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.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

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.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

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.

For most of us, video games and candy go together perfectly, but that doesn’t mean they always get along. In fact, last week the “original” video game company, Atari Interactive, sued food and candy behemoth Nestlé in California federal court. What put Atari on tilt? It was Nestlé’s incorporation of the game play, layout, and namesake of Atari’s classic Breakout video game into a KitKat advertising campaign.

I’ll forgive those readers who are not well-versed in classic video games. Not everyone could be as interesting as I am, having built a vintage video game collection that included more than 700 games across the Intellivision, Atari 2600, NES (Nintendo), SNES (Super Nintendo), Sega Genesis, and other platforms—side note to self from 10 years ago, don’t fall for that “we need more space, you never play them, and wouldn’t you rather have money?” argument. Breakout was essentially a single player version of Pong, whose game play screen is shown in the image below:

Image courtesy of Atari Interactive, via its complaint.

If it isn’t obvious from the screenshot, the goal of the game is to eliminate all of the colored blocks in the wall at the top of the screen. The player moves the spaceship at the bottom to bounce back the bouncing ball until breaks all of the breaks in the wall. Once that happens, you move on to the next stage, where you do it again. Exciting, right?

Nestlé had the clever idea to create an advertising campaign based on the Breakout game where, instead of colored bricks, it used KitKat slabs (I believe that’s the culinary term for a KitKat portion). An example of Nestlé’s online advertising was included in the complaint and is reproduced below.

At the moment, the Nestlé television commercial featuring the “game” is still accessible on YouTube at https://youtu.be/gSzT6Gh91zE.

In the complaint (available here), Atari asserts a number of claims including trademark infringement, copyright infringement, false designation of origin, dilution, and unfair competition. Will any of these claims hold up? I’d say the copyright infringement claim has a fair shot. Atari’s claim of incurring actual damages seems like a stretch though. In fact, Nestlé could plausibly argue that the advertisement increased demand for the Breakout game. If you don’t mind a little armchair quarterbacking, maybe some discovery on whether downloads of Breakout games increased shortly after Nestlé ‘scampaign began?

Setting that issue aside, Nestlé seems likely to win in the court of public opinion as the average member of the public is likely to think “what’s the big deal?” Yet in Atari’s defense, the company owns significant rights in numerous, valuable game franchises with extensive merchandising value. I’m never a fan of slippery slope arguments, but there is a reasonable concern here as to the effect of such use on merchandising rights. And with all that as a back drop, I’d say the chances of a quick settlement are high.

In the meantime, I’ll be scouring eBay for some good deals on Atari 2600s.

–Dan Kelly, Attorney

Late last month, Hershey Chocolate and Confectionary Corporation won an appeal at the Trademark Trial and Appeal Board to register the following as a configuration mark for use in connection with candy and chocolate:

The decision (opinion here) is straightforward and not precedential.  It is somewhat interesting in that Hershey had already succeeded in registering a very similar mark (below) although this was not addressed by the Board.

The opinion notes the existence of numerous other segmented candy bar configurations and includes the following examples:

Here’s my question:  what scope of protection will Hershey be afforded when it goes to enforce this mark, if ever?  I’m thinking in particular of the adidas “one stripe buffer” on its three-stripe mark (see here and here for prior commentary and discussion).  The Hershey Bar configuration is 4 x 3.  The second and fourth candy bars above are 4 x 2 and 5 x 3, respectively — each identical to the Hershey Bar in one dimension and only one off in the other.  (Interestingly, the 5 x 3 configuration and the 6 x 4 configuration in some sense contain the entirety of Hershey’s 4 x 3 configuration, although not necessarily the entirety of Hershey’s mark.)  It seems to me that in light of these bars, all of which I assume are made by competitors, Hershey will have a difficult time enforcing its configuration mark against other candy bars that fall outside of a 4 x 3 configuration, unless perhaps other designs are very close on the other elements of the mark.

How about the below?  Assuming that it is junior to the Hershey Bar, does it infringe, or is the Hershey Bar configuration already creeping toward genericide?

You may recall about a year ago I did a post entitled "Delicious Trademarks: Candy Bar Cross-Section Trademarks?" I was reminded of this a couple of weeks ago when I snapped this photo, capturing what I believe to be the same point of sale display that inspired my original post:

A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars’ apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan’s post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you’re wondering, I couldn’t find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it’s not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won’t cut it).

So, to satisfy a court’s hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review. 

In case you’re wondering, I still see no sign that Mars is seeking federal trademark registration of any candy bar cross-section, but just days ago, in a different convenience store, I snapped yet another image of a more recent Snickers point of sale display, this one co-branding with the NFL’s Super Bowl XLV, to be played February 6, 2011, in Cowboys Stadium, located in Arlington, Texas.

Still no trademark application (at least, yet), but this more recent point of sale display actually shows a TM notice positioned next to the cross-section image, indicating Mars does, in fact, view the cross-section as a trademark, see the image below the jump, if you don’t believe me.

Continue Reading Snickers Cross-Section Trademark Notice

Gift Chocolates on any Occassion - Pack of 24 - Snickers Crispy,Crunchy Choclates

A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars’ apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan’s post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you’re wondering, I couldn’t find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it’s not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won’t cut it).

So, to satisfy a court’s hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review.

What about functionality, you ask? Yes, if the depiction of the cross-section is determined to be functional, then it can never serve or be protected as a trademark. What do you think, is it functional? While the taste of the candy bar is clearly functional, the appearance of the cross-section is far less clearly functional. For example, presumably taste would remain unchanged so long as the ingredients remain constant, even with multiple variations on the internal configuration and layering of those ingredients.

There are actually some on-line quizzes you can take to test your visual sweet tooth skills, on Slashfood, here, and The Science Museum of Minnesota’s Thinking Fountain, here. Some are easier than others. Now, to the extent consumers are able to "name" the candy bar associated with the shown cross-section, does that help satisfy all three trademark elements or only the first two? And, to avoid the leading nature of the question (as criticized in a U.K. trademark opposition brought against Mars involving candy bar appearance) would it make sense to first ask respondents whether they are able to determine who put out the candy bar in question by only seeing its cross-section?

On a related note, Mars is currently soliciting video content "starring" Snickers, so perhaps some creative type will accept the assignment, and in the process, author some powerful "look-for" advertising to help Mars acquire and build non-traditional trademark rights in the Snickers cross-section. If I were to accept the assignment, my submission would be to depict nothing but the cross-section of a Snickers candy bar within the non-traditional federally-registered parallelogram shape, but then, I’m a trademark type with only limited creative abilities.

So, can you identify a Snickers bar and distinguish it from others by the cross-section alone?

Do you believe consumers perceive the cross-section as a trademark pointing uniquely to one single brand?