TTAB reverses refusal to register shape of Hershey’s chocolate bar

In In re Hershey Chocolate and Confectionary Corporation (Serial No 77809223, June 28 2012), the Trademark Trial and Appeal Board (TTAB) has reversed an examiner’s decision that the shape of Hershey’s chocolate bar was not registrable because it was functional and was not distinctive.

Hershey applied to register the shape of its chocolate bar, depicted below, described as “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 examiner’s first reason for rejection was that the scoring was functional because it created the ability to break the product into proper sized pieces; the examiner pointed to a utility patent that Hershey had obtained for the design. 

The TTAB first pointed out the Federal Circuit’s holding that “[w]henever a proposed mark includes both functional and non-functional features... the critical question is the degree of utility present in the overall design of the mark” (In re Becton, Dickinson and Co (675 F3d 1368, 102 USPQ2d 1372, 1376 (Fed Cir. 2012)). The TTAB agreed that the scoring, as well as the “size, number and arrangement of the segments”, were functional. However, it then pointed out that the mark was not merely composed of the scoring and resulting segments, but also had other distinctive elements - “namely, the 12 recessed rectangles with a raised border design in a four by three format”. Based on these additional features, it found that the mark was not essentially functional.

The next reason for rejection by the examiner was that the mark was not inherently distinctive and had not acquired distinctiveness. The TTAB pointed out that, for a product shape, the applicant “faces a heavy burden in cases such as this where [the] applicant is attempting to establish the distinctiveness of a product design”.

The TTAB pointed to a survey that the applicant had supplied which showed recognition of the design by approximately 42% (after controls) of purchasers of chocolate purchasers who also intended to purchase chocolate again. The TTAB found that the survey alone did not meet the standard for showing acquired distinctiveness. However, Hershey also submitted a declaration showing sales and advertising expenditures, including sales of over $4 billion for the period 1998 to 2010 and adverting expenditures of $186 million since 1986. Based on the combination of these facts, the TTAB found the shape had acquired distinctiveness.

Ethan Horwitz, King & Spalding, New York