Third Circuit Cancels Watermelon Candy Trademark in Precedential Functionality Decision

That’s a mouthful !

On September 7, the U.S. Court of Appeals for the Third Circuit issued a precedential decision on trademark functionality doctrine in PIM Brands Inc. v. Haribo of America Inc. In affirming the district court’s grant of summary judgment, the Third Circuit found that PIM’s federally registered trademark to a wedge-shaped candy with green, white and red stripes should be canceled because the mark as a whole identifies the candy’s flavor.

PIM Appeals District Court Decision to Consider Color and Shape Together

After introducing its Sour Jacks Wedges gummy candies in the early 2000s, PIM Brands obtained federal trademark registrations covering its confections: one protecting a wedge candy with speckled green, white and red sections; and a supplemental trademark registration for a tricolored wedge candy with unspecified colors. PIM added the color description to its federally registered mark after examiners at the U.S. Patent and Trademark Office (USPTO) rejected PIM’s initial application, which only claimed the candy’s wedge shape.

PIM Brands filed suit against rival gummy maker Haribo in the District of New Jersey in June 2019 following Haribo’s introduction of a watermelon chewy candy with a similar shape and coloring to PIM’s candy. PIM’s suit included claims under the Lanham Act for trademark and trade dress infringement, as well as claims under New Jersey’s unfair competition law. Although PIM’s federal trademark registration gave the mark presumptive validity under 15 U.S.C. 1057(b), the district court ruled on summary judgment that Haribo had carried its burden of showing that no genuine dispute of material fact existed regarding the functionality of PIM’s claimed mark.


Third Circuit Cancels Watermelon Candy Trademark in Precedential Functionality Decision