Shape Suddenly Matters

by Greenberg Glusker Fields Claman & Machtinger LLP

As anyone in the candy industry will attest, many factors go into the making of a hit product.  First and foremost, it better taste good.  Having a great slogan also helps, as will having a celebrity endorser like Bart “Nobody better lay a finger on my Butterfinger” Simpson.  And if you have any doubts about the importance of packaging, ask Mars and Hershey how much they spent in legal fees in 2011 fighting over the right to use the color orange on a wrapper.

But how critical is the shape of a confectionary delight to its success?  For some goodies (think gummi bears), the answer is obvious.  Other treats, not so much. 

If you have created a particular shape, feature or design that is an integral part of your candy’s success and want to exclude others from using it, a recent decision from United States Patent and Trademark Office offers new hope. 

Hershey Scores A Victory

Hershey Chocolate and Confectionary Corporation applied to the PTO seeking a federal registration protecting the design and configuration (i.e., the “trade dress”) of its classic milk chocolate bar.  The bar has the appearance of twelve rectangles of equal shape joined together.  Each rectangle is recessed with a raised border and has the name HERSHEY’S prominently stamped in the center.  Scoring separates the rectangles.  The overall illusion is of twelve miniature candy bars with a common base. 

The problem facing Hershey is that scoring is a common trait of many candy bars.  Neuhaus, for example, makes a chocolate bar that is scored so that the effect is of five connected rectangles.  Scoring makes the bars easier to break into pieces to eat or to be shared.  For this reason, the initial PTO examiner rejected Hershey’s design as functional.  Under the functionality doctrine, trademark rights do not attach to a useful component.  If they did, a producer could permanently monopolize a feature that its competitors need to be able to use to compete effectively.  Anyone seeking an exclusive right to a useful feature needs to get a patent, which unlike a trademark, is of a limited duration.

Not easily dissuaded, Hershey appealed the rejection on grounds the examiner’s focus was too narrow; he needed to look at the overall design and not focus so much on the scoring feature.  A panel of appellate judges agreed.  Even though scoring was unquestionably functional, the panel found that Hershey’s raised borders and recessed design “decorate and embellish what otherwise would be a simple rectangular shape with a four by three pattern.”  These additional features reduced were enough to render the design non-functional.  The panel also found that Hershey’s design had acquired distinctiveness (another requirement for trade dress protection) because 42% of the consumers participating in a survey recognized the design as a Hershey-branded product.

What This Means To The Candy Industry

Although the decision is not citable as legal precedent, the opinion is nevertheless significant.  Traditionally, trade dress protection was for packaging rather than the product itself, because one of the fundamental goals of trademark law is to prevent consumer confusion and consumers see the packaging before the product.  For example, a New York federal court in 2002 found that the packaging for M&Ms candies was protectable trade dress.  Trade dress rights that attach to the goods themselves are less common.  

Typically, it does not take much for a product design or configuration to be deemed functional.  If, for example, a feature came about because it reduced or simplified manufacturing costs, that can be enough to take it out of the realm of trademark protection.  Similarly, an aesthetic component may be deemed functional.  A federal appeals court in California, for example, once found that the pattern on a china plate was functional because the design was the main selling point of the plate. 

Given functionality’s low threshold, the panel’s willingness to protect Hershey’s design is pretty cutting edge and indicates a trend away from the doctrine.  Other candy makers hopeful of securing rights for their designs may find examiners to be more receptive in the post-Hershey era, and there are pre-application steps one can take that increase the likelihood of a finding of non-functionality.  Conversely, anyone wanting to use a particular design should make sure no one else is using it or risk an infringement suit.  Either way, shape just got a lot a more important.

As published in Candy Industry


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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