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Hershey Bars and Functional Trademarks

When looking at this photo, does any famous product come to mind? If you guessed Hershey’s chocolate bar, then you envisioned exactly what Hershey Chocolate & Confectionery Corporation is hoping to protect via trademark law. In 2009, Hershey filed a trademark application seeking to register the following trademark, which is described by Hershey 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 who reviewed Hershey’s application denied registration of the proposed trademark. The Examining Attorney stated that the configuration was “functional” and denied registration on the grounds that functional properties are not eligible for federal registration.

What is a “functional trademark?”

“Functional Trademarks”

The term “Functional Trademark” is a bit of a misnomer, because elements that are functional are actually not eligible for trademark protection.

Features or shapes that are considered “functional” are those that have a utilitarian purpose. While there is no one definition of functional, one commonly applied is “a product feature essential to the use or purpose of the article or affects the cost or quality of the article.” Essentially, the property of having wheels on a car or soles on a shoe cannot be a trademark because cars and shoes work more efficiently with these components (as opposed to without them).

Functional features are not eligible for trademark protection for two policy reasons. First, it ensures that competitors can use features that are necessary in order to compete effectively. (Imagine Ford trying to compete with Chevy if Chevy had a trademark on wheels.) Second, functional features covered under patent law. Utility patents cover items that are of general usefulness. Without the ban on trademark functionality, trademark law would be available as a shortcut around this component of patent law.

In order to determine if something is functional, four different factors are considered:

1)    Is there already a utility patent that discloses the utilitarian advantages of the feature?

2)    Has there been advertisement or promotion that flaunts the functional and utilitarian advantages of the design aspect that the owner seeks to register as a trademark?

3)    Are there any adequate alternatives to the feature that would allow the item to function just as effectively? (Note: a feature may be considered “functional” and therefore not eligible for trademark protection even if there are alternatives available in the marketplace.)

4)    Does the feature result from a comparatively simple, cheap, or superior method of manufacturing the article?

Even a psychological value can be functional. For example, the pink color of Pepto-Bismol is considered “functional.” A court held that the color was functional because it was “soothing” to patients, thereby providing a “psychosomatic effect” and “therapeutic value” in treating upset stomachs. Because the color pink was found in a study to make patients more likely to take the medicine and affected them on a psychological level, the court ruled that Pepto’s competitors needed to use that color in order to compete effectively.

Back to the Hershey Bar

In the Hershey’s case, the Examining Attorney reviewing Hershey’s application stated that the configuration of the candy bar was primarily to help break it into bite sized pieces. Since this configuration was a specific utilitarian advantage to the consumer, the overall design was considered functional.

Hershey’s attempted to address the functionality issue by pointing out that manufactured chocolates and candies come in many different sizes and shapes, many of them different from the familiar Hershey Bar configuration. The Examining Attorney was not moved, even though Hershey provided over 225 pages of evidence and affidavits of people in the candy industry claiming that the configuration had no utilitarian advantage and other configurations worked just as well. The Examining Attorney submitted into evidence an expired utility patent (not owned by Hershey’s) for a candy manufacturing process that involved scoring chocolate so that it could be broken into desired shapes and sizes for purposes of eating, sharing, measuring, and cooking.

Hershey’s has appealed and arguments were heard in front of the Trademark Trial and Appeal Board. Hershey’s counsel’s argument focused around the idea that while individual aspects of trade dress might be functional, the combination of all these aspects can create a nonfunctional design. The Examining Attorney argued the opposite, claiming that even if individual aspects of the design aren’t functional, the combination of the elements were functional. Hershey’s is waiting to hear the final outcome of the appeal, along with chocolate lovers around the world.

How Does This Apply to Business Owners?

The functional trademark issue often arises in the context of advertising or marketing language. If you describe some element of your product or service as having a function, that claim can later be used to prevent that element from being protected under trademark law. So, if you make glow-in-the-dark golf balls, and you advertise them as being easier to find in the rough, you will not be able to protect that color as a trademark. Be careful what you say in your advertisements or marketing collateral – you might end up costing yourself some intellectual property rights down the line.

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