d at 258

. “So long as the design improves cost, quality,

or the like, it cannot be prote cted as trade dress.” Id.7 2. If design choice s serve the same function, we consider

them together

. PIM asks us to look at the wedge shape in isolation. It suggests that under Ezaki Glico

, we must analyze each

feature of the trade dress independently to figure out whether

each is “[it]sel[f] nonfunctional or help[s] make the overall design distinctive.” Appellant’s Br. 26. But that claim over reads

Ezaki Glico

.

That case dealt with a different kind of confectionery controversy. Ezaki Glico shaped its cookies into sticks and coated

them partly with chocolate. It claimed that combined design as

a trade dress. But the stick shape let it fit more cookies into

each pa ckage. And dipping only part of the stick in chocolate

helped people eat it without getting chocolate on their hands.

986 F.3d at 259. Ezaki Glico claimed as much in its ads. Id. at

260. Because each element of the claimed trade dress served a

function (or in that case, two separate functions), the whole

trade dress was functional. Id. at 257

– 59.

Sometimes, as in Ezaki Glico

, design choices for features

serve discrete functions. But here, we have two features (shape

and color) whose designs serve a single function

— identifying

the flavor. So this case answers a follow

- up question: When a

trade dress has an identifiable functio n, do we need to analyze

each feature separately to see if it independently contributes to

that function? No.

Rather than divide and conquer, when features’ designs together serve a function, we look at those designs together. As

we noted in Ezaki Glico i tself, we analyze functionality “at the

level of the particular design chosen for feature(s).” Id. at 257.

When a product’s overall look serves some function, we ask8 whether that function is served by the whole or by some discrete part of the trade dress. The trademark statute also supports this idea, stating that trademark protection is not available

for a mark “that, as a whole

, is functional.” 15 U.S.C.

§ 1052(e)(5) (emphasis added). So if the whole trade dress

serves a single function, and each feature’ s design contributes

to that same function, then the whole trade dress is functional.

As the parties agreed at oral argument, if a product’s picture

is enough evidence of its usefulness, the judge’s common

- sense

assessment of functionality may suffice. They are right

. B ecause the functionality bar is low

, a ll the design need do is give

the product a significant competitive edge beyond identifying

its source. See Qualitex

, 514 U.S. at 164, 169. And not all consumer s have to see the trade dress as serving a function beyond

identifying the product’s source. It is enough that all reasonable jurors would conclude that a significant number of consumers would see it that way. That is true here.

B. Th e watermelon

- colored wedge shape serves a

function : identif

y ing its flavor

The parties agree that the candy’s color scheme is functional because it helps to identify its watermelon flavor. We

agree

. C ommunicating the candy’s flavor is a legally recognizable function. And the candy’s colors serve that function:

they are oriented like the fruit’s colors and evoke the fruit.9 T he question is whether the candy’s colors alone signal its

flavor or whether the color s and shape combined further that

function. Though PIM disagrees, we think the two work together. On this issue, the parties’ photos are worth a thousand

words of briefing. Here is PIM’s candy side by side with real

watermel on slices:

Any reasonable juror would agree: The whole trade dress,

not just the colors, makes this candy resemble a watermelon

slice. The candy and the fruit share similar shapes and colors.

Even the orientations match: e ach has a long, wide, green base;

a thin, white layer running the length and width of the green

base; and a triangular, reddish

- pink top covering that white

layer and angling up to a point.

PIM object s that the District Court focused on the candy’s

colors at the expense of its shape. Not so. The court rightly analyzed the trade dress as a whole and whether any part of it

only advanced the brand. It even included a footnote about the

shape itself. The c ourt was right not to divorce shape from

color. The two work together to resemble watermelon

. PIM

may have worked to build a brand around the shape. But the10 wedge comes to us dressed in red, white, and green

, and that

wedge looks like a watermelon

.

As PIM notes, the shape and colors do not match exactly :

The bottom could be more curved and have a thinner band of

darker green

. The wedge could be wider. The point could be

sharper and a deeper red

. There could be black seeds. But a s

PIM itself put it

, because th i s candy is a n impulse buy, it

“do [es] n’t need to be the Mona Lisa.” Oral Arg. 13:15

– 19. To

identify its flavor, the candy’s trade dress need not exactly

copy watermelon, but just evoke it

.

And the shape contributes to the overall effect. Some

s hapes for watermelon candies

, such as sharks, ropes, and ribbons

, det ract from (or at least add no information beyond) the

colors. But th e wedge shape contributes to the function. The

colors alone c ould leave some ambiguity: I s it watermelon or

strawberry? W ith the wedge shape, all ambiguity is gone

— this

candy is a wedge of watermelon.

In that vein , the wedge might or might not identify the flavor on its own or with other color schemes. T hat trade dress is

not before us ; t he watermelon

- colored wedge is. The registered

trademark at issue defines the mark by both colors and shape.

So does PIM’s complaint. Plus, when we look at the pictured

candies, our eyes are drawn immediately to both their colors

and their shape. W e think of a slice of watermelon based on

both its color scheme and its shape. And in this color scheme,

the candy looks like a watermelon wedge. So we hold that the

trade dress presented as a whole, colors and shape together,

makes the watermelon candy more ident ifiable as a slice of watermelon

. T hat is function enough.11 * * * * *

P IM may have created the wedge shape to distinguish its

product from the rest of the market. But in doing so, it made a

candy reminiscent of a juicy watermelon wedge. That resemblance makes the whole trade dress of the red

- white

- and

- green

wedge functional when applied to a watermelon candy. So PIM

cannot use its trademark to shut down Haribo’s competing

candy. We will affirm the judgment of the District Court with

further instruction s to limit the cancellation order to the p rimary r egistration, leaving the s upplemental r egistration intact

for another day.