Excerpt from Chudleigh’s Website

As if we all haven’t already indulged a little too much over the holidays, we chose our first day back to write about non-traditional trademark protection for the configuration of single-serving apple pie pastries. It’s OK, don’t worry, if the Blossom pastry to the left is tempting, you always can get back on track tomorrow!

Having said that, I’m afraid that neither counting calories, nor exercising a healthy dose of dietetic discipline will protect the once-believed “distinctive configuration for baked goods” from the fiery furnace of the deadly trademark functionality doctrine.

To that point, and in case you’re wondering what the trademark registration symbol to the left is supposed to say, for now, it references the federal configuration trademark registration that Chudleigh’s obtained back in 1999, and renewed in 2009, for this shape of pastry:



We say, for now, because the federal district court in the Eastern District of Pennsylvania — just prior to Christmas — granted summary judgment against Chudleigh’s, concluding as a matter of law, that the pastry design is “essential to the use or purpose” of the pastry, and the design “affects the cost or quality of” the pastry, rendering the pastry design functional and incapable of trademark protection and registration. So, unless Chudleigh’s appeals the decision and is able to overturn the functionality ruling, its fifteen year old non-traditional trademark registration will be burned to a crisp (revoked/cancelled, for the benefit of our non-pastry-chef-readers).

The court summarized its functionality determination without a lot of legalese:

“The product’s size, shape, and six folds or petals of upturned dough are all essential ingredients in the Blossom’s ability to function as a single-serving, fruit-filled dessert pastry. The six folds or petals of upturned dough are essential to contain the filling, and the number of folds or petals is determined in part by the size of the product and the need to limit the number of openings in the top for reheating. Furthermore, permitting Chudleigh’s to maintain proprietary rights in the Blossom Design would have the deleterious impact on competition that the functionality doctrine aims to prevent.”

Now, to the extent you’re wondering how exclusive trademark protection can go up in flames fifteen years after the USPTO granted a federal registration in the first place, it’s worth knowing, there is no time limit on challenging non-traditional trademark rights based on functionality grounds — even incontestability does not validate protection for a design shown to be functional at any later point in time.

To the extent you’re wondering why the USPTO didn’t smoke out functionality sooner and flip the claimed configuration trademark before issuing the registration in 1999, another good question, and the prosecution history at the USPTO provides some interesting answers.

The pastry design trademark application was examined at the USPTO in 1998, before the Supreme Court had decided Wal-Mart (2000) or Traffix (2001), so the examination focused on the product configuration lacking inherent distinctiveness, the USPTO’s initial registration refusal did not raise functionality.

Chudleigh’s was able to overcome the refusal with argument and evidence, convincing the USPTO that the design was sufficiently unique to be considered inherently distinctive, since the USPTO had not yet been informed by the U.S. Supreme Court that product configurations can never be inherently distinctive. Following the Supreme Court’s decisions in Wal-Mart and Traffix, it is settled that only non-functional product configuration designs that have acquired distinctiveness are capable of trademark protection and registration on the Principal Register.

Last, to the extent you’re wondering how this trademark validity challenge came before the federal district court in the Eastern District of Pennsylvania, that’s an interesting story too. But for our limited purposes here, Chudleigh’s noticed that Applebee’s was selling a similarly shaped dessert pastry, so it sent to Applebee’s a cease and desist letter. Applebee’s supplier of the pastry ended up bringing a declaratory judgment action, asking the federal court in Pennsylvania, for a number of things, including a declaration that Chudleigh’s configuration trademark registration is invalid and was not infringed.

One possible takeaway: To the extent your trademark portfolio includes pre-Wal-Mart/Traffix non-traditional trademark registrations, it is probably a good idea to make sure they can withstand the heat of the fiery furnace of functionality, before you seek to enforce them.

If December 2014 was the month for configuration trademark filings, will 2015 be the year of functionality decisions?