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.”
However, the Trademark Office Examining Attorney denied the proposed trademark, finding that the configuration was “functional” and designed to help the consumer break it into smaller pieces. 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.
Earlier this month, U.S. Patent and Trademark Office Trademark Trial and Appeal Board reversed the agency’s initial decision and granted the trademark application. The Board agreed 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 this case highlights, the opinion of the Examining Attorney is not always the final word on trademark eligibility. Here, Hershey’s persistence certainly paid off and will continue to do so down the road.