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Candy Companies Attempt to Obtain Some Pretty Sweet Trademarks

  • Sep 13 2018

We all remember those Halloween nights when we were allowed to choose our own treats. In the dark, with one hand in the candy bowl and the other on our plastic pumpkins and pillowcases, we attempted to determine which candy to choose. The shape of each piece between our fingers, we could often figure out what we wanted simply by feeling around for each unique shape.

Children aren’t the only ones who recognize the value in identifying candy by shape. The big candy giants have been fighting one another for years to obtain the rights to certain individual shapes.

Nestle loses its Appeal in the EU to Restore its Shape Trademark

This past July, Nestle lost its most recent appeal in the European Union to restore its trademark for the shape of the Kit Kat bar. Mondelez, a company that sells almost identical trapezoidal chocolates, challenged the trademark. However, it is not impossible to receive trademark protection for the shape of food or candy. For example, Hershey’s Kiss’ teardrop shape, the prisms of the Toblerone bar, and the Bugle, which is technically a “tractricoid,” all have active trademarks registered with the U.S. Patent and Trademark Office.

The Difficulty of Receiving Protection for Shapes

This begs the question of what allows for some candy to receive protection for its shape, while others are not permitted the same.  In order to obtain such protection, the applicant must prove that there is “acquired distinctiveness” in the shape.  The USPTO generally makes it more difficult to register product shapes as compared to logos.  Presumably, this is because the USPTO is concerned about awarding exclusive rights as compared to rights for a color, sound, or shape as this would preclude all other products within the same category from using the same.  Applications for shape trademarks generally fail when they are either functional or not sufficiently distinctive.   It is not possible to stop all uses of a configuration mark via a trademark registration.  Typically it is only possible to enforce rights in such a mark when used with products that are related to the product covered by the subject trademark registration. 

Acquired Distinctiveness vs. Mere Function

Hershey, which has dozens of trademarks protecting its logo, attempted to trademark its 12-bar segmentation, claiming that it was also distinctive.  Initially, the U.S. Patent and Trademark Office disagreed, citing Supreme Court case law that found that the mere configuration of a product cannot be registered if it is not sufficiently distinctive.  With respect to this product configuration, the issue revolved around whether the twelve rectangles are functional or if they represent a distinct quality of the bar that is meant to differentiate the design from others. (Hershey’s website invites its consumers to “unwrap a bar, break off a square or two, savor and repeat.”)  After submitting additional evidence of distinctiveness, Hershey was awarded its shape trademark by the Trademark Trial and Appeals Board.

If you have created a new product, a trademark will help you protect it from potential copycatters. Contact us today to discuss how to best protect your intellectual property.

Posted in: Trademarks