Wonderful Co. v. Nut Cravings Inc., No. 1:21-cv-03960 (MKV),
2026 WL 818073 (S.D.N.Y. Mar. 24, 2026)

Wonderful sued Nut Cravings for infringing its pistachio package
trade dress. This opinion deals only with Nut Cravings’ counterclaims, which
mostly survive except for false advertising.

Wonderful has a registration for its packaging: a design
“consist[ing] of black three-dimensional product packaging having a rectangular
shape with transparent semi-circular curved sides, the word ‘WONDERFUL’ in
white with a design of a ‘heart’ in place of the letter ‘O’ appearing across
the top of the packaging and the word ‘PISTACHIOS’ in green appearing
vertically in the middle of the packaging” for “processed nuts.”

It also claimed unregistered trade dress in: (1) “a
predominantly black package”; (2) “a bright green accent color”; (3) “use of
sans serif font for the word ‘PISTACHIOS’ ”; (4) “use of capital letters for
the word ‘PISTACHIOS’ ”; (5) “semi-circular curved ‘window’ cut outs showing
pistachios”; and (6) “the WONDERFUL mark.”

Nut Cravings uses a black and green color scheme for its
pistachios, has the phrase “roasted salted pistachios” written in all capital
letters, a sans-serif typeface, and a rectangular simulated-window on the front
of its package. It alleged that each of the elements that overlap with Wonderful’s
is generic and functional for packaging of processed nuts.

Nut Cravings plausibly alleged that the trade dress
(registered and unregistered) was functional, thus stating a claim for
invalidity of the registered mark. Although a combination of functional
elements can in theory be nonfunctional, “the fact that a trade dress is
composed exclusively of commonly used or functional elements might suggest that
that dress should be regarded as unprotectable or ‘generic,’ to avoid tying up
a product or marketing idea” (also citing Laurel Road Bank v. CommonBond, Inc.,
18-cv-7797 (ER), 2019 WL 1034188, at *6 (S.D.N.Y. Mar. 5, 20219) (noting that
“where each element is functional and the elements work in tandem to create an
advertisement that is readable and eye-catching, [plaintiff] is not likely to
meet its burden that the Trade Dress is nonfunctional”)).  

The counterclaim plausibly alleged that only the Wonderful
mark was nonfunctional. The presumption of nonfunctionality afforded by
registration is rebuttable. Nut Cravings alleged that black and green provide a
non-reputation related benefit of an aesthetically pleasing appearance, with
black separately indicating high quality and green separately indicating the
product is related to “nature, health and/or pistachios.” It cited pleading
numerous reports and publications explaining the benefits of the use of these
colors for food packaging. It further alleged that numerous other processed nut
products use green and black for their packaging and provided 36 specific
examples.  “[A] color on packaging may be
functional in a given industry.”

Nut Cravings also alleged that the other elements—capital
letters, sans-serif font, and transparent windows on the package—are functional
and provide non-reputation related benefits for food packaging. All-caps is
allegedly commonly used to denote simplicity and/or premium quality; sans-serif
font is allegedly commonly used to assist readability; transparent windows are allegedly
commonly used to “entic[e] customers, enhance[e] product visibility, and/or
display[ ] the freshness of items inside.” These are all non-reputation-related
benefits that courts have found to be functional in similar contexts. E.g., Laurel
Road Bank found the use of sans serif font in advertising campaign to be
functional as it “enhanced legibility and readability” and that the use of
“large text catches a viewer’s attention” and is also functional, and Kind LLC
v. Clif Bar & Co., 2014 WL 2619817, (S.D.N.Y. June 12, 2014), held that the
use of a transparent window on food packaging for food bars serves a functional
purpose “of revealing the bar within.” In reversing the dismissal of Wonderful’s
claims in this case and finding nonfunctionality plausible, the Second Circuit even
noted that “the transparent windows in the packaging [ ] arguably serve the
functional purpose of allowing a consumer to view the pistachios being sold.”  

So too with genericity, although the allegations were
thinner. That’s what discovery is for.

False advertising: Nut Cravings alleged that Wonderful misrepresented
that the packages contain more edible pistachios than actually included. It pointed
to nineteen online consumer reviews complaining of a significant number of
empty shells in Wonderful pistachio products. Nut Cravings alleged that
consumers expect that packages of in-shell processed nuts will include
substantially only editable nuts within shells, and that “almost all of the
advertised weight” is edible, and that the deception here caused consumers to
pick Wonderful over Nut Cravings.

But conclusory allegations that false advertisements caused a
claimant to lose sales are insufficient. None of the cited customer reviews
mentions Nut Cravings or says that the customer otherwise would have purchased
from them absent the allegedly false statements.  Nut Cravings didn’t even allege that every bag
misrepresents its net weight due to a significant number of empty shells. The
court wasn’t willing to give every pistachio producer a claim against Wonderful
without more allegations.

from Blogger https://tushnet.blogspot.com/2026/04/court-dismisses-vague-false-advertising.html