This week’s article involves a two year fight between the Hershey Chocolate & Confectionery Corporation (“Hershey”) and the United States Patent and Trademark Office regarding the chocolate bar pictured above. On August 20, 2009, Hershey filed a trademark application seeking to register the following trademark for “candy and chocolate,” which is described by Hershey as “a configuration of a candy bar that consists of twelve (12) equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle:”
The Trademark Examining Attorney assigned to review Hershey’s application refused registration of the trademark for two reasons. First, he asserted that the three-dimensional configuration was functional and not eligible for federal registration under any circumstances. Basically, he argued that the configuration of the candy bar was primarily to facilitate breaking it into bite-sized pieces. Because the configuration provided a specific utilitarian advantage to the consumer and was not merely acting as a trademark (like the word HERSHEY’S), the Trademark Examining Attorney deemed the overall design to be functional.
In the alternative, the Trademark Examining Attorney argued that, even if the candy bar configuration was not functional, it was still not entitled to federal registration because it was simply non-distinctive product design that had not yet acquired distinctiveness or “secondary meaning” among consumers. In other words, the Trademark Examining Attorney argued that most consumers would not recognize the design of the Hershey bar as being a trademark exclusively used by Hershey to identify and distinguish its candy bars from those offered by Hershey’s competitors. Rather, consumers would perceive it as just another ho-hum product design that they couldn’t care less about.
In response, Hershey first addressed the functionality rejection. Hershey pointed out that candies and chocolates are manufactured in a wide variety of sizes and shapes, but that none of them embody the same features or combination of features as Hershey’s configuration. For instance, some chocolate bars are divided into 16 square-shaped segments, some are divided into 28 rectangular segments, and others have no segments at all. This tends to indicate that Hershey’s use of its particular configuration is not necessarily superior to other configurations and that granting Hershey exclusive rights to its configuration would not put competitors at a significant non-reputation based disadvantage.
Hershey then took aim at the Trademark Examining Attorney’s second refusal, which was based on his opinion that the candy bar design was non-distinctive. Hershey claimed that it has been using the design for over 40 years and that it had spent close to 200 million dollars on nationwide advertising over the past 24 years. In addition, sales of candy bars with the particular configuration had exceeded four billion dollars over the past 12 years. Hershey also referred to a third-party website that described the candy bar design as a “classic confectionery icon,” but because Hershey forgot to actually attach a printout of the website page as part of its response, it was not admitted into evidence.
The Trademark Examining Attorney was underwhelmed by Hershey’s arguments. He maintained his functionality refusal and rejected Hershey’s evidence of acquired distinctiveness as being insufficient. Hershey countered with even more evidence and affidavits from Hershey employees and others in the candy industry (225 pages worth) attesting to the fact that the candy bar configuration had no utilitarian advantage and that a limitless variety of other designs and configurations were equally feasible and cost-effective. In support of its position that the configuration had acquired distinctiveness, Hershey submitted a market research survey indicating that around 42% of likely purchasers of chocolate bars identified the Hershey bar design as uniquely belonging to Hershey (which is quite high). Still, the Trademark Examining Attorney remained unconvinced and made both of his refusals final. He also submitted into evidence an expired utility patent (not owned by Hershey) that was for a candy manufacturing process that involved scoring chocolate so that it could be broken into desired shapes and sizes for purposes of eating, sharing, measuring, and cooking. The Trademark Examining Attorney argued that the existence of this utility patent is persuasive evidence of functionality because the statements in the patent refer to the utilitarian function and advantages of scoring chocolate. He further stated that “the subdividing of a rectangular piece of candy into smaller rectangular pieces of candy with break-off lines is so common and non-distinctive in the candy industry” that Hershey would have to show a lot more than it did to prove that the configuration of its Hershey bar had acquired distinctiveness in the minds of consumers. Hershey appealed the decision to the Trademark Trial and Appeal Board and is currently awaiting a decision.
So, what do you think? Do you agree with Hershey or the Trademark Examining Attorney? Although reasonable minds can differ, I think the design of the Hershey candy bar is functional. Of course, I don’t know for sure what was going on in the minds of Hershey product developers 40 years ago, but seeing that the Hershey bar configuration is pretty bland and pedestrian, I have to believe it was designed for another purpose other than to “wow” the American public. That purpose would probably be to make it easier to divide the chocolate for eating and cooking. But if it’s not functional, then I agree with Hershey that the configuration has probably acquired sufficient distinctiveness for federal registration since I don’t recall seeing a candy bar that looks quite like the Hershey bar. Of course, I’m usually too busy inhaling my chocolate to really care about how it was scored, divided, or whatever.
Oh, when I asked my non-lawyer girlfriend Karen whether she thought the scored design of the Hershey bar was functional, she immediately said yes. “How would I know how much chocolate to put onto the graham cracker when I’m making s’mores? Each s’more has to have an equal amount of chocolate.” Precisely.