We proudly feature only freshly roasted Big Island macadamia nuts and 100 percent pure Kona and Ka‘u coffee from farms here on Hawaii Island… [21] Moreover, the picture of the BIC Cookie was only one of a series of pictures shown to each respondent in random order. But the name of the product answers the question `What are you?'"). CS (filed Dec. 24, 2002)). Requiring such a showing is consistent with the policy of limiting trademark protection for product designs. ¶ 18a. All evidence and inferences must be construed in the light most favorable to the nonmoving party. Landscape Forms, 113 F.3d at 379. at 200. The other pictures included pictures of the outside of the Big Island Candies box, which has "Big Island Candies" prominently written on it. Id. Our shortbread cookies feature an array of mouthwatering macadamia nut varieties, as well as equally distinctive flavored shortbreads. 2d 1086 (D.Haw. Wal-Mart, however, expresses concern about deterring competition. Kendall-Jackson further stated that a "producer's depiction of a grape leaf may, however, be so distinctive as to warrant protection from copying." BIC also seeks damages. The classic definition of a generic term is one that "refers to the genus of which the particular product is a species." [18] The central question asked by the Ninth Circuit in Kendall-Jackson was whether the plaintiff was seeking protection for a feature or features that had the ability to identify source. at 9. Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. A given designation cannot be both at once.'' The Cookie Corner Cookie is almost identical in appearance, but it is slightly larger.[4]. PL's Opp. Trademarks that include terms have traditionally been classified using the formulation set out in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. They come in an eight piece box and … Id. 2d 265 (1986). Before concluding, the court addresses BIC's argument that evidence of secondary meaning supports a finding that the BIC Cookie design is not generic. In cases involving generic terms, it is clear that "no amount of evidence of purported secondary meaning can give legal protection to that generic name." In an earlier order, this court (1) granted in part and denied in part BIC's motion for partial summary judgment on the issue of functionality and certain of Cookie Corner's defenses, and (2) denied Cookie Corner's cross-motion on the issue of functionality. Ala Moana Center: Street Level 1, Center Court near Centerstage. See Hr'g TV. Id. .. cases under § 43(a)," and "instead simply asked whether *1240 the design was likely to be understood as an indicator of the product's source." 262 F.3d at 116. See Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1259 (9th Cir.2001); Rachel v. Banana Republic Inc., 831 F.2d 1503, 1506 (9th Cir.1987). It is unclear whether or not BIC intends to stick to its position that the Second Circuit is a leader in the development of trademark law. Suggestive, arbitrary, and fanciful terms are considered inherently distinctive and therefore entitled to protection, whereas descriptive terms must have acquired distinctiveness, or secondary meaning, before they may be protected as marks. Dipping cookies halfway in chocolate at various angles, including diagonally, is also common. Patent and copyright law bestow limited periods of protection, but trademark rights can be forever. However, a plaintiff seeking protection for a product design must articulate which elements make up its claimed trade dress. [22], Second, although certain types of evidence might be relevant to both the issues of secondary meaning and genericness, the evidence that BIC does cite is not relevant. BIC suggests that, if more than 15% of *1251 survey respondents identified BIC after viewing the BIC Cookie, that percentage was "sufficient to support a summary judgment finding of distinctiveness, so it is more than sufficient to show that the dress is not generic." Big Island Candies: Best cookies - See 36 traveler reviews, 20 candid photos, and great deals for Honolulu, HI, at Tripadvisor. See Yunnan, 262 F.3d at 116 (recognizing that the articulation requirement had been announced "in the context of whether a plaintiff had satisfied the test for `inherent distinctiveness'which is no longer at issue in product design cases"). at 19. When deposed, *1247 Allen Ikawa ("Ikawa"), BIC's chief executive officer and president and the person designated to testify on BIC's behalf under Rule 30(b) (6) of the Federal Rules of Civil Procedure, stated that he "[hadn't] thought about" the elements that BIC claims as part of the BIC Cookie design. We’re thrilled to have a store at Ala Moana Center in Honolulu on Oahu. For a term to be held nongeneric, the seller must prove that the "primary significance of the term in the minds of the consuming public is not the product but the producer." at 33. By contrast, Cookie Corner has provided evidence that other rectangular diagonally dipped shortbread cookies are sold in the same markets as is the BIC Cookie. Amazon.com: Big Island Candies. When questioned by the court, BIC's counsel ultimately appeared to claim that "shortbread" was one of the design elements of the BIC Cookie because "shortbread" allegedly has a certain appearance. We drive over to Hilo and get a few boxes of these to bring back for ourselves and for gifts. [11] Because a makeup compact is not discarded after purchase, it "could be considered to be either the product or part of its packaging." Courts have recognized that there may be more than one applicable formulation of "genericness" in a product design case: Hanig & Co., Inc. v. Fisher & Co., Inc., 1994 WL 97758 at *4 (N.D.Ill. 2d 582 (1985). In particular, the rectangular shape is a classic shape for shortbread. The claims remaining for adjudication are those relating to the packaging of the BIC Cookie. Here, as discussed above, BIC has not presented any evidence that a majority of buyers recognize the alleged BIC Cookie design as identifying BIC or any other single source. Perfect for gifts, weddings, and any occasion at Honolulu Cookie Company. 2d 1083 (C.D.Cal. (rather than answering the question "What are you?"). First Req. Id. While the concept of a grape leaf on a wine label might be generic, a specific expression might not be. I was completely mesmerized as I watched the workers make … The Court's failure to mention a category that can never be shown to be distinctive, in a discussion regarding how to show distinctiveness, does not indicate the nonexistence of such a category. The facts in this case are set forth in this court's earlier order and are supplemented herein only as necessary. I went there to get cookies for my friend who just had a big surgery in Oahu. Id. Courts will not protect "basic" design features because of the concern that producers will be able to use trademark law to monopolize products. The packaging is exquisite. Opp. Our shortbread cookie are made with the finest ingredients and Hawaii-inspired flavors, including Macadamia, Kona Coffee, Pineapple, Coconut, Guava and Mango. We stopped in there while shopping … Mar.24, 1994). Ltd., 187 F.3d 363, 372 (4th Cir.1999). This court recognizes the difficulty of applying traditional definitions of "genericness" to product configuration or product design features. Although it does not address product design specifically, the Ninth Circuit's decision in Kendall-Jackson Winery, Ltd. v. E & J Gallo Winery, 150 F.3d 1042 (9th Cir.1998), is instructive because its definition of genericness is applicable in the product design context. Accordingly, the court concludes that, if the design of the BIC Cookie is "generic," it is not protectable even upon a showing of secondary meaning.[8]. at 115-16 (internal citations and quotations omitted). Kendall-Jackson defines genericness in terms of both commonness and generality. Because Wal-Mart's holding limits how trade dress can be shown to be distinctive, Wal-Mart's discussion of the Abercrombie categories is understandably limited to those categories that either are inherently distinctive or may be shown to be distinctive. We proudly feature only freshly roasted Big Island macadamia nuts and 100 percent pure Kona and Ka‘u coffee from farms here on Hawaii Island… We proudly feature only freshly roasted Big Island macadamia nuts and 100 percent pure Kona and Ka‘u coffee from farms here on Hawaii Island. [17] BIC argues that some of the declarations offered by Cookie Corner are entitled to little weight because the declarants are not qualified to offer their opinions. Most cases regarding "genericness" relate to trademarks and forms of trade dress other than product design, and the tests articulated in those cases do not translate easily into the product design context. No, these are not the macadamia nut shortbread cookies, the best-selling product produced by Big Island Candies. Customer Service; Toll Free: 1-866-333-5800; Ph: (808) 845-1517; Fax: (808) 697-6133 [email protected] Mon-Fri 8am-5pm HST [4] The BIC Cookie is approximately 1.25 inches wide, 2.25 inches long, and .375 inches thick, and weighs approximately 15.7 grams. Ala Moana Location: 10-6 (M-Th) 10-7 (F-Sat) … § 1125(a), does not require distinctiveness, courts have universally required that a producer seeking to protect its trade dress show that its trade dress is distinctive. *1252 To sum up, BIC, which has the burden of showing nongenericness, has not met its burden. BIC's cross-motion is DENIED. This is therefore not a credibility issue that must be left for resolution at trial. As BIC contends, "the most important type of evidence used in evaluating genericness is consumer surveys." Subscribe to Justia's Free Newsletters featuring summaries of federal and state court opinions. at 199 (Ex. Big Island Candies has a much larger variety of products available, but their shortbread cookies give Honolulu Cookie Company some competition and … Contrary to BIC's suggestions, Rule 703 does not require that expert witnesses have formal degrees. See below to learn more about our shipping process. As discussed in a later section of this order, Milstein defined "generic trade dress" as trade dress that was so generalized, or overbroad, that protecting it would amount to protecting an idea or concept. Olejko sold cookie-making machines to both BIC and Cookie Corner and has extensive experience in the cookie industry. Olejko testified that he could not "positively remember or recall" ever having seen "a rectangular-shaped shortbread cookie diagonally dipped in chocolate." at 28-29. yep, the chocolate dipped cookies from big island candies are onolicious! That is particularly true of elements (6) and (7), as the "two curved longitudinal sides" of the BIC Cookie and the purported "two-bite" nature of the cookie were not even mentioned, much less asserted, as elements of the BIC Cookie design until oral argument on the present motions.[13]. "Who makes this cookie?" Finally, the court notes that BIC misunderstands what percentage of respondents must respond in a certain way to establish nongenericness. First, a product design may be generic if it is overbroad or too generalized. Yurman, 262 F.3d at 115 (quoting Two Pesos, 505 U.S. at 768, 112 S.Ct. 's CS). "); Landscape Forms, 113 F.3d at 378 (noting that "one cannot meaningfully ask whether a product's design features are generic or otherwise descriptive of the product itself). We stopped in there while shopping at the Ala Moana Center. through the big window while you enjoy samples. Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir.1995). BIC argues: "16.9-29.4% of respondents who viewed [the BIC Cookie] answered the `who are you?' For the best experience on our site, be sure to turn on Javascript in your browser. Some of the cookies made by other producers are also rectangular diagonally dipped shortbread cookies. The Second Circuit, however, had "declined to follow the Third Circuit's application of a wholly-new, multi-pronged test to product design . Yurman, 262 F.3d at 117. Big Island Candies: Love! Cookies are commonly rectangular and often have bull-nose corners, which naturally result from a basic and common method of making cookies. Id. 2000), which involves a secondary meaning survey, is misguided. [6] At the hearing, when asked about Yumian's statement that "generic" product designs are not protectable, BIC argued that that portion of Yurman was dicta. Account & Lists ... honolulu cookie company hawaiian snacks hawaiian cookies honolulu cookie Id. The words "Big Island Candies" were clearly legible on the wrapper. [12] Cf. www.bigislandcandies.com at 19. In addition to the testimony of Olejko, BIC offers the results of a consumer survey that it commissioned (the "BIC Survey"). Cookie Corner is not claiming that BIC established the BIC Cookie design and that the design was subsequently expropriated by the public. Rather, the only way in which respondents saw the BIC Cookie was when it was wrapped in cellophane printed with the words "Big Island Candies." See Big Island Candies, Inc. v. Cookie Corner, 244 F. Supp. "Competition is deterred . Yunnan held that "a plaintiff seeking to protect its trade dress in a line of products must articulate the design elements that compose the trade dress." 2 McCarthy § 15:24. Even assuming that the holding of Murphy Door is applicable in the Ninth Circuit, however, it does not change the allocation of proof burdens here because the determinative issue is what Cookie Corner claims, not what Cookie Corner is able to prove.[9]Id. Kendall-Jackson's definition of genericness also suggests that the traditional "what are you/who are you" test for genericness is applicable to product design. Dated July 3, 2002, No. 874 F.2d at 101. Rather, Cookie Corner alleges that the design features that BIC seeks to protect were widely used before BIC began manufacturing the BIC Cookie in 1985. See also Landscape Forms, 113 F.3d at 380 ("While trademarking a generic term would create a monopoly in a necessary word or phrase, granting trade protection to an ordinary product design would create a monopoly in the goods themselves."). First, allowing BIC to add elements to its listing of trade dress elements at this late stage would prejudice Cookie Corner. O to Meyer Dec, Defs.' question. *1237 Gregory Wood (argued), Fulbright & Jaworski LLP, Austin, TX, Anna M. Elento-Sneed (appeared, but did not argue), Carlsmith, Ball LLP, Honolulu, HI, for Plaintiff. 96720. The circuit courts of appeal were divided as to whether the traditional categories set forth in Abercrombie applied to cases of product design or product configuration. [23] As discussed above, survey respondents were never shown the BIC Cookie without its cellophane wrapping, which has "Big Island Candies" printed over the entire surface area. Wal-Mart makes it more difficult to obtain trademark protection for product design features than for other types of trade dress, such as packaging. 2d 248 (1995) (noting that "a product's color is unlike `fanciful,' `arbitrary,' or `suggestive' words or designs, which almost automatically tell a customer that they refer to a brand"). [20], Second, no attempt was made to test consumers' perceptions of the BIC Cookie design rather than the BIC Cookie packaging (or the combination of the BIC Cookie design and packaging). Cookie Corner argues that BIC is trying to protect a product design that is generic and therefore unprotectable. Moreover, without knowing what the protected design consists of, a successful plaintiffs competitors would not know what new designs would be subject to challenge. BIC at one point contended that its protectable trade dress included square cookies as well as rectangular cookies, but BIC has since abandoned that claim. Plaintiff Big Island Candies, Inc. ("BIC"), has sued Defendants The Cookie Corner, James McArthur, Angus McKibbin, and the Cookie Masters of Hawaii ("Cookie Corner"), alleging trade dress infringement and dilution under the Lanham Act and unfair competition under Hawaii law. [8] The question of what it means for a product design to be "generic" is discussed in a later section of this order. For instance, BIC With respect to argument (1) (the multitude of alternative designs), the court recognizes that alternate configurations for shortbread cookies abound. Id. See, e.g., Dannemiller Dep. 2d 182 (2000). 17 (Ex. BIC's failure to clarify the size element of its trade dress claim would lead to uncertainty for competitors if this court were to grant BIC judgment on this claim. ... Big Island Candies … Neither argument is persuasive. Experience why these remain our signature product. There was no allegation in Grupo Gigante that the mark at issue was generic. Look for the Pineapple Shape® Premium Shortbread Cookies Baked Fresh Daily in Hawaii. As soon as I found out that they opened a SEASONAL (only open 'til Jan 1st) shop at Ala Moana, I rushed on over as … Biz Traveldude: Awesome free samples of… BIC has two primary arguments in response to this evidence: (1) only a few of the pictured cookies are rectangular and diagonally dipped, indicating that there are many alternate configurations; and (2) there is no evidence that any dipped shortbread cookie was made or sold before 1985, the date that BIC contends it first began manufacturing and selling the BIC Cookie. Skip to main content.us. Elec. Best cookie store in Big Island. Id. I’ve been baking macadamia nut shortbread cookies in the shape of pineapples … Landscape Forms suggested that the Second Circuit was "moving toward a rule that packaging is usually indicative of a product's source, while the design or configuration of the product is usually not so." [1], Cookie Corner has moved for partial summary judgment on BIC's claim of trade dress infringement with respect to the BIC Cookie design, arguing that the BIC Cookie design is generic and not protectable. 56(c); see also Addisu v. Fred Meyer, Inc., 198 F.3d 1130, 1134 (9th Cir. In addition to the dark chocolate-covered coffee brownie, pina colada shortbreads, and peach … 2753). Service, Inc. v. Pac. That phrase, however, is an oxymoron: "Either a designation is protectable as a `mark' or it is a `generic name' of a thing or service, in which case it can never be a protectable mark. Without some articulation of those elements, it would be impossible for the court to evaluate secondary meaning, genericness, or nonfunctionality, and it would be impossible for the court to shape narrowly tailored relief. 529 U.S. at 211-12, 213, 120 S. Ct. 1339. BIC has also suggested in its papers and at hearings before this court that its trade dress includes (5) the fact that the BIC Cookie is a shortbread cookie (with or without macadamia nuts), (6) the "two curved longitudinal sides"; and (7) the fact that it is a "two-bite" cookie (a matter related to its size). It is true that relevant survey data or statistics of some sort might assist this court. B to Pl. Survey respondents were never shown a plain BIC Cookie. BIC, by contrast, asserts that the concept of genericness does not apply to the design of any product, including a cookie. The present motions for summary judgment relate only to the design of the BIC Cookie. Reviews on Big Island Cookies in Honolulu, HI - Big Island Candies, Honolulu Cookie Company, Kula & Kō Confectionery, Hawaiian Paradise Candies, Wholesale Unlimited Express, Crackseed & Mochi, The Cookie … Contractors Ass'n, 809 F.2d 626, 631 (9th Cir.1987). BIC does not even suggest that Cookie Corner's witnesses are fabricating evidence. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69, 112 S. Ct. 2753, 120 L. Ed. Second, it appears that BIC itself does not have a clear idea about which elements make up its trade dress. One of the principal purposes of summary judgment is to identify and dispose of factually unsupported claims and defenses. 14K likes. BIC also argues that there are no First Amendment policy considerations in the area of product design. 73 (1938) (emphasis added). Regardless, this court does not agree that Yurman's discussion of the genericness requirement is dicta. Expanding beyond the signature buttery shortbread cookies, Big Island Candies became well known for its local snacks that reflect Hawaii’s diverse, multi-ethnic culture. Indeed, Allen Ikawa, BIC's president and founder, testified that the basic dip pattern has varied over time. The court begins its analysis by examining whether the concept of genericness applies to product design. Making such an exception would make it easier for the party asserting protectable product design to prevail. For instance, Cookie Corner could have copied the BIC Cookie for multiple reasons, including merely that it knew that this particular generic cookie design was a common one and popular with customers. While the Abercrombie classification clearly applies when a plaintiff seeks trademark protection for a term, it applies in only certain types of trade dress cases. Cases addressing product design suggest that the term "genericness" in the product design context covers different concepts. "[T]rade dress law [does not] protect an idea, a concept, or a generalized type of appearance," but "the concrete expression of an idea in a trade dress" may be protectable, assuming that the other requirements for trademark protection are met.