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The term ‘trade dress’ refers to the appearance of a product when that appearance is used to identify the creator of that product. Trade dress encompasses the total image of a product and may include features such as size, shape, color, texture, graphics, or particular sales techniques.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). The party seeking trade dress protection bears the burden of proving that the features of the trade dress sought to be protected are not functional in nature. The functionality doctrine prevents trademark law from inhibiting legitimate competition by allowing businesses to compete through imitation of a useful product feature. Peter Mavrick is a business litigation lawyer who represents clients in trademark infringement lawsuits.

In the case of Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, Plaintiff Dippin’ Dots, Inc. (“DDI”) sued Defendant Frosty Bites Distribution, LLC (“FBD”) for trade dress infringement of DDI’s product and logo design, in violation of the Lanham Act, 15 U.S.C. § 1125. Plaintiff DDI sold brightly-colored, small beads of ice cream called “dippin’ dots.” DDI’s dippin’ dots were created through a six-step process involving, among other things, dripping, freezing and storing an ice cream composition into beads.

FBD was secretly started by a group of retail dealers who terminated their contracts with DDI. FBD sold a competing brightly-colored, small, popcorn-shaped and spherical-shaped ice cream product called “frosty bites.” FBD’s frosty bites were created, in part, by streaming and dripping an ice cream solution into liquid nitrogen where it freezes and forms beads and clusters of frozen ice cream.

DDI primarily sold dippin’ dots at kiosks or stands at amusement parks, sporting venues, and shopping malls. DDI identified itself using a distinctive logo made up of an oval of blue, yellow, and pink spheres surrounding the product name, “dippin’ dots,” in blue letters. Below the oval of spheres was a tag line advertising dippin’ dots as the “Ice Cream of the Future.”  FBD primarily sold frosty bites from booths and kiosks at various venues. FBD identified itself using a distinctive logo that consisted of an ice-like background upon which the words “Frosty Bites” are written in blue letters shadowed in pink. The “o” in the word “Frosty” was the torso of a cartoon caricature of a penguin holding a cup of yellow, green, blue, and red nuggets of ice cream. Below the words was a tag line advertising frosty bites as “The Ultimate Ice Cream Sensation!”.

DDI filed suit against FBD alleging trade dress infringement of DDI’s unique, flash-frozen ice cream product, and its unique logo design. FBD moved for summary judgment. The district court granted summary judgment in favor of FBD on both claims. DDI appealed the decision.

To prevail on a claim for trade dress infringement under Section 43(a) of the Lanham Act, a plaintiff must prove that (1) the product design of the two products is confusingly similar; (2) the features of the product design are primarily non-functional; and (3) the product design is inherently distinctive or has acquired secondary meaning. Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996). All three elements are necessary a court to make a finding of trade dress infringement. Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC held that DDI did not meet its burden of establishing the non-functionality of its product design.

There are two tests for determining functionality: (1) the traditional test and (2) competitive necessity test. Under the traditional test, a product feature is functional, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. The district court analyzed the size, color and shape of dippin’ dots. The district court made the following findings: (1) the color was functional, because it indicates which flavor of the ice cream was in each piece, i.e., pink for strawberry, white for vanilla, and brown for chocolate; (2) the size of pieces was functional because it contributed to the product’s creamy taste, as compared to a larger piece; and the shape of dippin’ dots was functional because dripping the ice cream composition into the freezing chamber, creates a “bead” that produces the product’s free flowing nature.

Under the competitive necessity test, the courts examine whether the exclusive use of a functional feature would put competitors at a significant non-reputation-based disadvantage. This test was not considered because, “[w]here the design is functional under the traditional test, ‘there is no need to proceed further to consider if there is a competitive necessity for the feature.’” Dippin’ Dots, Inc. quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). The appellate court, therefore, concluded that the dippin’ dots design features were functional as a whole because any flash-frozen ice cream product will inherently have many of the same features as dippin’ dots.

The appellate court further concluded that no reasonable jury could find that the two logos are confusingly similar because the lack of visual similarity between the two designs was overwhelming. To determine whether a likelihood of confusion exists, the court evaluates a number of elements including the following seven factors: (1) the strength of the trade dress, (2) the similarity of design, (3) the similarity of the product, (4) the similarity of retail outlets and purchasers, (5) the similarity of advertising media used, (6) the defendant’s intent, and (7) actual confusion. AmBrit, Inc. v. Kraft, Inc., supra. The appropriate weight given to each of these factors varies with the circumstances of the case. The trial court makes the ultimate decision on how much weight is given to each of these factors.

DDI argued that the district court failed to consider all the factors relevant to the issue of whether two marks are confusingly similar.  The appellate court, however, was not bound by the district court’s analysis, because the standard of appellate review was de novo. After reviewing the record in the light most favorable to DDI, the appellate court concluded that the remaining six factors all weigh in favor of DDI.  Nonetheless, the greatest weight was applied to the similarity of design.  The appellate court concluded that no reasonable jury could find that the two logos were confusingly similar because the lack of visual similarity between the two designs was overwhelming. The appellate court affirmed the district court’s grant of summary judgment in favor of FBD.

Peter Mavrick practices business litigation in Broward, Miami-Dade, and Palm Beach Counties, Florida. This article does not serve as a substitute for legal advice tailored to a particular situation.  Peter T. Mavrick can be reached at: Website:; Telephone: 954-564-2246; Address: 1620 West Oakland Park Boulevard, Suite 300, Fort Lauderdale, Florida 33311.

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