1. What were the major factors used by the board in determining secondary meaning?

2. Why does Hershey’s have to show a secondary meaning to obtain trademark protection?

3. Has the board interpreted the trademark requirements too broadly? Should Congress step in and provide clear statutory guidelines? What guidelines would be fair? What other similar types of product designs might qualify given the standard used by the board? 

The Hershey Chocolate and Confectionery Corporation (Hershey) filed an application with the USPTO for a trademark to protect the product design of its chocolate bar. The application described the configuration of the candy bar as “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 USPTO’s Examining Attorney refused registration on two grounds: (1) that applicant’s pro-posed mark is a functional configuration of the goods, and (2) it consists of a nondistinctive configuration of the goods that does not function as a mark under existing trademark law. Hershey appealed the decision arguing that the candy bar’s configuration had nothing to do with functionality and cited marketing surveys as evidence that a sufficient percentage of the consuming public connected the design with the Hershey product.

The Trademark Trial and Appeal Board ruled in favor of Hershey and reversed the Examiner’s refusal to register the mark. In terms of functionality, the board held that the prominent decorative recessed rectangle and raised border design didn’t fall into the functional category because its sole purpose was as a unique branding design. With respect to secondary meaning, the board pointed to several factors that indicate a secondary meaning has been created. First, in a consumer recognition survey where respondents were shown the “four by three” panel candy bar configuration in the application, 44 percent of participants correctly identified Hershey’s as the maker of the candy bar. That percentage is higher compared to other cases in which survey results were used to establish secondary meaning. Second, Hershey’s offered evidence that it had used the mark for over 40 years and spent $186 million in advertising products embodying the candy bar configuration.

“There is no clear standard as to the amount of evidence necessary for allowing a mark to register as [descriptive with a secondary meaning] . . . [T]he 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. . . .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. 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 [application] display the candy bar configuration prominently.”