Tootsie Rolls, Rainbows & Chocolate Bars • 2011 12 08 TootsieRollRainbowsChocolate

I Want Candy!

It’s the holiday season, and a major theme in my holiday celebrations is chocolate. So I’ve been excited to find recent cases in which two of my favorite topics intersect: chocolate and trademark law. (In fact, my first blog post ever, from my law school days, was also about a candy trademark case.)

These three current candy-centric cases cover so many trademark issues they could make up an entire law school exam. Take a look and ask yourself, “What would Willy Wonka do?”

How Many Licks Does It Take for Tootsie Roll to Take Over the World?

I don’t know about you, but I try to avoid thinking about candy and feet at the same time. Apparently, though, Tootsie Roll doesn’t think like me. It felt threatened by two women who named their clever design for a roll-up shoe “Footzyrolls.” In November, Tootsie Roll sued them, alleging likelihood of confusion and trademark dilution (this is a claim that people who use a mark that’s similar or the same as a famous mark, even for entirely different products, weaken the famous mark and should be blocked from using it).

While Tootsie Roll’s dilution claim may be sound, its likelihood of confusion claim seems like a stretch. This case might also be springboard for case law for the relatively new defense of trademark bullying —a claim that a big trademark owner is using litigation or threats unfairly to overextend its trademark rights. Since the case has just been filed, though, we can only wait to see how Footzyroll will respond.

This case makes me wonder, did Tootsie Roll give a license to 69 Boyz for their mid-90s rap song “Tootsee Roll?” It seems to me that song could do more harm to the brand than these shoes.

Taste the Rainbow, Minus a Few Colors

Overseas, there’s been a long-lasting battle between Nestlé and Cadbury over the color purple. In the UK, as in the U.S., a color is eligible for trademark registration if the public associates the color with the product and registering that color won’t limit competition. (Although, if you’ve been following the Louboutin v. Yves Saint Laurent high heel case, you know that color trademark registrants in the U.S. are walking on eggshells.)

In 2008, the British Intellectual Property Office registered the shade of purple of Cadbury’s chocolate bar wrappers. Nestlé opposed the registration because, according to Nestlé, the color doesn’t distinguish Cadbury, and everybody should be able to use it. In November, the British IP Office sided with Cadbury, saying that, at least for chocolate bars and hot chocolate, people associate that particular purple with Cadbury, so Cadbury could keep its registration. With this win, maybe Cadbury will try to register the shade of yellow in the middle of its crème eggs?

Cadbury and Nestlé aren’t the only chocolatiers fighting about wrapper shades. Last year, Hershey sued Mars for trademark infringement over its use of the shade orange on Reese’s products. Hershey dropped the suit in May.

Breaking Up Isn’t Hard to Do

Hershey has another trademark challenge on its plate, for this:

Hershey bar configuration

Recognize it? It’s the shape of the classic Hershey’s milk chocolate bar. Hershey has been using this design since 1968. In 2009, Hershey filed a trademark application for the design of the candy bar. Hershey already has a trademark registration for the design with the word “HERSHEY’S” imprinted on each little rectangle; it’s now trying to get a registration for the shape alone without the word. (Apparently, Hershey was bothered by a brownie pan design.)

The PTO rejected Hershey’s application, arguing that the shape is functional—because, like many candy bars, it can be broken into bite-sized pieces—and that the shape had not become distinctive over time.

Hershey’s brief filed with the TTAB focuses on the specifics of the design—the particular number of small pieces and the specific dimensions—while the examining attorney’s brief sees the functional aspects more broadly—a flat, rectangular-shaped bar that’s easy to break apart. The Trademark Trial and Appeal Board (TTAB) held a hearing on this case today, which I attended. I’ll give you my initial impressions of the hearing in a separate post.

Will the trademark owners celebrate with a sugar rush, or is their chocolate bittersweet? Check back for updates! For now, I’m signing off – I’m hungry!