Several years ago, Hershey filed a trademark application seeking to protect the shape of its famous Hershey bar.
The application describes it as “a configuration of a candy bar that consists of 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.”
The Examining Attorney at the Trademark Office denied the application, stating that the configuration was “functional” and designed to help the consumer break it into smaller pieces (functionality is covered by patents, not trademarks). A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. So sayeth the Trademark Manual of Examining Procedures (TMEP)
Hershey filed an appeal to the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. The Board reversed the Examiner’s initial decision and granted the trademark application. The Board did agree with the Examining Attorney that “scoring or segmenting candy bars, in and of itself, serves a useful function to enable the consumer to break the candy bar into smaller pieces for consumption.” However, it also found that the bar design also contained non-functional elements.
The Board ultimately concluded, “When the significance of design of the recessed rectangles with a raised border is balanced against the rectangular shape including segments, we find that the mark as a whole is not essentially functional. The prominent decorative recessed rectangle and raised border design reduces the degree of utility present in the overall design of the mark so as to remove it from the category of functional…”
As you can see, the opinion of the Examining Attorney is not always the final word on trademark eligibility. Persistence like Hershey’s can pay off.
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If you need help to file a trademark application or are having trouble getting your trademark application approved, or know someone that can use my help; please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.
– Ex astris, scientia –
I am and avid amateur astronomer and intellectual property attorney. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +