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.

Sandwiched between 90 degree days in a Minnesota summer, the idea of Halloween wasn’t on my radar – until I learned about the latest dispute between candy giants Mars and Hershey’s.

Mars and its subsidiary own many well-known candy brands, including M&Ms, Snickers, Twix, Skittles, Life Savers, and others. Not to be outdone, Hershey maintains its own stable of popular brands in addition to Hershey brand, including Kisses, Reese’s, Twizzlers, and others. Even though the parties are major competitors, it appears the two bonbon behemoths don’t frequently compete in proceedings at the Trademark Trial and Appeal Board, except for extensions of time to oppose and a handful of oppositions settled quickly.

In light of the history, Hershey may have been spooked when it first learned that Mars filed a Notice of Opposition last month against Hershey new application to register the mark SCARY in connection with “Candy.” The Notice of Opposition (available here) claims that the term SCARY is “highly descriptive” and “generic” in connection with candy, especially candy sold or promoted during the Halloween season. Mars alleges that “SCARY is like ‘HAUNTED’ ‘SPOOKY’ or ‘BOO,’ only SCARY is more frequently used.” In light of this, Mars alleges that “SCARY is no more capable of being a trademark for candy than is TRICK OR TREAT.”

Mars’s arguments have some bite. I don’t recall the specific brands from my candy hauls on the streets of my Iowa hometown, but I remember a lot of Halloween imagery: ghosts, pumpkins, monsters, and others. Yet I’m not sold on the idea that SCARY is descriptive, let alone generic, for candy. To be descriptive, a term must immediately describe “an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (according to the Trademark Manual of Examining Procedure). Scary doesn’t seem like it describes the candy, but instead merely the marketing used to advertise the candy. Establishing that SCARY is generic is even more difficult, because “generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services” (TMEP). If there is a genus specifically for candy marketed for trick or treating, the genus is probably “Halloween Candy,” not “Scary Candy.”

A claim that might have a better chance of success, however, is that the term SCARY does not function as a trademark, but instead is understood by consumers as conveying information about the goods. Consumers might perceive the term scary as indicating the candy is meant for use in the Halloween season, or that the term SCARY is somehow ornamental or informational. Unfortunately, Hershey filed the application on an intent-to-use basis, so Hershey has not yet used the mark. As a result, it is difficult to evaluate whether Hershey’s use constitutes use as a trademark.

While Mars has a colorable claim, I don’t see SCARY as crossing the line into the descriptive category of the marks. I think SCARY is likely used by a number of third-parties, but I think this means that consumers perceive SCARY (and similar variations) as being a weak designation of source, but not necessarily descriptive. Notwithstanding, Mars has legitimate concerns. If Hershey obtains a registration, Hershey could take a broad view of the scope of its rights, seeking to prevent others from using SCARY or similar terms, even against third-parties who may be making a non-trademark use in connection with Halloween candy. For example, Mars uses the term SPOOKY on the candy below:

Mars might be fighting to protect itself and others in the industry from the potential of Hershey wielding a SCARY registration as a sword to unfairly inhibit competitors from using certain Halloween imagery. This goal seems reasonable under the circumstances, even if the claim of “mere descriptiveness” has some weaknesses. It would not be the first time a trademark owner relied on a registration to push competitors away from non-infringing uses.

Notwithstanding Mars’s good intentions, it might be difficult for Mars to claim a “white hat” in this battle, at least with a straight face. Mars owns its own registration for SPOOKY SHAPES for “candy” (disclaiming SHAPES). With that in mind, Mars might be wishing it hadn’t alleged that “SCARY is like . . . SPOOKY” in the Notice of Opposition. If SCARY is like SPOOKY, then it is hard to see why Mars’s use of SPOOKY is a legitimate trademark use, but Hershey’s use of SCARY is not. While the statement doesn’t prevent Mars from prevailing, it does suggest that the purported harm to the industry may be exaggerated. But who knows, perhaps Mars has a few tricks up its sleeve.

The short answer is, when it’s not false or misleading about the product inside the package.

This past weekend, my daughter and I found ourselves in Costco, picking up some provisions, and this bag of non-provision somehow happened to land in our shopping cart:

BrooksideChocolate

Almost protesting, based on a prior experience with Hershy’s Brookside dark chocolates, I chose instead to simply let it remain in the cart, because someone knew she really wanted them.

What struck me when we got home and I looked at the bag more closely is the honesty of this packaging, there is clearly only fruit flavoring, no actual or real fruit inside these chocolates.

The package struck me because it was in stark contrast to what I remembered from my prior experience that almost had me protesting this Brookside purchase, so I decided to do a little digging and test my memory, sure enough I was on to something.

What am I saying? Well, the first time I encountered Hershey’s Brookside dark chocolate brand, I recall the packaging looked something more like this, with a load of berries adorning the package:

brooksidepackage

And, in my initial encounter and experience with the Brookside brand, I recall actually believing that what I’d find in the bag would be chocolate covered fruit, apparently and thankfully I’m not the only one who ended up feeling duped.

While I was frustrated for not reading the fine print on the packaging, which likely would have highlighted the disconnect with the whole fruit images, for impulse products, thankfully we have competitors like Mars who will bring NAD complaints to keep competitors honest.

BrooksideAcaiPomGojiThe above 2014 packaging also shows whole fruit as the one I remembered, but it was an improvement of the previous packaging that omitted any prominent use of the word “Flavors,” still the NAD rightfully condemned it as misleading, which presumably is what led to the package at the top of this post — bearing no fruit, with prominent mentions of flavors — the one that we purchased at Costco this past weekend.

Coming on the heels of my Fuse experience in Miami, where authenticity, transparency, and honesty in brands are regularly praised, I’m left wondering why it took Hershey’s this long to get it right, and I’m also left wondering how forgiving consumers will be.

The possessive form of the Hershey’s brand dates back to at least as early as 1894, according to U.S. Reg. No. 54,041 — a more than 100 year old trademark registration from 1906.

Last week, Brand New reported on Hershey’s new logo and corporate identity — without the apostrophe and letter “s” at the end:

I’m guessing that the possessive form of the HERSHEY’S trademark will continue to appear on chocolate bars and packaging, since all references to the rebrand seem to focus on the corporate identity, but if others have more information on this point, please feel free to weigh in.

Moreover, so far, there is no record of any trademark filings in the U.S. to match the new truncated look, perhaps also signaling that this look won’t hit packaging, at least in any dominant kind of way.

Here is how AdAge reported the change:

“The new branding will impact all visual aspects of how The Hershey Company presents itself, from consumer communications to websites to the interior design of its office spaces and the look of its retail stores,” the company said in a statement. While rooted in a rich heritage, the new corporate brand reflects a modern, approachable look that reflects the company’s openness and transparency as it has grown into a global company.”

Marketing types, if that is the goal, why leave the truncation and elimination of the possessive form to corporate communications, why not take it all the way to packaging? And, do you believe that makes sense as the next logical step, or does the trademark syrup just become too sticky?

Perhaps Hershey’s is merely dipping its toe in the chocolate of the less possessive format?

Given that Hershey’s has more than 150 live U.S. Registrations smooching the possessive form of the brand name (and many multiples of that number outside the U.S., I’m sure), if the truncated un-possessive format were to replace the more than 100 year old Hershey’s format, trademark types, would you feel comfortable advising the brand managers that amendments could be obtained safely without losing all these valuable registrations?

In other words, do you believe that removing the apostrophe and “s” creates a material alteration of the Hershey’s trademark? In the U.S.? What about outside the U.S.?

Would you hedge by having the new corporate identity appear in a trademark sense but in a more subtle way, almost as a corporate signature on the back corner of a packaging label?

There is certainly a lot to think about when an entire worldwide trademark portfolio is already in place — seems to me, this is a perfect opportunity for a graceful collaboration between legal and marketing types.

–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?

Hat tip to Dave Taylor who provided this photo for some discussion:

Looks like a fellow named Mark Reese, currenting Acting Sheriff, is running for Sheriff in Lancaster Country, Pennsylvania, right in Hershey’s backyard.

Do you suppose this Hershey’s trade dress may have inspired the Acting Sheriff’s campaign?

 Your thoughts on whether Hershey’s has a claim?

If so, should they complain?

Jason Voiovich, author of the “State of the Brand” & Vice-President of Marketing for AbleNet, Inc.

It sounds like something I’d get wrong in a game of "Trivial Pursuit".

Name the belated military attempt of King William I to restore his position as monarch over the Belgians. I might have guessed the delicious-sounding "great chocolate war". It sure sounds better than the "Ten Days Campaign", but isn’t nearly as tasty.

But a "great chocolate war" is exactly what’s stirring between candy enemies Hershey Co. and Mars Inc. The former makes the ubiquitous and irresistible Reese’s peanut butter cups. The latter makes Snickers, M&Ms, and Dove chocolates. Also yummy. But the skirmish isn’t over deliciousness, it’s over something much more mundane: Packaging. And none of the lawyers are laughing.

Last week, Hershey’s lawyers went to work, filing a lawsuit claiming Dove peanut butter chocolate "Promise" squares packaging piggybacks on the success of Reese’s by using its orange, brown, and tan color scheme.

See for yourself:

Dove and Reese's packaging

Okay. I consider myself a reasonable person. And I have irrational love for all types of chocolate. But I am having trouble seeing what the heck these guys are talking about. I’ll leave the nitpicking around what the Reese’s IP actually covers to the lawyers, but suffice it to say, what other color would you use in your packaging to communicate "peanut butter"?

Green? That’s "mint". Blue? That’s "milk chocolate". Dove already used a lighter shade of orange and yellow for "caramel". Red? Purple? Those seem weird. The orange Dove uses seems to make sense, is in line with the rest of its packaging scheme (other flavors use other colors in the "swoosh"), and wouldn’t be confused for Reese’s by any reasonable person.

What do I think this is really about?

A few things. First, Hershey and Mars are the two 800-pound gorillas in the candy market. For years, they’ve struggled for the top spot, which Hershey recently lost following Mars’ $23 billion acquisition of gum-maker Wrigley. Lawsuits are one way to drain a competitors coffers and force them to respond on your terms versus focusing on their own business (think Sun Tzu).

Second, Mars should have seen it coming. As Hershey worked to make some (necessary) cost cutting moves – including closing some plants and using cocoa butter substitutes in some of its products – the PR folks at Dove thought it wise to take advantage of the situation. It’s "made in the USA" and "pure, rich chocolate" messaging certainly were on-target and competitively appropriate. Methinks Hershey is striking back more out of anger and frustration than any real chance of succeeding in court.

But might there be a deeper issue going on? Could Hershey have a secondary motivation? I’ve been on enough creative teams to know what happens when your work is the subject of a lawsuit. It’s not just demoralizing, but puts you on guard as you work on your next campaign. In other words, how willing will you be to step out into bold creative territory when your last campaign landed your client in deposition hell?

Certainly, if you mention this to a creative type, they’ll be the first to tell you they can "shake it off" and they realize that legal tussles are all "part of the game". However, you can’t underestimate the chilling effect legal action has on the creative psyche. I think Hershey knows exactly what they’re doing. I think they’re putting Mars on notice. Step anywhere close to our creative IP at your peril.

And I think it just might work.