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Blossom pie design is functional and therefore ineligible for trademark protection

Chudleigh’s is an apple farm and bakery based in Ontario, Canada, which sells baked goods to consumers and commercial entities. In the mid-1990s, Scott Chudleigh, an owner of the business, began developing a “single-serve, fully baked . . . apple pie” to sell to restaurants, to which it already distributed multi-serving apple pies. Mr. Chudleigh and his wife tested several possible shapes for the single-serve pies, settling on a round shape with six folds of pastry encircling the filling. Chudleigh’s registered a trademark for the six-fold pastry design, known as the Blossom Design, and the mark became incontestable in 2005.

Chudleigh’s has distributed various versions of the Blossom to consumers and commercial establishments. In addition, Chudleigh’s spoke with Applebee’s about supplying a signature apple dessert, but never made a deal to do so.

Sweet Street manufactures and sells desserts to restaurant chains, including Applebee’s, and distributors. In 2010, Applebee’s asked Sweet Street to develop a single-serving apple dessert for its restaurants. Sweet Street proposed a round “apple pocket” that consisted of a unitary, pie-like bottom with an open top covered by six rectangular pieces of dough folded around the filling in a counter-clockwise spiral pattern. Applebee’s liked the look of the pastry and hired Sweet Street to provide it.

To meet Applebee’s demand, Sweet Street considered outsourcing the production of the dessert. To this end, Sweet Street entered discussions with Chudleigh’s, which sent samples for it to consider. Sweet Street declined to contract with Chudleigh’s to produce the dessert, citing the fact that the look of the product was different from what Applebee’s wanted, and instead produced the dessert itself. After a limited test run, Applebee’s launched Sweet Street’s dessert at all 1,865 of its restaurants. It sold well.

Scott Chudleigh noticed an internet story about Applebee’s new dessert and sent an employee to purchase a sample. Thereafter, Chudleigh’s sent a cease-and-desist letter to Applebee’s claiming the Cinnamon Apple Turnover infringed its registered trade dress in the Blossom Design because the “dessert looks strikingly similar to Chudleigh’s wellknown BLOSSOM Design, featuring the same six-fold spiral pattern.” After discussions with Applebee’s, Chudleigh’s agreed to allow Applebee’s to sell its remaining inventory of the dessert.

Sweet Street filed suit against Chudleigh’s, (1) seeking declaratory judgments that its product did not infringe on the Blossom trade dress and that Chudleigh’s registered trademark in the Blossom Design was invalid, (2) requesting cancellation of the trademark, and (3) claiming tortious interference with Sweet Street’s contractual relationship with Applebee’s. Chudleigh’s filed counterclaims for trademark infringement and unfair competition. After discovery, both parties moved for summary judgment. The District Court granted summary judgment to Sweet Street on the trademark-related claims, and to Chudleigh’s on the tortious interference claims.

The District Court reasoned that the Blossom Design’s key element of “six folds or petals of upturned dough [is] essential to contain the filling, and the number of folds or petals is determined in part by the size of the product,” making it functional, and therefore ineligible for trademark protection. Only “incidental, arbitrary or ornamental product features which identify the product’s source” are protectable as trade dress. Features that are “functional” are not protectable.

“[I]n general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” If we do not determine that a feature is functional under this standard, we next ask whether affording it trademark protection would nonetheless put competitors at a “significant non-reputation-related disadvantage” that would restrict competition in the market. This second formulation captures the concept of “aesthetic functionality.” Where the product feature meets the first test for functionality, “there is no need to proceed further to consider if there is a competitive necessity for the feature,” or “engage . . . in speculation about other design possibilities” that would satisfy the functional purpose of the feature.

Sweet Street has shown the trade dress is functional. The evidence establishes that the “overall combination of features” that Chudleigh’s claimed to constitute the Blossom Design is functional because the shape of the dough is essential to the purpose of an effective single-serving fruit pie, and affects its cost and quality. Scott Chudleigh’s own account of his creation of the Blossom Design shows that the single-serving size and round shape of the design were critical to minimizing the cost of the pastry and to filling a need in the restaurant industry to reduce waste and ease serving.

For the foregoing reasons, the court affirmed the District Court’s grant of summary to Sweet Street with respect to its trademark claims, and to Chudleigh’s with respect to the tortious interference claim.