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.
Continue Reading Kind Bar or Clif Bar: A Transparent Trade Dress Dispute