Attention Trademark Professors: I Found Next Year’s Trademark Exam Question

You’re welcome in advance.

Williams-Sonoma Brownie Pan

Delicious Hershey Bar

17 Responses to Attention Trademark Professors: I Found Next Year’s Trademark Exam Question

  1. evrenseven says:

    I’m gonna have to go with NOT infringement- the word Hershey’s doesn’t appear anywhere so that’s out. I hope Hershey’s would claim that the segmented chocolate bar is somehow their recognized trademark- let’s say it is trademarked. I would argue that the segmented aspect adds function: it makes the chocolate bar easy to divide evenly. Stranger arguments have worked: a round thermostat was found to be functional because people with arthritis have an easier time operating it.

    Sorry dude too easy.

  2. Christopher Harbin says:

    Pretty solid analysis. Short answer question then? I think you are right about the segmentation being functional but the border within each segment combined with the writing makes it a closer call. Both of those seem like non-functional trademark elements. Hershey has sued W-S for TM infringement on the brownie pan — I’d be interested to see the different consumer surveys they do.

    • evrenseven says:

      I was under the impression (at least my Professor put me under the impression) that surveys are very difficult to get admitted into evidence, but I don’t see any other way since the whole case turns on recognition by the target consumer demographic. I can see how this would be problematic, because the way the question was framed would determine the result. I suppose there would have to be an 803 hearing where everyone agreed on the questions to be asked, who to ask, etc.

      If I were a professor: I’d require a “real” answer portion; i.e. “tell me what would happen in the real world if Hershey sued W-S.” The answer would be that Hershey would be ridiculed in the press for filing an absurd lawsuit and it would blow up in their faces. I’ve been emailing my old professors to include such questions. No luck. They’re still hell bent on teaching The Rule in Shelley’s Case.

    • ScottC says:

      There are also the same number of rectangular segments which I think plays in Hershey’s favor. Not sure how close that font on the tin is to the Hershey font, but I think the borders, possible font similarity, and the same number of segments gives this claim some legs. In my mind it’s obvious WS was trying to create a tin that looks like a Hershey bar. They could have made a segmented tin without making it so similar to the Hershey bar.

      • Christopher Harbin says:

        Absolutely, I was just writing the same thing up as you were posting this. Totally agree. The font appears pretty close.

  3. Christopher Harbin says:

    Consumer surveys are often admitted as evidence of actual confusion. Not sure what your prof was doing there.

  4. blueollie says:

    Ok, here is a non-lawyer question: if the aspect is functional and the company wants to make some claim of exclusivity, then they are talking a patent (which they have to file) and not a trademark, right?

    • Christopher Harbin says:

      Yes exactly, they’d need a patent. Functional features of a design cannot be trademarked. Good examples are the round thermostat Evren noted or even the square pillow shape of shredded wheat cereal — it’s cheaper to produce square shaped pillows and therefore the shape is functional.

    • evrenseven says:

      Yup. A lot of times, after a patent expires, people will attempt to continue their exclusivity by claiming that the shape of the thing is recognized as a certain company’s trademark. Doesn’t work.

      Also, sometimes a patent fails to issue for whatever reason, so the company will claim a trademark. It’s almost certainly damning evidence against your trademark if you have argued in the past that it’s so functional that it deserves a patent.

      Fun stuff. So who wants to hire me as a TM associate?

  5. Jay says:

    Are we discussing the law in the US only and just trademarks, or do we include the rest of the world and other types of IP? I haven’t checked OHIM, but I wouldn’t be surprised if there are several Community Designs for various Hershey’s bars (probably a US design patent or two as well). How enforceable any registered CDs would be is another matter, but they’re cheap and easy to file and, if done correctly, can protect entire product shapes.

    The shape of Hershey’s bars may have attained acquired distinctiveness, too, depending on who you ask, and despite that numerous chocolate bars from other traders are segmented similarly. On the other hand, Hershey’s bars come in various sizes and configurations.

    I dunno… I don’t see TM infringement here, but there’s a chance of trading on one’s goodwill argument, yet a chocolate bar and a baking tin are two different things. Now if there was already a Hershey’s baking tin out there that looked just like this one…

  6. Christopher Harbin says:

    I think any US design patents would have been expired many moons ago. They’ve used that shape for more than 15 years so those are likely out.

    The baking tin / chocolate bar distinction wouldn’t be a clear bar to infringement / dilution. TM infringement goes to whether consumers would be likely to be confused as to the source of the goods. I could see it going either way. If the product is found only in W-S stores, perhaps it’s less likely.

    Hershey won a dilution suit recently where a court find that an advertisement for a moving company infringed the company’s famous mark.

    Personally, I think Hershey probably wins this badboy. I think it’s pretty clear that W-S intended to trade on the goodwill of Hershey in the brownie pan. Given that trademark infringement also protects against confusion as to affiliation and sponsorship in addition to source of goods origination, I feel pretty good about Hershey’s chances.

    • KWW says:

      But have you determined what protectable interest has been infringed or diluted? Confusion, substantial similarity, whatever – doesn’t mean anything without a protectable right. Hershey would have to prove non-functionality and secondary meaning in the layout of the bar for TM protection. Perhaps they could, but I seriously doubt it.

      I say W-S wins in real life, but you probably still get an “A” for a nice argument to the contrary.

      And here’s a hint: Click the link below, click Trademark Document Retrieval, and read the most recent office action.

      • Christopher Harbin says:

        Good point, and nice find.

        “Registration is refused because the applied-for mark, which consists of a three-dimensional configuration of the goods, appears to be a functional design for such goods.”

        Interestingly, in the response to the refusal of registration, the evidence used to support secondary meaning is the W-S Brownie Tin.

        • KWW says:

          yeah – that was pretty funny about the pan. Your hypo might not be a hypo if the application matures into a registration.

          Hershey did a nice job responding – especially using the Examining Attorney’s extensive research against him.

          Do you think it would have been smarter for Hershey to have sought registration for a single square from the bar? That was my thought. Would get around functionality, but you’d still have secondary meaning to deal with.

  7. Deraj says:

    Does the fact that other chocolate bar companies use similar designs come into account? I’m specifically thinking of the Carmello candy bars that are similarly segmented.

    • MikeZ says:

      Well I think the fact that Cadbury is manufactured by Hershey (in the US at least) might make that example moot.

  8. […] law: no, it isn’t as dry as it sounds. Here is what I learned: an aspect of a product that is functional cannot be trademarked though one […]

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