Hershey Thinks Outside the Box (or the Candy Wrapper) in Seeking Trademark Protection for a Product Shape
Written by Susan Neuberger Weller
On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey's request to register the design and shape of a chocolate bar as a trademark on the Principal Register. The design was described as “a configuration of a candy bar that consists of 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 drawing for the mark is set forth below:
The issue in "product configuration" trademark cases is whether the design features sought to be protected are "functional". If the overall design is functional, trademark protection is barred. In this case, the TTAB held that although the rectangular shape of the entire candy bar and the individual rectangular shapes scored within the bar were functional, since they made it more convenient to easily divide the bar into equal pieces, the overall design, when considered in its entirety, was not purely functional. Rather, the Board determined, based on the evidence presented that reflected a wide variety of shapes and decorative designs used for candy bars, that the particular combination of recessed rectangles with a raised border in the Hershey bar was not functional and, therefore, could be protected as a trademark.
The second issue the Board was required to consider was whether the product design had "acquired distinctiveness". Product designs and configurations are not considered "inherently distinctive" as are many other types of trademarks. Thus, in order to be fully protected as a trademark and registered on the Principal Register, Hershey was required to demonstrate that relevant consumers considered the product design to be a source identifier. There is no specific rule or test for establishing that a mark has become distinctive. Evidence can consist of consumer recognition surveys, evidence as to the length of time a mark has been in use, sales revenue of goods bearing the mark, advertising expenditures to promote goods bearing the mark, and evidence that the product configuration was promoted in advertisements as a source indicator. Hershey's submitted all of these types of evidence to meet its burden of proof. In addition, Hershey's also provided evidence that a third party attempted to copy the design of the candy bar to use as the shape of a brownie baking pan. The Board found that all the evidence demonstrated that the design above had acquired distinctiveness and could be registered
Product configuration marks are not new. There are trademark registrations on the Principal Register for many product configurations, such as:
A Coca-Cola bottle 
Reg. No. 3232602
A Perrier bottle 
Reg. No. 1398744
Original Ideas’ barbecue grill 
Reg. No. 3987743
Emerson Electric’s thermostat 
Reg. No. 3195948
and many others.
The Hershey bar configuration has been in use since 1968, yet Hershey did not make any attempt to register the mark as a product configuration until recently. Gaining a competitive edge in any industry, particularly in a slow economy, is essential. As Hershey's demonstrated, it can be beneficial to think creatively and a bit more "out-of-the-box" when it comes to your intellectual property assets. Particularly in a down economy, some may be tempted to copy a successful competitor rather than spend time and money on developing original ideas and creations. Accordingly, companies should carefully consider obtaining protection for the intellectual property assets they currently use and own, whether by trademark, copyright, and/or design patents, and for policing the market to ensure that their valuable properties are not being used by unauthorized third parties. Moreover, there may be licensing opportunities that could provide a revenue stream if appropriate protection has been obtained.
Today, it is a candy bar design. Tomorrow, it could be your existing product’s design. Think about it.
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