UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT _______________

No. 22-2821 _______________

PIM BRANDS INC., Appellant

v.

HARIBO OF AMERICA INC. _______________

On Appeal from the United States District Court for the District of New Jersey (D.C. No. 2:19-cv-14183) District Judge: Honorable Madeline C. Arleo _______________

Argued: June 20, 2023 Before: CHAGARES, Chief Judge, and BIBAS and MATEY, Circuit Judges

(Filed: September 7, 2023) Jonathan Z. King [ARGUED] Richard S. Mandel COWAN, LIEBOWITZ & LATMAN, P.C. 114 W. 47th St., 21st Floor New York, NY 10036 Leah Kelman David R. King HERRICK, FEINSTEIN LLP One Gateway Center, 9th Floor Newark, NJ 07102 Counsel for Appellant Michael Cukor [ARGUED] MCGEARY CUKOR LLC 150 Morristown Rd., Suite 205 Bernardsville, NJ 07924 Mark J. Liss Tamara A. Miller Laura M. Schaefer LEYDIG, VOIT & MAYER, LTD. 180 N. Stetson Ave., Suite 4900 Chicago, IL 60601 Counsel for Appellee _______________

OPINION OF THE COURT _______________ BIBAS, Circuit Judge. Hot summer days call for a slice of watermelon: a juicy, red wedge with a green-and-white rind. Some candy companies evoke this image by using colors alone, making their candies red, white, and green. But the watermelon effect is significantly stronger if the red-white-and-green candy is shaped like a wedge. Because the tricolored shape is recognizable as

2 watermelon flavored, the whole appearance is useful. So a candy- maker cannot block competitors from using the combined shape and colors by trademarking that combination. We will thus affirm the District Court’s grant of summary judgment. I. COMPETING CANDIES: WATERMELON WEDGES PIM makes candies. Two decades ago, it rolled out a new chewy candy: Sour Jacks Wedges. The original version is water- melon flavored. Its colors match its flavor: a green layer topped by a thin white band and then a larger red section. And the candy is shaped like a wedge. PIM advertised the candy as “The Ultimate Shape of Sour” and told consumers to “Respect the Wedge” and to keep “Livin’ on the Wedge.” Compl. ¶¶ 15–18. Once the new candy had been on the market for more than a decade, PIM tried to trademark just “the shape of a wedge for candy.” JA 194. The Patent and Trademark Office rejected it, requiring the company to add colors. PIM obliged, registering a trademark in “the shape of a wedge for candy, with an upper green section with white speckles, followed by a narrow mid- dle white section and followed by a lower red section with white speckles.” Registration No. 5,029,701. Its trademark looks like this:

3 JA 137. It is this trademark—the watermelon-colored wedge— that is at issue. PIM later started making Sour Jacks Wedges in other fla- vors. Each has a color to match its fruity flavor, like green for green apple or yellow for lemonade. But all are in the same wedge shape. The Patent Office later granted PIM a supple- mental registration for a tricolored wedge with unspecified col- ors. That trademark is not before us today. Haribo also makes candies. It recently introduced its own chewy watermelon candy. Its version is an elongated water- melon wedge. Like PIM’s, Haribo’s candy is red, white, and green. Haribo says it designed the candy’s shape and colors to match its flavor: watermelon. PIM thinks Haribo’s design copies its own. So it sued for trademark and trade-dress infringement under the Lanham Act and for unfair competition under New Jersey common law. 15 U.S.C. §§ 1114(1), 1125(a)(1)(A). Haribo countered that PIM’s trade d