David Gabor is a shareholder at Weintraub Tobin. He is a trial lawyer and represents production companies, infomercial companies, direct response companies and multi-level marketing organizations as to both operational and compliance matters. In particular, David is focused on advertising and compliance issues, including FTC counseling and litigation, class actions, and multi-agency governmental compliance involving the marketing and sale (over multiple media platforms) of various products including educational and health-related products.
A recently filed in New York federal court lawsuit between Kind, LLC (the maker of the Kind Energy Bar) and Clif Bar & Co. (the maker of various iterations of the Clif Energy Bar), has all the makings of a classic trade dress dispute. In that case, Kind has sued Clif over the evolution of the packaging of Clif’s sub-brand, known as the “Mojo” Bar.
The case went before the District Court on April 28, 2014 for a one day “mini-trial” on Kind’s motion for injunctive relief. At that hearing, Kind argued that the transformation of the packaging of the Mojo Bar from a fairly standard “fat” opaque package into a slimmed down version featuring a transparent window and lettering on a black side panel, knocked off virtually every element of its own product, known as the Kind Bar.
Clif countered that the transparent window in a slim-size bar with certain lettering on it does not have even a single element of protectable packaging, nor does it duplicate the overall look of the Kind Bar. In raising such arguments, Clif was relying on the general rule that if trade dress is determined to be legally functional it cannot be protected as a trademark even if the public attributes that appearance or design to a single source (de facto secondary meaning) and even if there is confusion between the parties’ products or their sources among members of the public. American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3d Cir. 1986).
Kind predictability responded that, under the standards of trade dress, the individual components were not as important as the overall “look and feel” of the product. Indeed, trade dress is the total image and overall appearance of a product as reflected in such features as size, shape, color or color combinations, design of a label, texture, or graphics. John J. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). In determining the specific trade dress of the product and determining whether infringement has occurred, consideration is given only to an aggregation of all such features.
Clif responded that the concept of using transparent or partially transparent packaging along with certain lettering is generic/functional and is not covered by trade dress law. At the injunction hearing Clif readily admitted that it is competing with the Kind Bar but argued that its packaging choice was in response to consumer demand and was not a rip off of the Kind product and could not constitute a Lanham Act violation. Indeed, some courts have analyzed the components of a claimed trade dress feature-by-feature to determine whether there are viable alternatives to each feature. See, e.g., Service Ideas, Inc. v. Traex Corp., 846 F.2d 1118 (7th Cir. 1988). However, as Kind would certainly point out, the more common approach is not to examine each feature of the trade dress to see whether it is functional, but, rather, to look at the amalgamation of the features to see whether the overall design is functional. See, e.g., LeSportsac Inc. v. K-Mart Corp., 754 F.2d 71, 76 (2d Cir. 1985).This approach was approved by the U.S. Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992).
Overall, this case is a closer call than might be expected. While Kind is correct that the Mojo Bar has evolved into a shape and look that is more similar to its product then not, that may not be enough to establish an infringement of trade dress because the packaging elements seem to be rather functional and the likelihood of consumer confusion is an open question.
The precedents for clear product packaging are legion. Anyone who has picked up a bag of potato chips knows this. Just as many chips have clear packaging as opaque packaging. Most run in the same range of sizes and shapes. If that example is not close enough (and admittedly it’s not that close), one can also turn to the energy bar category itself. It can be argued that that category has many more commonalities in design features than differences. For example, most bars run in the same size and shape ranges and most share certain elements of packaging, often featuring “natural” muted color schemes in paper or foil-like packaging with sealed end-caps. Thus, the fact that Clif uses clear packaging with sealed end-caps may not be the determinative factor that Kind would like it to be. Also, the placement of the translucent portion of the packaging may not be found to violate trade dress due to its functionality. The purpose is to show consumers the supposedly nutritious contents inside. In terms of lettering, the reality is that the “real estate” on these slim bars is, well, slim. Lettering can either be run across the top or the sides. There are limited options in that regard.
That said, the Kind case is not frivolous. The Mojo Bar, with its transparent packaging and slim shape, is somewhat evocative of the “profile” of the Kind product. The question there, then, is does any non-functional component create consumer confusion? Whether the New York court will find that there is “clear” confusion created by the transparent packaging and the lettering scheme remains to be resolved.