It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:
Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.
Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:
After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.
But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.
The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.
So, after a little interpretation and modification by the Board, the registration issued with these express limitations:
“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”
“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”
Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.
Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?
Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.
Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.