Mini Melts, Inc.v.Dippin' Dots, Inc.

Trademark Trial and Appeal Board

May 8, 2006

No. 91159112 (T.T.A.B. May. 8, 2006)

GDH/gdh Mailed: May 8, 2006

Opposition No. 91122465
Opposition No. 91156483
Opposition No. 91159112

Mini Melts, Inc.1

v.

Dippin' Dots, Inc.

Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.

By Hohein, Administrative Trademark Judge:

As a preliminary matter, these three oppositions are
hereby consolidated, pursuant to Fed. R. Civ. P. 42(a), inasmuch
as the parties in each proceeding are the same, the issues
presented involve common questions of law and fact, and neither
party will be prejudiced by consolidation. See TBMP §511 (2d ed.
rev. 2004). Such proceedings may accordingly be presented on the
same record and briefs.

1 Inasmuch as the request is uncontested and is properly supported,
plaintiff's request in Opposition No. 91122465 that its name in the
caption thereof and in the pleadings of such proceeding be changed
from Frosty Bites, Inc. to Mini Melts, Inc., in view of the subsequent
amendment of its articles of incorporation to so change its name, is
approved. See TBMP §512.02 (2d ed. rev. 2004).

UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91122465, 91156483 and 91159112
2
By way of background, Opposition No. 91122465 involves
an application filed by Dippin' Dots, Inc. ("applicant") to
register the matter shown below as a mark for "ice cream beads
less than 10mm in diameter and sold in composite form":2

Opposition No. 91156483 involves an application filed by
applicant to register the matter reproduced below as a mark for
"ice cream and frozen yogurt":3

Similarly, Opposition No. 91159112 involves an application by
applicant to register the matter illustrated below as a mark for
"ice cream, frozen yogurt and novelty frozen water beads":4

2 Ser. No. 75893686, filed on January 4, 2000, which alleges a date of
first use anywhere and in commerce of 1988 and sets forth the
following description: "The mark consists of a configuration of the
goods which are in the shape of a sphere. The stippling is for
shading purposes only and does not indicate color."

3 Ser. No. 78114652, filed on March 13, 2002, which alleges a date of
first use anywhere and in commerce of March 31, 1988 and recites the
following description: "The mark consists of a configuration of the
goods which is in the shape of multiple sphere[s] of ice cream or
frozen yogurt beads less than 10mm in diameter and sold in composite
form. The beads in the drawing are in the color pink. The broken
lines on the drawing indicate a container and are intended to show
placement of the mark, and are not a feature of the mark. The
stippling is for shading purposes."

4 Ser. No. 76137546, filed on September 28, 2000, which alleges a date
of first use anywhere and in commerce of 1988 and contains the
following description: "The mark consists of a configuration of the
Opposition Nos. 91122465, 91156483 and 91159112
3

Mini Melts, Inc. ("opposer") has opposed registration
in each instance5 on the grounds that it "is in the business of
manufacturing cryogenically frozen ice cream, yogurt and novelty
frozen water particles"; that the matter which applicant seeks to
register as a mark is a configuration of applicant's goods;6 that
"the configuration sought to be registered by Applicant is
functional and therefore cannot be registered under 15 U.S.C. §
1052(e)(5)"; that "[a]pplicant claims to be the owner of United
States Patent 5,126,156 issued to Curt D. Jones for a method of
cryogenically freezing and serving frozen beads of ice cream and
other compositions"; that "[t]ogether with Curt D. Jones,
Applicant has sued Opposer and others in MDL 1377, In re Dippin'
Dots, Inc. Patent Litigation, in the United States District Court

goods which is in the shape of multiple spheres of various sizes, in
the color brown. The broken lines on the drawing indicate a container
and are intended to show placement of the mark, and are not a feature
of the mark. The stippling is for shading purposes."

5 Opposition No. 91122465 commenced on March 25, 2001, while Opposition
Nos. 91156483 and 91159112 respectively commenced over two years later
on April 28, 2003 and May 17, 2003.

6 In Opposition No. 91122465, opposer specifically alleges that, based
upon the description of the proposed mark in the opposed application,
"[t]he configuration to be registered is for a single sphere or bead
of ice cream, yogurt or novelty frozen water," while in Opposition
Nos. 91156483 and 91159112, opposer adds in each case the allegation
that its "particles are in the shape of beads and irregularly shaped
particles" and that, based upon applicant's respective descriptions of
its proposed marks in the involved applications, "[t]he configuration
to be registered is for a cup sized grouping of particles."

Opposition Nos. 91122465, 91156483 and 91159112
4
for the Northern District of Georgia, for patent infringement
based upon allegations that Opposer and others made and served
beads of ice cream"; that "[o]pposer and others have sued for
declaratory judgments of non infringement and patent invalidity
...";7 and that "[t]he prosecution history of the '156 patent,
including a declaration by Curt D. Jones, demonstrates [that] the
configuration depicted in the [involved] trade dress registration
application is functional." Opposer, in connection with both
Opposition Nos. 91156483 and 91159112, further alleges that:
On March 31, 2003, the MDL 1377 Court granted
summary judgment to Opposer and others that
... [Applicant's] product trade dress,
claimed as "small round beads or pieces of
colorful ice cream," was functional and not
entitled to trade dress protection ....

In addition, Opposer and others have
sued Dippin' Dots, Inc. in Frosty Bites, Inc.
et al. v. Dippin Dots, Inc. 3:01:CV-1532-M
(N.D. Tex) for, inter alia, declaratory
judgments that the Dippin' Dots, Inc. product
trade dress is functional. Motions for
Summary Judgments by both sides have been
filed in this proceeding and these motions
for summary judgment are ripe for judicial
determination.

Applicant, in its answers, has admitted the allegation
in Opposition Nos. 91122465 and 91159112 that opposer "is in the
business of manufacturing cryogenically frozen ice cream, yogurt
and novelty frozen water particles," but has curiously denied
such allegation in Opposition No. 91156483. Additionally, while

7 Such allegation, which is from opposer's pleading in Opposition No.
91122465, reads as follows in its later-filed oppositions: "Opposer
and others have counter-sued for declaratory judgments of non
infringement of the '156 patent and ... [applicant's] claimed trade
dress, [and] patent invalidity ...."

Opposition Nos. 91122465, 91156483 and 91159112
5
applicant has denied nearly all of the other salient allegations
of each opposition, in Opposition No. 91159112 applicant has
admitted the allegations of (i) its ownership of the '156 patent;
(ii) its filing suit for patent infringement against opposer and
others in the MDL 1377 action (styled In re Dippin' Dots, Inc.
Patent Litigation) in the United States District Court for the
Northern District of Georgia; (iii) its being counter-sued in
such action by opposer and others for, inter alia, patent
invalidity and "trade dress ... violations"; (iv) the granting by
"the MDL 1377 Court ... [of] summary judgment on the issue of
trade dress protection for Applicant's product " (although
applicant "notes that this decision is being appealed to the
Eleventh Circuit Court of Appeals"); and (v) the filing by
"[o]pposer ... [of] suit against applicant in Frosty Bites, Inc.
et al. v. Dippin' Dots, Inc., 3:01:CV-1532-M (N.D. Texas)."
Prior to the commencement of testimony periods in
connection with Opposition No. 91122465, applicant filed a motion
for suspension of such proceeding pending "the final decision of
MDL 1377, In Re Dippin' Dots, Inc. Patent Litigation, in the
United States District Court for the Northern District of
Georgia." Applicant asserted, as the basis therefor, that it
"believes there are issues before the MDL 1377 Court which may be
dispositive of the trademarks [sic] registrability before the ...
Board." In support thereof, applicant submitted a copy of a
"Transfer Order" issued by the Judicial Panel on Multidistrict
Litigation which centralized in the Northern District of Georgia
eight district court actions, in which applicant and/or opposer
Opposition Nos. 91122465, 91156483 and 91159112
6
were parties, based on a finding that "all actions in this
litigation involve common questions of fact arising out of
Allegations that Frosty Bites beaded ice cream product infringes
U.S. Patent 5,126,156 or trade dress for Dippin' Dots small,
beaded, free-flowing ice cream product." Opposer, in response,
indicated that it did not oppose applicant's motion for
suspension in view of such litigation, provided that certain
specified preconditions were met. The Board, in an order issued
on May 8, 2003, granted applicant's motion for suspension
pursuant to Trademark Rule 2.117(a), finding that:
Based on the record now before us, it appears
that the civil action and this opposition
proceeding involve common legal and factual
issues involving the functionality of the
applicant's asserted configuration mark. The
Court's findings and decision on these issues
will be binding on the Board. Thus, the
outcome of the civil action clearly will have
a bearing on this opposition proceeding.

The Board accordingly suspended proceedings in
Opposition No. 91122465 "pending the ultimate outcome" of the
parties' civil litigation, "i.e., following the termination of
any and all appeals and remands," with the Board to be notified
in writing of the final determination of such action within
twenty days thereof. However, in connection with Opposition Nos.
91156483 and 91159112, neither applicant nor opposer requested
suspension of such proceedings, even though it is apparent that
the parties' civil litigation likewise clearly has a bearing
upon, if not in fact would be dispositive of, the issue of the
functionality of applicant's asserted marks as involved therein.
Nonetheless, in consequence of the lack of suspension, all trial
Opposition Nos. 91122465, 91156483 and 91159112
7
dates in the latter two opposition proceedings have now run and
additionally, in connection with Opposition No. 91156483, an
order was issued on November 1, 2004 which allowed opposer thirty
days from such date to show cause why its failure to file a brief
in connection with such proceeding should not be treated as a
concession of the case.
Opposer, with respect to all three proceedings, has
submitted essentially the same paper as (i) its timely response
to the suspension order in Opposition No. 91122465, (ii) its
timely reply to the show cause order in Opposition No. 91156483
and (iii) its "BRIEF IN OPPOSITION" in Opposition No. 91159112.
For instance, referring to applicant as "DDI," opposer asserts as
follows in its response to the suspension order (footnote
omitted):8
Opposer submits that the relevant
portion of the MDL 1377 proceeding has been
decided. Additionally, opposer submits that
the case should proceed directly to decision
because the issue of functionality of DDI's
trade dress is controlled by the holding of
the Eleventh Circuit in Dippin' Dots, Inc. v.
Frosty Bites Distribution, LLC, 369 F.3d
1197; 70 U.S.P.Q.2d (BNA) 1707 (11th Cir.
2004), cert denied, 125 S. Ct. 911 (2005).

In particular, based on the description in the application
involved in Opposition No. 91122465 that applicant's "mark
consists of a configuration of the goods which are in the shape
of a sphere" and that applicant seeks registration thereof for

8 Also, among other things, "Opposer suggests that consolidation with
Opposition 91159112 ... and Opposition 91156483 ... would be suitable
as all three oppositions are ready for decision based upon the holding
of the Eleventh Circuit" in Dippin' Dots Inc. v. Frosty Bites
Distribution LLC, 70 USPQ2d 1707 (11th Cir. 2004).
Opposition Nos. 91122465, 91156483 and 91159112
8
goods identified as "ice cream beads less than 10mm in diameter
and sold in composite form," opposer notes that (footnotes
omitted):
The Eleventh Circuit held:

After a careful review of the
record, we conclude that DDI's
product design is functional as a
whole and in its individual
elements. To hold otherwise runs
counter to intellectual property
law because it would give DDI "a
monopoly more effective than that
of the unobtainable patent."

The Eleventh Circuit addressed the size,
color, and shape of DDI's product. In regard
to size, the Eleventh Circuit stated "[s]ize
is also functional in this case because it
contributes to the product's creamy taste,
which would be different in a larger
[']dot.[']" In regard to shape the Eleventh
Circuit stated "[l]ikewise, the shape of
dippin' dots is functional because dripping
the ice cream composition into the freezing
chamber, as described in Patent '156, creates
a [']bead['] that facilitates the product's
free flowing nature.["]

Opposer consequently concludes that, in light of applicant's
stated "limitations regarding the size and shape of its product
configuration in the description portion of Application
75/893,686," "[e]ach of these recitations individually, or
collectively, are functional under the decision of the Eleventh
Circuit."
Similarly, in reply to the show cause order in
Opposition No. 91156483, opposer states that it has not lost
interest in such case. Rather, and as is the case in Opposition

Opposition Nos. 91122465, 91156483 and 91159112
9
No. 91159112, opposer maintains that each proceeding "is ready
for a decision based upon the pleadings, Applicant's description
[of the mark in the involved application] as filed, and the
holding of the Eleventh Circuit" (footnote omitted) in the above
noted litigation involving the parties. Specifically, in
addition to the holdings mentioned above, opposer points out
that, "[i]n regard to color, the Eleventh Circuit stated ...
[that] color is functional because it indicates the flavor of the
ice cream, for example, pink signifies strawberry, white
signifies vanilla, brown signifies chocolate, etc." Because
applicant's description of its mark in the application involved
in Opposition No. 91156483 refers to "beads ... in the color
pink" and describes its goods as "multiple sphere[s] of ice cream
or frozen yogurt beads ... sold in composite form," while the
involved application in Opposition No. 91159112 describes the
mark as consisting of "a configuration of the goods which is in
the shape of multiple spheres of various sizes, in the color
brown," opposer insists that such marks "are functional under the
decision of the Eleventh Circuit."
Although applicant has not filed any paper in response
to opposer's submissions in connection with Opposition No.
91122465 and Opposition No. 91156483, it has submitted a response
with respect to Opposition No. 91159112, which will be treated as
applicable to these consolidated proceedings. By such response,
applicant essentially contends that opposer has failed to submit
any proper evidence as proof of its allegations of functionality.
Specifically, applicant asserts among other things that:
Opposition Nos. 91122465, 91156483 and 91159112
10
Opposer cites as evidence a Summary
Judgment Opinion of the U.S. District Court
for the Northern District of Georgia from MDL
No. 1377, In re Dippin' Dots Patent
Litigation, in footnote number one of its
Brief. The Summary Judgment Opinion was
attached to Opposer's Notice of Opposition
when filed [in Opposition No. 91159112 as
well as in Opposition No. 91156483].

Opposer also cites as evidence an
Opinion by the Eleventh Circuit Court of
Appeals upholding the District Court's
decision regarding the Applicant's trade
dress as decided in the Summary Judgment
Opinion. Opposer attached a copy of this
opinion to its Brief [in Opposition No.
91159112 and to its reply to the order to
show cause in Opposition No. 91156483, cited
to such opinion in its response to the
suspension order in Opposition No. 91122465,]
and referenced the Eleventh Circuit's opinion
in footnote number two of its Brief.

During the course of this Opposition [as
well as that of Opposition No. 91156483],
Opposer conducted no discovery. During its
testimony period [in such proceedings],
Opposer failed to submit any testimony to
Applicant or to the Board, either in the form
of oral or written testimony or through
filing a Notice of Reliance on any type of
evidence.

Applicant, citing Trademark Rule 2.122(b)(1), argues
with respect thereto that "[i]n an Opposition ... Proceeding
before the Board, the only matters that are automatically of
record outside the testimony periods and Notice of Reliance
procedure are the Subject Application ... and the pleadings of
the Opposition ...." Applicant, in view thereof and in light of
Trademark Rule 2.122(e), consequently maintains that "Official
records, such as the opinions used by Opposer, that a party
wishes to rely on [in] its briefing or at [final] hearing must be
Opposition Nos. 91122465, 91156483 and 91159112
11
submitted during the party's testimony period or rebuttal period
using a Notice of Reliance." Furthermore, applicant urges that:
An exhibit attached to a pleading in an
Opposition is not evidence unless identified
and submitted during the parties' testimony
period[s]. Trademark Rule 2.122(c). Opposer
attached the Summary Judgment Opinion of the
District Court to its Notice of Opposition
[in both Opposition No. 91156483 and
Opposition No. 91159112]. However, Opposer
never submitted the Summary Judgment ...
[Opinion] during its testimony period as part
of a Notice of Reliance. Therefore, the
Summary Judgment Opinion Opposer relies upon
in its Brief [in Opposition No. 91159112, in
its reply to the show cause order in
Opposition No. 91156483 and in its response
to the suspension order in Opposition No.
91122465] was not properly submitted into the
record and should be ignored by the Board.

Likewise, applicant urges that because "[a]n exhibit
attached to a party's Brief [or its reply to a show cause order
or its response to a suspension order] is also not considered of
record in a proceeding," the Board "should not consider any such
exhibit as evidence unless submitted by the party during its
testimony period." Thus, applicant contends that because "[t]he
Opinion of the Eleventh Circuit Court of Appeals ... was never
submitted during a testimony period, nor was it submitted as part
of a Notice of Reliance during a testimony period," "the Eleventh
Circuit's Opinion is not of record in this matter." Applicant
accordingly concludes that, in each of these consolidated
proceedings:
Opposer has failed to submit any
evidence of record in this matter, other than
Applicant's Application and the pleadings of
this case. Therefore, Opposer failed to
support its burden to show that the Mark is
Opposition Nos. 91122465, 91156483 and 91159112
12
functional, and therefore not entitled to
registration.

[Opposer] ... relies entirely on
improper evidence that is not of record in
this proceeding. Therefore, Applicant
respectfully requests that the Opposition be
dismissed, and that Applicant's Mark be
registered on the Principal Register of the
United States Patent and Trademark Office.

Aside from the fact that, in Opposition No. 91122465,
proceedings were suspended at applicant's request, prior to the
commencement of trial, on the basis that the civil litigation
involving the parties would have a bearing upon, if not in fact
be dispositive of, the issue of functionality in such proceeding,
applicant is simply incorrect in its insistence that the citable
opinion of the Eleventh Circuit in connection with the parties'
civil litigation is evidentiary in nature. Rather, such opinion
is precedential in that it is not only binding on the Board but,
more importantly, is binding on the parties under the doctrines
of res judicata (or claim preclusion) and collateral estoppel (or
issue preclusion). See, e.g., Whopper-Burger, Inc. v. Burger
King Corp., 171 USPQ 805, 807 (TTAB 1971). The Eleventh
Circuit's opinion cited by opposer constitutes a binding judicial
determination that, as between the parties thereto, including
applicant and opposer, the marks asserted therein by applicant
are functional. Hence, inasmuch as the same marks are the
subjects of these consolidated proceedings, which are brought on
the identical grounds of functionality, we find that applicant is
barred from obtaining the registrations which it seeks as a
matter of law.
Opposition Nos. 91122465, 91156483 and 91159112
13
Tellingly, nowhere in applicant's response does
applicant show or even otherwise contend that the parties' civil
litigation is not final with respect to the Eleventh Circuit's
affirmance of the District Court's grant of summary judgment in
opposer's favor as to the claim or issue of functionality.
Moreover, it is clear from the Eleventh Circuit's opinion that
the matter which applicant seeks to register as its marks has
been finally determined to be functional and, in view thereof, is
not registrable. For instance, as the Board noted in Polaroid
Corp. v. C & E Vision Services Inc., 52 USPQ2d 1954, 1956 (TTAB
1999):
The doctrine of claim preclusion (or res
judicata) precludes the relitigation of a
claim (or cause of action) which was
litigated in a prior proceeding involving the
same parties or their privies for which a
final judgment "on the merits" has been
entered. Treadwell's Drifters Inc. v.
Marshak, 18 USPQ2d 1318, 1321 (TTAB 1990).
Additionally, "the doctrine of issue
preclusion (or collateral estoppel) operates
to preclude the relitigation, by the same
parties or their privies, of the issues
actually litigated, and necessarily
determined (by a court of competent
jurisdiction), in a prior proceeding ...."
Flowers Industries Inc. v. Interstate Brands
Corp., 5 USPQ2d 1580, 1583 (TTAB 1987).

In particular, as to the application of the doctrine of issue
preclusion (or collateral estoppel), the Board, citing Mother's
Restaurant Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 221 USPQ
394, 397 (Fed. Cir. 1983), pointed out in Polaroid that the
following requirements are essential for application of such
doctrine: "(1) the issues to be concluded are identical to those
involved in the prior action; (2) in that action the issues were
Opposition Nos. 91122465, 91156483 and 91159112
14
raised and 'actually litigated'; (3) the determination of those
issues in the prior action was necessary and essential to the
resulting judgment; and (4) the party precluded ... was fully
represented in the prior action." 52 USPQ2d at 1957. Each of
such requirements is fully met herein.
Among other things, it is noted from the opinion by the
Eleventh Circuit that, as to the matters previously referred to
by opposer (footnotes omitted):
Plaintiff-Appellant Dippin' Dots, Inc.
("DDI") brought suit against Defendant-
Appellee Frosty Bites Distribution, LLC
("FBD") alleging trade dress infringement of
DDI's product design ... in violation of the
Lanham Act, 15 U.S.C. §1125. The district
court granted summary judgment in favor of
FBD .... For the reasons that follow, we
affirm the judgment of the district court.

....

Plaintiff DDI markets and sells a
brightly-colored flash-frozen ice cream
product, called "dippin' dots," consisting of
free flowing small spheres or beads of ice
cream. Curtis Jones, DDI's founder, applied
for and received Patent No. 5,126,156
("Patent '156") for the method DDI uses to
make dippin' dots. .... DDI is the
exclusive licensee of Patent '156.

....

Defendant FBD makes and sells a
competing brightly-colored flash-frozen ice
cream product, called "frosty bites,"
consisting of mostly small popcorn-shaped,
along with some spherical-shaped, ice cream
bites. ....

....
DDI filed suit against FBD alleging
infringement of DDI's trade dress ... in the
form of its unique, flash-frozen ice cream
product ... in violation of the Lanham Act,
Opposition Nos. 91122465, 91156483 and 91159112
15
15 U.S.C. §1125. FBD moved for summary
judgment.

The district court granted FBD's motion
for summary judgment finding that ... DDI's
product design--small, predominantly
separated colored beads or pieces of ice
cream--is functional and therefore not
subject to trade dress protection .... In re
Dippin' Dots Patent Litig., 249 F. Supp. 2d
1346, 1373-74 (N.D. Ga. 2003).

70 USPQ2d at 1708-09.
In addressing the issue of "[w]hether DDI’s product
design is functional and therefore not subject to trade dress
protection," id. at 1709, the Eleventh Circuit specifically
indicated with respect thereto that (footnote omitted):
Section 43(a) creates a federal cause of
action for trade dress infringement. Ambrit,
Inc. v. Kraft, Inc., 812 F.2d 1531, 1535 ...
(11th Cir. 1986). "The term 'trade dress'
refers to the appearance of a product when
that appearance is used to identify the
producer." Publications Int’l, Ltd. v.
Landoll, Inc., 164 F.3d 337, 338 ... (7th
Cir. 1998). "'Trade [d]ress' involves the
total image of a product and may include
features such as size, shape, color ...,
texture, graphics, or even particular sales
techniques." Ambrit, 812 F.2d at 1535
(internal quotation omitted). In order to
prevail on this claim for trade dress
infringement under §43(a), DDI 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, 1038 ... (11th Cir.
1996); see also 15 U.S.C. §1125(a)(3) ("[T]he
person who asserts trade dress protection has
the burden of proving that the matter sought
to be protected is not functional."); TrafFix
Devices, Inc. v. Mktg. Displays, Inc., 532
U.S. 23, 29, 121 S. Ct. 1255, 1259, 149
L.Ed.2d 164 ... (stating that "trade dress
protection may not be claimed for product
Opposition Nos. 91122465, 91156483 and 91159112
16
features that are functional"). "[A]s all
three elements are necessary for a finding of
trade dress infringement, any one could be
characterized as threshold." Epic Metals, 99
F.3d at 1039. Because we conclude that DDI
has not met its burden of establishing the
non-functionality of its product design, we
decline to address the other two elements of
the claim.

Id.
Further, in its analysis of the functionality of
applicant's trade dress, the Eleventh Circuit pointed out with
respect to the functionality doctrine that (footnote omitted):
"The functionality doctrine prevents
trademark law, which seeks to promote
competition by protecting a firm's
reputation, from instead inhibiting
legitimate competition by allowing a producer
to control a useful product feature."
Qualitex Co. v. Jacobson Prods. Co., 514 U.S.
159, 164, 115 S. Ct. 1300, 1304, 131 L.Ed.2d
248 ... (1995); see also In re Morton-Norwich
Prods., Inc., 671 F.2d 1332, 1336 ...
(C.C.P.A. 1982) ("This requirement of
'nonfunctionality' ... has as its genesis the
judicial theory that there exists a
fundamental right to compete through
imitation of a competitor's product, which
right can only be temporarily denied by the
patent or copyright laws."). "Functional
features are by definition those likely to be
shared by different producers of the same
product and therefore are unlikely to
identify a particular producer." Landoll,
164 F.3d at 340. "[T]hese features cannot be
appropriated; otherwise, competitors would be
prevented from duplicating the new product
even to the extent permitted by the branches
of the law of intellectual property that
protect innovation rather than designations
of source." Id.

The line between functionality and non-
functionality is not ... brightly drawn."
Epic Metals, 99 F.3d at 1039 (internal
quotations omitted). Nonetheless, two tests
exist for determining functionality. See id.
Under the first test, commonly referred to as
Opposition Nos. 91122465, 91156483 and 91159112
17
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.'"
TrafFix, 532 U.S. at 32, 121 S. Ct. at 1261
(quoting Qualitex, 514 U.S. at 165, 115 S.
Ct. at 1304). Under the second test, which
is commonly called the competitive necessity
test and generally applied in cases of
aesthetic functionality, "a functional
feature is one the 'exclusive use of [which]
would put competitors at a significant non-
reputation-related disadvantage.'" Id.
(quoting Qualitex, 514 U.S. at 165, 115 S.
Ct. at 1304). Where 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." Id.
at 33, 121 S. Ct. at 1262.

Id. at 1710.
In applying such test, and noting that "[t]he features
of product design that we must analyze in this case are the size,
color, and shape of dippin’ dots," id., the Eleventh Circuit
found that (footnotes omitted):
[T]he product design of dippin' dots in
its individual elements and as a whole is
functional under the traditional test. The
color is functional because it indicates the
flavor of the ice cream, for example, pink
signifies strawberry, ... brown signifies
chocolate, etc. See, e.g., Qualitex, 514
U.S. at 163, 115 S. Ct. at 1303 (explaining
that "the words 'Suntost Marmalade,' on a jar
of orange jam immediately ... signal a brand
or a product 'source'; the jam's orange color
does not do so"); Inwood Labs., Inc. v. Ives
Labs., Inc., 456 U.S. 844, 853, 856, 102 S.
Ct. 2182, 2188-89, 72 L.Ed.2d 606 ... (1982)
(concluding that district court did not err
in finding that colors of certain
prescription drugs were functional because,
inter alia, many patients associated color
with therapeutic effect); Warner Lambert Co.
v. McCrory's Corp., 718 F. Supp. 389, 396 ...
(D.N.J. 1989) (finding that in the mouthwash
field, an amber colored liquid signifies a
medicinal-tasting product, red signifies a
Opposition Nos. 91122465, 91156483 and 91159112
18
cinnamon flavor, blue signifies peppermint,
and green signifies mint). The district
court took judicial notice of the fact that
color indicates flavor of ice cream. DDI
argues that such judicial notice was
improper. We disagree. ....

....

In this case, the district court took
judicial notice of the fact that color is
indicative of flavor in ice cream. This fact
is adjudicative in nature and is generally
known among consumers. In addition, the
district court specifically questioned DDI's
counsel regarding the propriety of taking
judicial notice of the fact[.]

....

.... Therefore, the district court
properly took judicial notice of the fact
that the color of ice cream is indicative of
its flavor. Likewise, we, who also
questioned DDI's counsel at oral argument
regarding the propriety of taking judicial
notice, take judicial notice of the fact that
color of ice cream is indicative of flavor.
Accordingly, we conclude that color is
functional in this case because it is
essential to the purpose of the product and
affects its quality.

Size is also functional in this case
because it contributes to the product's
creamy taste, which would be different in a
larger "dot." Plaintiff produced materials
that emphasized how the quick freezing of
tiny round beads was crucial to the taste and
consistency of the product because the Patent
'156 method of freezing tiny beads reduced
the number of ice crystals in the product.
.... It necessarily follows that larger
pieces of ice cream, which would take longer
to freeze, would have increased ice crystals,
thus affecting the creamy quality of the
finished product. This is further evidenced
by DDI founder Jones's Declaration of
Commercial Success, submitted to the Patent
Office, which emphasized dippin' dots'
superior characteristics and benefits that
are produced by using the Patent '156 method
to create small pieces of ice cream. ....
Opposition Nos. 91122465, 91156483 and 91159112
19
These superior characteristics and benefits
include the better taste and texture of
dippin' dots, their easy dispensability, and
the novel way in which they are consumed.
.... In addition, several documents from the
Patent '156 application denote the preferable
size of the beads in specific millimeter
measurements. ....

Likewise, the shape of dippin' dots is
functional because dripping the ice cream
composition into the freezing chamber, as
described in Patent '156, creates a "bead"
that facilitates the product's free flowing
nature. .... Jones testified to this,
stating he experimented with different
procedures in order to create "a uniform
bead" ..., and that the beaded shape of
dippin' dots is a result of the method
enunciated in Patent '156 .... Moreover, a
DDI product brochure states that the
spherical shape is a result of the Patent
'156 process and allows the "quick, yet even
freeze that is so important to the taste and
consistency of the product." ....

Id. at 1710-12.
Thus, "[b]ased on our review of the record and dippin'
dots' individual elements," id. at 1712, the Eleventh Circuit
concluded that (emphasis in original):
[T]the totality of the dippin' dots
design is functional because any flash-frozen
ice cream product will inherently have many
of the same features as dippin' dots. See
Landoll, 164 F.3d at 342 (stating that when
each of the elements is functional, "[i]f the
product nevertheless present[s] a distinctive
appearance, that appearance would be eligible
for legal protection as trade dress unless it
[is] the only way the product [can] look,
consistent with its performing each of the
product’s functions optimally") (emphasis
added). Therefore, DDI's product design as a
whole is essential to its purpose and affects
its quality. Accordingly, it is functional
under the traditional test, and not subject
to trade dress protection.

....
Opposition Nos. 91122465, 91156483 and 91159112
20

After a careful review of the record, we
conclude that DDI's product design is
functional as a whole and in its individual
elements. To hold otherwise runs counter to
intellectual property law because it would
give DDI "a monopoly more effective than that
of the unobtainable patent." See Morton-
Norwich, 671 F.2d at 1337. "It is the
province of patent law, not trademark law, to
encourage invention by granting inventors a
monopoly over new product designs or
functions for a limited time." Qualitex, 514
U.S. at 164, 121 S. Ct. at 1304. Therefore,
DDI's product design is not subject to trade
dress protection. Accordingly, summary
judgment in favor of FBD was proper.

Id. at 1713.
In view of the above findings as to size, color and
shape in the civil litigation, and inasmuch as it is clear that
applicant seeks to register as marks the configuration or trade
dress of its products, individually (spherical shape) as well as
composites (multiple spheres colored pink or brown), it is plain
that the issue of the functionality of each of the putative marks
sought to be registered by applicant has been finally adjudicated
and that each of such marks has been determined to be functional.
Hence, and inasmuch as it is also apparent that opposer has not
lost interest in Opposition No. 91156483, the order to show cause
issued in that case is considered discharged pursuant to
Trademark Rule 2.128(a)(3); and, under the doctrine of issue
preclusion (collateral estoppel), judgment is hereby entered
against applicant and in favor of opposer with respect to the
claims of functionality pleaded in these consolidated
proceedings.
Opposition Nos. 91122465, 91156483 and 91159112
21
Decision: The oppositions are sustained and, in each
case, registration to applicant is refused.