Hershey Chocolate and Confectionery Corporation

Trademark Trial and Appeal Board

Jun 28, 2012

No. 77809223 (T.T.A.B. Jun. 28, 2012)

Mailed: June 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hershey Chocolate and Confectionary Corporation
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Serial No. 77809223
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Oral Hearing: December 8, 2011
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Paul C. Llewellyn of Kaye Scholer LLP for applicant.

John Dwyer, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
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Before Cataldo, Mermelstein, and Shaw, Administrative
Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

The Hershey Chocolate and Confectionary Corporation
filed an application to register the following
configuration mark on the Principal Register for goods
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
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identified as “candy; chocolate,” in International Class
30.1

The description of the mark reads as follows: “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.”
The specimen of use provides a photographic view of
the configuration of the goods:

The application is based on an allegation of first use
anywhere and in commerce on December 31, 1968, and contains

1 Application Serial No. 77809223, filed August 20, 2009,
pursuant to Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
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a claim that the mark has acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
The Examining Attorney refused registration under
Section 2(e)(5) of the Trademark Act, 15 U.S.C.
§ 1052(e)(5), on the ground that applicant’s proposed mark
is a functional configuration of the goods. The Examining
Attorney also refused registration on the alternative
ground that, if the proposed mark is not functional, it
nonetheless consists of a nondistinctive configuration of
the goods that does not function as a mark under Trademark
Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051-1052 and 1127,
and has not acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. § 1052(f).
Applicant and the Examining Attorney filed briefs,
including applicant’s reply brief. In addition, applicant
and the Examining Attorney presented arguments at an oral
hearing held before this panel on December 8, 2011.
The Mark and the Goods
Before discussing the merits of the grounds for
refusal, it is important to discuss what exactly applicant
is seeking to register. As for the proposed mark itself,
there is no dispute that it represents a configuration of
the goods, i.e., a candy bar. Accordingly, when
considering the merits of the refusal to register, we must
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consider all elements, including those described in the
description of the mark as well as those shown on the
drawing page.
As to the precise nature of the proposed mark, the
drawing and the description establish that the
configuration of the candy bar is comprised of the
following elements:
1. A rectangular candy bar divided into twelve segments,
2. The segments are equally sized and rectangular in
shape,
3. The segments are in a four by three arrangement, and
4. Each segment is recessed with a raised border design.

Regardless of whether each of the foregoing elements may be
functional or non-functional, it is the overall combination
of these elements that will guide our review of the merits
of the refusals to register.
Functionality
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. Qualitex Co. v. Jacobson Prods. Co., Inc., 514
U.S. 159, 34 USPQ2d 1161, 1163-1164 (1995) (quoting Inwood
Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1,
4 n.10 (1982)). Functional matter cannot receive trademark
protection. At its core, the functionality doctrine serves
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as a balance between trademark and patent law. As the
Supreme Court explained in Qualitex:
The functionality doctrine prevents trademark law,
which seeks to promote competition by protecting a
firm’s reputation, from instead inhibiting legitimate
competition by allowing a producer to control a useful
product feature. It is the province of patent law,
not trademark law, to encourage invention by granting
inventors a monopoly over new product designs or
functions for a limited time, 35 U.S.C. §§ 154, 173,
after which competitors are free to use the
innovation. If a product’s functional features could
be used as trademarks, however, a monopoly over such
features could be obtained without regard to whether
they qualify as patents and could be extended forever
(because trademarks may be renewed in perpetuity).

Qualitex, 34 USPQ2d at 1163.
In making our determination as to whether a proposed
mark is functional, the following four factors are
considered:
(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.

In re Morton-Norwich Prods, Inc., 671 F.2d 1332, 213 USPQ
9, 15-16 (CCPA 1982); see also, Valu Eng’g Inc. v. Rexnord
Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir.
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2002). Upon consideration of these factors, our
determination of functionality is ultimately a question of
fact, and depends on the totality of the evidence presented
in each particular case. Valu Eng’g, 61 USPQ2d at 1424; In
re Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997); see
also, TMEP § 1202.02(a)(iv) (8th ed. 2011).
Furthermore, and particularly relevant to this
proceeding, our primary reviewing court has instructed 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 F.3d 1368, 102
USPQ2d 1372, 1376 (Fed. Cir. 2012).
The Examining Attorney argues that the flat
rectangular shape and the “scoring” of applicant’s candy
bar into smaller pieces represent functional features which
constitute an absolute bar to registration. Examining
Attorney’s Br. at 5. The Examining Attorney relies in part
on a utility patent claiming a method of scoring candy so
that it may be more easily broken into smaller pieces. Id.
at 6. The Examining Attorney also points to numerous
articles touting the utility of applicant’s segmented candy
bars for sharing, as well as to flat and segmented candy
bar shapes produced by third parties. Id. at 8-12.
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Finally, the Examining Attorney discounts applicant’s
affidavit claiming that its candy bar moulds are more
expensive to make compared to other shapes by arguing that
the affidavit addresses only one feature of the design, not
the other elements of the candy bar configuration such as
the flat rectangular shape. Id. at 13-14.
Applicant argues that the Examining Attorney
improperly focuses on only a single feature of the mark,
i.e., the scoring, and ignores the other elements of the
mark comprising the configuration as a whole. Applicant’s
Br. at 12. Further, applicant argues that the cited patent
neither claims nor discloses features comprising
applicant’s configuration mark. Id. at 15. Applicant also
argues that it has not promoted any utilitarian advantages
of the design and that numerous alternative designs are
available to competitors. Id. at 16-19. Finally,
applicant argues that its design is not the result of a
simpler or cheaper method of manufacture. Id. at 19.
There is no doubt 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. Numerous reviews of applicant’s candy bars,
as well as reviews of other candy bars, point out the
utility of segments for dividing chocolate for consumption.
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Furthermore, the record submitted by both parties is
replete with examples of candy bars with differing segment
patterns. Candy bars are comprised of squares, rectangles,
triangles, ovals, and the like. These segments are often
arranged in a variety of common symmetrical patterns,
including, one by six, two by four, three by ten, four by
six, etc. The record shows dozens of numerical
combinations of segments in a variety of shapes and
patterns such as the following samples submitted by the
applicant.

Applicant’s May 3, 2010 Response to Office Action at 8-18.
The record even shows that in some cases the size and
weight of the candy bar segments correspond to common
weights and measures used in cooking. Examining Attorney’s
December 28, 2010 Final Office Action at 47. Thus, the
size, number, and arrangement of the segments in a candy
bar, while varying greatly, nevertheless are likely to be a
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function of the overall size of the bar relative to the
desired size of an individual serving of chocolate. Simply
put, candy bar segmentation is a functional feature of such
goods.
Similarly, the record shows numerous examples of
rectangular candy bars and there is no doubt that many
candy bars, if not most, have a rectangular shape.
But applicant is not seeking to register a segmented
rectangular candy bar of no particular design. Rather,
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.” Therefore, while there is no question
that a rectangular shape or segments by themselves are
functional for candy bars and cannot be registered, this
alone does not resolve the issue of functionality. We must
balance these functional elements against any non-
functional elements to determine whether the mark as a
whole is essentially functional. In re Becton, 102 USPQ2d
at 1376.
In light of the need to balance all of the elements in
the mark, we disagree with the Examining Attorney’s focus
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on the rectangular shape of applicant’s candy bar and its
segments as dispositive of the issue of functionality.
Focusing on the segments, and to a lesser degree on the
rectangular shape, does not give an understanding of the
“degree of utility present in the overall design of the
mark.” In re Becton, 102 USPQ2d at 1376. This analysis
ignores the other elements of applicant’s mark, namely, the
twelve recessed rectangles with a raised border design in a
four by three format. These 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.
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
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reduces the degree of utility present in the overall design
of the mark so as to remove it from the category of
functional under Section 2(e)(5). We recognize that
segmentation and rectangular shapes are extremely common in
the candy field, but registration of configuration marks is
not limited to marks where the design has no connection
with the function or purpose of the goods. Such a rule, as
the CCPA noted, would lead to the impossible situation
where “the design of a particular article would be
protectable as a trademark only where the design was
useless, that is, wholly unrelated to the function of the
article.” Morton-Norwich, 213 USPQ at 13. Thus, 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.
Accordingly, we conclude that the candy bar
configuration mark, considered in its entirety, is not
functional.
Acquired Distinctiveness
The Examining Attorney also has finally refused
registration under Trademark Act Sections 1, 2, and 45 on
the ground that the candy bar design sought to be
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registered is not inherently distinctive and that applicant
has not established acquired distinctiveness.
Applicant admits that the candy bar configuration mark
is not inherently distinctive by seeking registration under
Section 2(f). In re MGA Entm’t, Inc., 84 USPQ2d 1743, 1747
(TTAB 2007) (application under Section 2(f) is a concession
that the mark is not inherently distinctive). Thus, the
issue is whether the relevant consumers view the
configuration as a trademark. On this issue, it is
applicant’s burden to prove that the proposed mark has
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant.”).
There is no clear standard as to the amount of
evidence necessary for allowing a mark to register under
Section 2(f); indeed, as our primary reviewing court noted:
the statute is silent as to the weight of evidence
required for a showing under Section 2(f) except for
the suggestion that substantially exclusive use for a
period of five years immediately preceding filing of
an application may be considered prima facie evidence.

As observed by our predecessor court, the exact kind
and amount of evidence necessarily depends on the
circumstances of the particular case, and Congress has
chosen to leave the exact degree of proof necessary to
qualify a mark for registration to the judgment of the
Patent Office and the courts. In general, the greater
the degree of descriptiveness the term has, the
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heavier the burden to prove it has attained secondary
meaning.

Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988). Nevertheless,
it has been observed that an applicant faces a heavy burden
in cases such as this where applicant is attempting to
establish the distinctiveness of a product design. Id.;
see also, In re Ennco Display Sys. Inc., 56 USPQ2d 1279,
1284 (TTAB 2000).
Ultimately, to establish acquired distinctiveness, an
applicant must show that the product configuration sought
to be registered is perceived by consumers as not just the
product but, rather, that the design identifies the
producer or source of the product. This may be shown by
direct and/or circumstantial evidence. Direct evidence
includes actual testimony, declarations or surveys of
consumers as to their state of mind. Circumstantial
evidence, on the other hand, is evidence from which
consumer association might be inferred, such as years of
use, prior registrations, extensive amount of sales and
advertising, unsolicited media coverage, and any similar
evidence showing wide exposure of the mark to consumers.
See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 15:30 (4th ed. Updated 2010).
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After careful consideration of the evidence submitted
in this case and the arguments made, we are persuaded that
applicant has, at least, made a prima facie case that its
mark has acquired distinctiveness and the Examining
Attorney has not sufficiently rebutted this showing.
Applicant's direct evidence that the candy bar design
has acquired distinctiveness comprises a consumer
recognition survey conducted by Robert L. Klein. Applicant
commissioned a blind internet survey of individuals (over
18 years old) who “have both purchased a chocolate bar in
the past six months and also plan on purchasing a chocolate
bar in the next six months.” (Emphasis in original).
Klein Survey at 3. The survey respondents were shown the
“four by three” panel candy bar configuration in the
application. A control group also was used and was shown a
“one by three panel” candy bar design. Respondents were
first asked if they associated the “appearance or design of
the product with one or more particular companies.” Id. at
4. If the respondents answered affirmatively, they next
were asked which company or companies they associated with
the design and appearance of the product. Id. After
adjusting for the control group, approximately 42% of the
survey participants correctly identified applicant as the
maker of the candy bar. Id. at 8. These percentages are
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significant when compared to previous cases where secondary
meaning or acquired distinctiveness in a mark has been
established. Cf., In re Owens-Corning Fiberglas Corp., 774
F.2d 116, 227 USPQ 417, 424 (survey showing 41% and 50%
recognition, submitted together, found sufficient to
establish acquired distinctiveness of trade dress);
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d
786, 217 USPQ 988 (5th Cir. 1983) (23-28% correct responses
sufficient to establish secondary meaning); and In re
Jockey Int’l, Inc., 192 USPQ 579, 581 (TTAB 1976) (survey
showing 51.6% recognition found sufficient to establish
acquired distinctiveness for trade dress). We do not find
these survey results, alone, to be conclusive in
establishing that the candy bar design has acquired
distinctiveness; however, the survey is one piece of
persuasive evidence that is considered in conjunction with
the entire record before us.
As for circumstantial evidence, applicant has
submitted a declaration from Lois B. Duquette, applicant’s
Assistant Secretary, as to the length of use of the mark,
sales revenues of the goods bearing the mark, and
advertising expenditures to promote goods bearing the mark.
Applicant has been using the mark since 1968, over 40
years. For the twelve year period from 1998 to 2010, sales
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of candy products embodying the candy bar configuration
exceeded four billion dollars. Additionally, as of 1986,
applicant spent more than 186 million dollars to advertise
products embodying the candy bar configuration. While it
is well settled that sales and advertising expenditures
alone do not always amount to a finding of acquired
distinctiveness, these are compelling numbers, particularly
when viewed in the larger context of applicant’s evidence
of acquired distinctiveness. Cf. In re Boston Beer Co.,
L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
Similarly, while there is no evidence that applicant
has promoted the candy bar configuration via “look for”
advertisements, we note that at least some of the
advertisements submitted with the Duquette declaration
display the candy bar configuration prominently. One such
example from applicant’s web site appears below.
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Duquette declaration, exh. A at 14.
In support of acquired distinctiveness, applicant also
submitted evidence of purported attempts by a third party
to copy the design of the candy bar configuration for the
shape of the brownie baking pan shown below. The term
“CHOCOLATE” appears in each rectangle instead of
“HERSHEY’S.”

Applicant argues that this copying of its candy bar
design for brownie baking pans suggests that the
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configuration has “obtained [] acquired distinctiveness in
the minds of the public.” Applicant’s Br. at 24. We
agree. It is often true that copying of a configuration
mark by third parties may be nothing more than an attempt
to exploit a desirable product feature. See In re Van
Valkenburgh, 97 USPQ2d 1757, 1768 (TTAB 2011), and cases
cited therein. In this case, however, we find it is more
likely that the brownie pan maker choose the “chocolate bar
brownie pan” shape because of its powerful association with
applicant’s chocolate bars in the mind of the consumer.
This suggestion of an association between the applicant’s
candy bar configuration and consumer perceptions regarding
chocolate bars is reinforced by a web site review of the
brownie pan which describes applicant’s candy bar
configuration as “a classic confectionary icon.” Duquette
declaration, exh. D at 1.
Based upon consideration of all the evidence of
record, we conclude that applicant has established a prima
facie case that the candy bar configuration has acquired
distinctiveness within the meaning of Section 2(f) of the
Trademark Act. The evidence and arguments of the Examining
Attorney, taken together, do not rebut that showing.
Decision: The refusal of registration is reversed.