TTAB Reverses Refusal to Register Hershey Bar Product Configuration

In order to attain trademark registration, a product configuration must clear two hurdles: functionality and acquired distinctiveness. [Of course, under Wal-mart v. Samara, a product configuration can never be inherently distinctive.] Hershey managed to clear both hurdles in this appeal from a refusal to register the product configuration shown below for "candy, chocolate." In re Hershey Chocolate and Confectionary Corporation, Serial No. 77809223 (June 28, 2012) [not precedential].


Functionality The applied-for design was narrowly defined by Hershey: "twelve (12) equally-sized recessed panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle." In a perceptive analysis, the Board found that, although certain aspects of the product configuration are functional, the design as a whole is not.

The Board applied the familiar Morton-Norwich factors in assessing functionality:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

(2) advertising by the applicant that touts the utilitarian advantages of the design;

(3) facts pertaining to the availability of alternative designs; and

(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

The Examining Attorney contended that the flat rectangular shape and the "scoring" of the product are functional features that bar registration. He relied on a utility patent claiming a method of scoring candy, and he pointed to third-party candy bars that are flat and segmented.

Hershey argued that the PTO was improperly focusing on a single feature of the proposed mark and not on the design as a whole; that the cited patent neither discloses nor claims features comprising the mark; that Hershey has not touted the utilitarian advantages of its design; that there are many alternatives available; and that its design does not result from a simple or cheaper manufacturing method.

The Board recognized that scoring or segmenting candy bars serves a useful purpose, noting the many examples in the record. But the Board stressed that Hershey "is not seeking to register a segmented rectangular candy bar of no particular design." The Board must weigh all the elements of the design, the functional and the non-functional, in order to determine the Section 2(e)(5) functionality issue. See In re Becton, Dickinson and Company, 102 USPQ2d 1372 (Fed. Cir. 2012) [precedential].

[Hershey's] raised-border rectangles form a prominent part of applicant’s mark. The record shows that candy makers often embellish their candy bars with decorative elements and these raised borders and ridges decorate and embellish what otherwise would be a simple rectangular shape with a four by three pattern. Furthermore, while the record shows an extensive variety of shapes and decorative designs for candy bars, there is no evidence that this particular combination of recessed rectangles with a raised border is used by other candy makers or that the overall design is in any way functional.

The Board therefore found that the proposed mark "as a whole is not essentially functional."



Acquired distinctiveness: An applicant seeking to register a product configuration has a "heavy burden" to prove acquired distinctiveness, but Hershey carried its burden. A blind internet survey [conducted by friend-of-the-blog Robert L. Klein] showed that 42% of the survey participants correctly identified Hershey as the maker of the product design in question, a "significant" number when compared with previous cases.

In addition, Hershey established use of the mark since 1968, sales of over four billion dollars during the period 1998-2010, and millions of dollars in advertising expenditures. Some advertisements displayed the configuration prominently. Evidence of third-party copying of the design for a baking pan suggested an association between Hershey's design and consumer perceptions regarding chocolate bars.

Considering all the evidence, the Board concluded that Hershey had established a prima facie case of acquired distinctiveness that the PTO failed to rebut.

TTABlog comment: CAFC Judge Lynn, who dissented in In re Becton, would agree with the result in this case, although maybe not the Board's "weighing" of the elements of the design to reach that result.

Text Copyright John L. Welch 2012.