Nothing is forever in the cutthroat world of commercial pastry manufacturing.  Doubly so in the single-serve apple pie sub-market.  In a recent row between Chudleigh’s and Sweet Street Desserts over Chudleigh’s claims that a single-serve apple dessert that Sweet Street had created for Applebees’, the Third Circuit Court of Appeals upheld a lower-court cancellation of this “blossom” trade dress:


determining that the six-fold design was largely functional.

The opinion lays out a decent recitation of the facts.  Reciting a history between the companies summarized as:  Chudleigh’s developed a single-serve apple pie in the mid-90’s and registered its design “a round shape with six folds of pastry encircling the filling.”  it looked like this:


The mark became incontestable in 2005.

Sometime around 2010, Applebee’s approached Sweet Street about supplying a signature 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.”

“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 well-known 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 found, and the Third-Circuit agreed that the six-fold upturned dough was essential for holding in the filling and the number of folds is determined in part by the size of the product and the consistency of the filling.  The opinion is good example of the current state of trade-dress functionality consideration:

“[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.”

The analysis performed by the Court based on the record describes the Court’s detailed consideration of the evidence that the shape of the dough is “essential to the purpose of an effective single-service fruit pie, and affects its cost and quality.”

In the end, the overwhelming evidence of this interrelation forced the Court to determine that the design was functional and not a protectable trade dress.

For the curious, the Court opinion has a detailed recitation of the different evidence and testimony considered at the trial and appellate levels that can function as a good delineation of the type of evidence and testimony necessary to establish, or undermine shape based trade-dress for foods.

The opinion is also a win for those advocates looking to enforce a granted registration, even if the detrimental effects of the notice might result in substantial damages and the eventual invalidation of the registration.  Here, the appellate Court also upheld the finding in favor of Chudleigh’s for the right under the Noerr-Pennington doctrine in favor of their First-Amendment right to petition the government in the face of Sweet Street’s claims that the cease-and-desist letter Chudleigh’s sent Applebee’s which chilled Applebee’s sales of the desserts and their orders (profits) from Sweet Street.  With the import of black-letter law, the 3rd Circuit left no doubt that even the eventual invalidation of a mark doesn’t put the holder at risk of damages for exercising their rights:

The fact that the U.S. Patent and Trademark Office had approved its registration, and that the product Applebee’s sold possessed several characteristics of the trademarked design, including a six-fold top in a spiral pattern, a circular shape, and individual serving size, made it objectively reasonable for Chudleigh’s to have pursued enforcement of its trademark. The fact that Chudleigh’s trademark was subsequently deemed invalid does not indicate that its assertion that it had an enforceable trademark was not at least plausible.

Certainly a win for litigants concerned about exercising their rights against larger competitors, and perhaps a boon for kitchens everywhere looking for a way to fold dough and keep filling in on a single-serve dessert.

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