The Eastern District of Pennsylvania recently resolved a food design trade dress case on summary judgment finding functionality and thereby no infringement. See Sweet St. Desserts, Inc. v. Chudleigh’s Ltd., 2014 U.S. Dist. LEXIS 177305 (E.D. Pa. Dec. 22, 2014).

In Spring 2010, Sweet Street contracted with Applebee’s to create an apple dessert. While investigating avenues to manufacture the pastry, Sweet Street discussed outsourcing with Defendant Chudleigh’s, maker of an “Apple Blossom pie.” During the discussions, Chudleigh’s did not advise Sweet Street of its ownership of a federal registration covering a blossom-design as a “distinctive configuration for baked goods.”

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Thereafter, Sweet Street commenced manufacture of its own petal shaped apple turnover for Applebees.

In response to a demand letter alleging infringement in the restaurant’s sale of its apple turnover, Sweet Street filed a declaratory judgment action seeking cancellation of Chudleigh’s blossom trade dress registration on functionality grounds.

The district court agreed with Sweet Street’s functionality argument, concluding that the blossom design was essential to the use or purpose of the dessert on the following four grounds:

  1. the flower-type shape satisfies the market need to provide a single-serving of pie;
  2. the round shape is more practical than other shapes such as a triangle, which cannot retain apples and produces a soggy moisture when microwaved;
  3. the hole at the top of the blossom helps to vent steam when the pastry is heated; and
  4. the six folded petals serve to hold the inside filling.

In combination, the court concluded as a matter of law that these features were essential to the blossom’s ability to function as a pastry dessert and that competitors would be put at a significant, non-reputational disadvantage if they were barred from using the six-petal design — the most aesthetically beautiful fold for making the product.

This decision is the second this year concluding that a particular food trade dress configuration was unprotectable on functionality grounds. While not exactly a death knell for these marks, both decisions suggest that these types of claims are difficult to sustain in all but the most unusual of cases and that functionality plays a significant role in the protectability analysis.