court dismisses vague false advertising counterclaims but allows challenge to Wonderful's pistachio trade dress

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.