Chocolate wars: the shape of things to come?

By Peter E. Morgan, Esq.

If claiming a trademark is all about protecting a brand, something that signifies the source or identity of your product in the marketplace, shouldn’t you be able to trademark a distinctive shape as much as you can trademark a distinctive name?

The answer is that you can.  In fact, you can trademark quite a variety of things that distinctively brand your product—a sound (the NBC chimes, for example); a color (the red soles on Christian Louboutin’s pumps so coveted by Sex in the City’s Carrie Bradshaw, not to mention Lady Gaga); a scent, a costume, a texture (more on these in future postings); and, not unsurprisingly, a shape.

Perhaps the most famous example of a distinctive shape is bottle designer Earl R. Dean’s 1915 design for what Coca Cola likes to call the "contour bottle," known to some as the "hobble skirt" bottle (after the skirts of the early 1900s gathered below the knees and said to make wearers hobble).  Many Apple products certainly have a shape all their own—or is it?  Apple and Samsung have been slugging it out in court for years now over the shape of their overlapping products.  Apple claims that, in order not to infringe upon its iPad design, Samsung needs to make a tablet with a "cluttered appearance": perhaps the issue is, as Thomas Baekdal cleverly put it in his 2011 baekdal.com article, "Apple never designed the iPad – they undesigned it."

The latest round of the shape battles comes in Europe, where the United Kingdom’s Intellectual Property Office recently granted victory to Cadbury over Nestlé, ruling that Nestlé’s distinctive (ah, but now I am taking sides) four-fingered shape of the Kit Kat bar was actually, well, more functional than distinctive (give me a break!); and if a characteristic is predominantly functional, it cannot serve as a trademark (which is why Harley-Davidson eventually failed in its bid to trademark the sound of its motorcycle engines—"Harley-Davidson Quits Trying to Hog Sound," the LA Times reported back in June, 2000).

Ironically, Nestlé had recently achieved exactly the opposite result in the European Union, where the board of appeal of the Community Trademark Office ruled in favor of Nestlé and dismissed Cadbury’s argument that the four-fingered shape did not distinguish Kit Kat from its rivals.  Funnily enough, the result is that Nestlé’s Kit Kat shape trademark is currently valid throughout the member states of the EU (which includes Britain) but invalid in Britain.  Of course, Nestlé can appeal the British decision and no doubt will (to the Easter Bunny perhaps?).

The Cadbury-Nestlé dispute is somewhat reminiscent of the Hershey case in the US, where in June, 2012, the Trademark Trial and Appeal Board finally permitted Hershey, over the objections of the Examining Attorney, to register its four-by-three, rectangular, recessed-panel-raised-border chocolate bar configuration, determining that it was finally more aesthetic than functional and had certainly acquired distinctiveness.  In the words of one reviewer of a brownie pan, the designer of which had shamelessly adopted the Hershey shape for its own product, the Hershey chocolate bar has become "a classic confectionary icon."  (You can read the opinion of TTAB here).

Sweet!