INTA Bulletin

September 1, 2012 Vol. 67 No. 15 Back to Bulletin Main Page

UNITED STATES: Hershey Bar Not Barred from Registration by TTAB

In a candy-coated decision, the Trademark Trial and Appeal Board (TTAB) reversed the examiner’s refusal of registration for a product configuration of a candy bar for use on “candy; chocolate.” In re Hershey Chocolate & Confectionary Corp., Serial No. 77809223 (T.T.A.B. June 28, 2012) (non-precedential).

Hershey Chocolate and Confectionary Corporation filed an application to register the product configuration of its candy bar. The mark description read: “The mark is 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.” Hershey alleged a first use date of December 31, 1968, and claimed that the product configuration had acquired distinctiveness through its extensive use and promotion.

The examining attorney refused registration on the basis that the mark was a functional configuration of the goods. The examining attorney refused registration on the alternative ground that if the mark was not functional, it consisted of a nondistinctive configuration of the goods that did not function as a trademark.

The TTAB determined that the product configuration comprising the mark was composed of four elements: (1) a rectangular candy bar was divided into 12 segments; (2) the segments were equally sized and rectangular in shape; (3) the segments were in a four-by-three arrangement; and (4) each segment was recessed with a raised border design. The Board noted that the “overall combination of these elements” guided its review of the case.

First, the TTAB analyzed the examiner’s functionality refusal. A product feature is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” A functional configuration cannot serve as a trademark. The TTAB indicated that there was “no doubt” that scoring or segmenting candy bars “serves a useful function[:] to enable the consumer to break the candy bar into smaller pieces for consumption.” The Board also found that many, if not most, candy bars had a rectangular shape. However, Hershey sought to register a candy bar comprising all four elements, and not just the rectangular shape or segmentation of the candy bar. The TTAB found that there was “no evidence that this particular combination of recessed rectangles with a raised border [was] used by other candy makers or that the overall design [was] in any way functional.” Accordingly, the Board concluded that the candy bar configuration mark, when considered in its entirety, was not functional.

Next, the TTAB analyzed whether the mark had acquired distinctiveness. By seeking registration on that basis, Hershey had admitted that the candy bar configuration was not inherently distinctive. As a result, the issue was “whether the relevant consumers view[ed] the configuration as a trademark.” Hershey submitted a consumer recognition survey in which approximately 42 percent of the survey participants correctly identified it as the maker of the candy bar shown. The applicant also submitted a declaration of its Assistant Secretary, which indicated that Hershey had been using the mark for over 40 years and had substantial sales and advertising expenditures. Hershey also submitted some of its advertisements, in which its candy bar configuration was shown prominently. Finally, it submitted evidence that a third party had attempted to copy the candy bar configuration for the shape of a brownie baking pan, which indicated that the configuration had “‘acquired distinctiveness in the minds of the public.’” After reviewing the evidence and arguments of record, the TTAB determined that Hershey had made out a prima facie case that its candy bar configuration had acquired distinctiveness and that the examining attorney did not rebut that showing.

In sum, the TTAB held that the product configuration mark was not functional and that the applicant had shown that the candy bar configuration had acquired distinctiveness. Consequently, it reversed the examining attorney’s refusal of registration.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association