S'More Please! An Update on the Hershey Hearing • 2011 12 16 HersheyHearingUpdate

If you saw my recent blog post, you might remember that I went to the Trademark Trial and Appeal Board (TTAB) hearing on whether Hershey can get a trademark registration for its classic chocolate bar shape:

Hershey bar configuration

The TTAB panel (Judges Shaw, Cataldo, and Mermelstein) had questions for Hershey’s counsel and the examining attorney on two main issues: functionality and acquired distinctiveness.

Putting the Fun in Functional

The panel mostly questioned the PTO’s examining attorney on functionality. The trademark statute prohibits registration of a mark that “as a whole, is functional.” Hershey made a big deal in its initial argument about the details of the design—the dimensions, the 4-rectangle-by-3-rectangle configurations, and the recessed panels, which Judge Cataldo described as the “windowpane effect.” The judges wanted to know why the examining attorney thought this particular design is functional—not just a scored chocolate bar in general. The examining attorney seemed to have a difficult time addressing this question; he continued to assert that the ridges that separate the small rectangles make the candy bar easier to break and whether the individual segments were flat or recessed was irrelevant.

An interesting discussion arose about how to evaluate functionality in a mark. Hershey’s counsel focused on the fact that even if individual aspects of trade dress might be functional, the overall combination of those aspects can create a nonfunctional design that can be registered. The examining attorney asserted that, even if certain aspects of the design, like the windowpane effect, aren’t functional, the collection of elements was a functional design. While both sides agreed that a trademark examiner should look at the composite design to determine if it’s functional, they disagreed on how to weigh functional aspects and nonfunctional aspects.

The panel raised a final point on functionality with Hershey’s counsel in rebuttal—how did Hershey plan to decide who infringed its mark? Hershey’s counsel made clear that Hershey wouldn’t go after all makers of rectangular scored candy bars. Hershey’s counsel conceded that it might go after another 4 x 3 configuration with the same dimensions as its design, but it would depend on the facts of the case. Judge Shaw did ask about what candy bar designs this registration might take away from competitors. The ultimate functionality question seems to be: Where do you draw the line in the chocolate?

Do You Know It When You See It?

The other issue discussed was whether Hershey’s design had acquired distinctiveness. That’s the fancy trademark law way of saying, “When a consumer sees your mark, do they think of your product?” Certain marks can only receive registrations once they have acquired distinctiveness, and the Supreme Court has said that any trade dress (the visual appearance of a product) that falls under a “product design” category needs to meet the acquired distinctiveness bar.

Hershey’s counsel talked a lot about Hershey’s large sales and advertising figures ($4 billion in sales since 1998 and $168 million spent on advertising since 1986) and about the survey it conducted, which showed that 42% of chocolate-bar-buyers associated that shape with Hershey. 42% is a higher response rate than several other cases the PTO has accepted.

Given this showing, Judge Cataldo asked the examining attorney why this evidence wasn’t enough. The examining attorney responded that the evidence was “substantial but scant of probative value.” In human speak: while there is a lot of evidence, none of it specifically points to the connection between this design and Hershey. In candy speak: I see a lot of little round candies, but nothing tells me whether they’re M&Ms® or Reese’s Pieces®.

Hershey’s counsel responded, on rebuttal, that it wasn’t trying to prove that the design is famous (a higher bar used in for dilution claims), only that it had acquired distinctiveness. Interestingly, Hershey mentioned its lawsuits over the design, which resolved with Williams-Sonoma and Palmer agreeing to pay licensing fees for the designs as evidence of distinctiveness.

Like Waiting for Candy on Christmas

The panel didn’t give much indication as to how it might come out on either question. So, we’ll just have to wait and see where the chocolate bar breaks on functionality and acquired distinctiveness.

One final thought: when it comes to chocolate: I don’t spend much time looking at the size and shape and scoring—I just eat the whole thing!