I’m a sucker for candy innovations, no matter how slight. I can be persuaded to try almost any candy once. Today, it was Garfield’s Chocobites, brought to you by the American branch of the Argentine confectioner Arcor.

They must have spent all of their budget on the celebrity endorsement (“Garfield Approved Limited Edition”), because they don’t seem to have bothered to do any product design. I have never seen a more blatant M&M imitation. They’re marginally thinner; the colors include one hideous non-M&M pinkish-brown; the candy shell is more fragile, the mouth feel is off—but otherwise, they’re M&Ms.

Which got me wondering—would Mars have a case? Most of the things that struck me as M&M-like are functional and hence unprotectable. The function of candy is to taste good. Candy shells around chocolate might even be doubly unprotectable as generic. The fringe details—getting the flavor of the chocolate exactly the same—while more specific, still have such strongly functional aspects that it’s hard to see any room for protectable trade dress.

The colors strike me as Mars’s best fact. The electric blue and disquieting red were spot-on (at least under the poor lighting in the shuttle where I snacked on them). Color can be a trademark now, provided it has acquired secondary meaning (see Qualitex. Despite Mars’s attempts to undermine the characteristically distinct M&M colors with their endless awful mucking about with the product design (Giant green Shrek M&Ms! Metallic Star Wars M&Ms! Black-and-white M&Ms!), I’d argue that if there’s strong secondary meaning in a color anywhere, it’d be in the M&M trade dress. (How many forms of trade dress are the subject of urban legends?) The size and shape are a closer matter; they’re not identical, but they’re less different than on other M&M-knockoffs I’ve seen.

Candy trade dress litigation tends to focus more on the design of product packaging. Whetstone Candy Co. v. Kraft Foods, Inc., 351 F.3d 1067 (11th Cir. 2003) involved (along with some less candy-themed issues) the product design of two competing chocolate orange products. Wrigley and Cadbury have crossed chewing gum sticks over the design of Trident and Dentyne packaging. And the candy shell has even been on the other foot; in Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500 (M.D. Pa. 1998), Hershey claimed that peanut butter M&Ms were using the same orange package color associated with Reese’s Pieces.

(Okay, I know you’re dying to know what happened. Held: the color orange is not functional in signaling the presence of peanut butter inside. Held: the design of Reese’s Piece packaging is not famous. (!) Held: the M&M design did not dilute the Reese’s trade dress. The full opinion involves one six-factor test and one eight-factor test. It’s denser than a bag of molten chocolate candy.)

Though rarer, there have been some candy trade dress suits based on the actual design of the candies. Malaco Leaf, AB v. Promotion in Motion, 287 F. Supp. 2d. 355 (S.D.N.Y. 2003) involved the fish-shaped design of two competing forms of Swedish fish. To no one’s surprise, red and fish-shaped has become the generic design for, well, Swedish fish. As a trademark, SWEDISH FISH is also weak. Not because they’re actually fish (-shaped candies) from Sweden, but because “Swedish fish” primarily describes the candies we all know and love. Ah, language.

See alsos include Topps Co. v. Gerrit J. Verburg Co., 41 U.S.P.Q.2D (BNA) 1412 (S.D.N.Y. 1996) (Ring Pops not functional) and Nabisco Brands, Inc., 772 F. Supp. 1287 (M.D.N.C. 1989) (Life Savers shape a strong trademark). I have also heard tell of a lawsuit involving the “size, shape, coloring and speckling” of jelly beans. So there is plenty of precedent for a lawsuit based on candy design.

And now for the punch line. Mars has already once sued Arcor and won an injunction for infringements on the trade dress of M&Ms. See Masterfoods USA v. Arcor USA, Inc., 230 F. Supp. 2d 302 (W.D.N.Y. 2002). There, Arcor introduced a candy called “Rocklets” in packaging that the district court found mighty similar to the M&M packaging.

The Court finds that the layout, colors and sizes of the packages are similar to one another, except, of course, for the m&m’s(R) on Mars’ and the ROCKLETS and Arcor names on Arcor’s. The use of the slanted name in contrasting colors, the lozenge, the appearance of shiny multi-colored lentils and the brown color of the plain, and yellow color of the peanut, packages, are similar upon first glance.

The design of the competing candies themselves—the factor on which I think Arcor may be in the most trouble—was of course replicated in the design of the bag in which they came. Arcor has clearly taken the lesson to heart; Garfield’s Chocobites come in a black bag, and the candies themselves are highly stylized, looking more like abstract discs of color than like candies.

Which, of course, is why I bought them—I thought they’d be something new and different, not just another M&M knockoff. The bag made them look like something else than what they were.

Talk about your consumer confusion.

Swedish fish: red gummy candies shaped like fish::Danish fish:inexplicably salty and inedible gummy objects shaped like fish

The various trademark and trade dress tests are a mess. The courts don’t quite agree on which or how many factors to consider, or even which factors are most important: at times it’s one; at others, it’s two more that had never been considered. I don’t doubt that judges are sincerely attempting to formalize their intuitions. The only problem is that their intuitions are so messy (and so often inconsistent) that the resulting formal tests are incoherent.

I have been thinking for a while that these multifactor tests are really more in the nature of checklists. If a court has not at least considered the issues they raise, it has not considered the whole problem before it. Checking them all off is necessary, not sufficient; it might still have missed something else of significance.

The biggest problem these multifactor tests raise may be that courts confronting them simply misunderstand one or more factors. By way of example, Jessica Litman has claimed that many peer-to-peer cases conflate the “commercial use” factor in the four-factor fair use analysis with the “effect on the market” factor. These cases sometimes assume that because the overall effect of file-sharing has a significant effect on sales, the use itself is commercial. It’s a real Wickard v. Filburn approach to “commercial use,” and in one sense utterly unnecessary, because examining the effect of file-sharing on sales of the copyrighted good in question gets at exactly the same issues directly.