In an non-precedential decision issued last week, the Trademark Trial and Appeal Board found the configuration shape of a Hershey candy bar (“The mark is a configuration of a candy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”), which has been used since 1968, is not functional as a whole. The Board therefore reversed the examining attorney’s refusal and then found that Hershey has provided sufficient evidence to demonstrate the design had acquired distinctiveness.
While the Board agreed with the examiner that the scoring of the candy bar is functional -and is a feature used by other candy bar makers – it noted that “applicant is seeking to register a candy bar comprising all of the elements shown in the drawing and in the description of the mark, i.e., “twelve . . . 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..”” In other words, the configuration is more than just scoring but includes the borders and the layout of the scores.
“[E]even if certain features found in applicant’s candy bar design are functional and common to other candy bars, it does not necessarily follow that the overall appearance of applicant’s candy bar configuration is functional.”
The Board had no problem accepting Hershey’s evidence of acquired distinctiveness (Applicant had admitted that the configuration was not inherently distinctive and sought registration under Section 2(f)) which included a survey as well as a declaration regarding the extensive use, sales and advertising number associated with goods bearing the mark. And the Applicant demonstrated its use of “look for” advertising, which can be key in showing acquired distinctiveness of a non-traditional trademark (see UPS brown mark and its use of “What can brown do for you?” as a great example)
Follow up question: Would it be prudent if the USPTO required Applicants of a configuration mark like this one to define the configuration elements they seek to protect with more specificity and/or to disclaim the elements that are not being protected? See the current Louboutin red sole dispute for another mark where the arguable imprecise boundaries of what is claimed and what is protected by the trademark registration matter.
The full opinion of the Board (PDF) is here: http://ttabvue.uspto.gov/ttabvue/ttabvue-77809223-EXA-15.pdf