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					                                             Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
                                                                   ESTTA Tracking number:           ESTTA568011
                                                                                 Filing date:         10/30/2013
                       IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
                         BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

                                        Notice of Opposition
Notice is hereby given that the following parties oppose registration of the indicated application.

Opposers Information
 Name                  Hershey Chocolate & Confectionery Corporation
 Granted to Date       10/30/2013
 of previous
 extension
 Address               4860 Robb Street, Suite 204
                       Wheat Ridge, CO 80033
                       UNITED STATES

 Name                  The Hershey Company
 Granted to Date       10/30/2013
 of previous
 extension
 Address               100 Crystal A Drive
                       Hershey, PA 17078
                       UNITED STATES

 Attorney              John P. Rynkiewicz
 information           Kaye Scholer LLP
                       901 Fifteenth Street, N.W.Suite 700
                       Washington, DC 20005
                       UNITED STATES
                       jrynkiewicz@kayescholer.com,pllewellyn@kayescholer.com,jeischeid@kayesch
                       oler.com, kyle.gooch@kayescholer.com

Applicant Information
 Application No        85441471                          Publication date          07/02/2013
 Opposition Filing     10/30/2013                        Opposition                10/30/2013
 Date                                                    Period Ends
 Applicant             Mars, Incorporated
                       6885 Elm Street
                       McLean, VA 221013883
                       GERMANY

Goods/Services Affected by Opposition
 Class 030. First Use: 2007/02/28 First Use In Commerce: 2007/02/28
 All goods and services in the class are opposed, namely: Confectionery, namely, candy

Grounds for Opposition
 The mark is merely descriptive                          Trademark Act section 2(e)(1)
 The mark comprises matter that, as a whole, is          Trademark Act section 2(e)(5)
 functional
 Genericness                                          Trademark Act section 23
 Other                                                Failure to function as a mark. Trademark Act
                                                      sections 1, 2 and 45.


 Attachments          2013.10.30 Notice of Opposition.pdf(269094 bytes )


                                       Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
record by First Class Mail on this date.


 Signature            /John P. Rynkiewicz/
 Name                 John P. Rynkiewicz
 Date                 10/30/2013
            IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
              BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD


HERSHEY CHOCOLATE & CONFECTIONERY
CORPORATION and THE HERSHEY COMPANY,                        Opposition No. ____________

                                 Opposers,

                      v.                                    Mark:           Design Only
                                                            Serial No:      85/441471
MARS, INCORPORATED,
                                                            Filed:          October 6, 2011
                                 Applicant.                 Published:      July 2, 2013



                                 NOTICE OF OPPOSITION

       Opposers Hershey Chocolate & Confectionery Corporation, a Delaware corporation

located and doing business at 4860 Robb Street, Suite 204, Wheat Ridge, Colorado (“HC&CC”),

and The Hershey Company, a Delaware corporation located and doing business at 100 Crystal A

Drive, Hershey, Pennsylvania (“Hershey Company” and, together with HC&CC, “Hershey” or

“opposers”), believe that they will be damaged by the registration of the design mark shown in

Application Serial No. 85/441471, and oppose the same.

       As grounds for opposition, opposers allege that:

       1.     HC&CC is the owner of a number of trademarks for candy, chocolate, confec-

tionery and related products, including the famous REESES® and HERSHEY’S® families of

trademarks for various products manufactured by its licensee, opposer Hershey Company, a

leading snack food company and the leading North American manufacturer of quality chocolate

and non-chocolate confectionery products.

       2.     Hershey Company sells a variety of chocolate and confectionery products,

including candy bars, in the same markets and to many of the same consumers as applicant Mars,
        ated (“Mars” or “applicant”) sells it candy bar and other chocolate a confectio
Incorpora                                   ts        rs                    and       onery

        .
products.

                                                        ar
                       The Widespread Use of Candy Ba Configura    ations
                      with Cross            milar to the Applied-For Mark
                               s-Sections Sim                      r

       3.     Amon the choco
                 ng        olate confect
                                       tionery produ manufa
                                                   ucts   actured or so by Hersh in
                                                                      old      hey

        ed         e           ndy       t                        ougat, peanu butter or fu
the Unite States are various can bars that feature (i) a base of no          ut           udge;

(ii) with a combination of caram and nuts; and (iii) an outer layer of chocolate These inc
                               mel                    n                        e.        clude

the REES       RAGEOUS® brand cand bar, Hersh
       SE’S NUTR      ®          dy                            and      ar
                                            hey’s TAKE FIVE® bra candy ba and

       ’s      c
Hershey’ ZERO® candy bar.

       4.                   s         ufacture and sell in th United States choc
              Other companies also manu          d          he                 colate

        onery produ
confectio                     ature (i) a base of noug peanut butter or fu
                  ucts that fea                      gat,                           with a
                                                                        fudge; (ii) w

       tion of caram and nut and (iii) a outer lay of choco
combinat           mel     ts;         an        yer                 e           e
                                                          olate. These include the OH

                           BY     candy bar, b
HENRY! candy bar and the BAB RUTH c                     ctured and sold in the U
                                             both manufac                      United

        y                    denberg’s PEANUT CH
States by Nestlé USA, and Gold                         nufactured by Just Born, Inc.
                                               HEWS, man           y

      us         dy                     ide       ed         e            angements.
Numerou other cand bars sold in and outsi the Unite States use similar arra

       5.                                 to         n           or        vertisements) that
              It is common for candy bars t be sold in wrappers (o using adv

                    o                       f           bar                  an         ature,
contain a depiction of a cut cross-section of the candy b so that consumers ca see the na

       nce       ngement of in
appearan and arran                       nside.
                             ngredients in

       6.          xample, RE
              For ex        EESE’S NUT
                                     TRAGEOUS candy bar are sold in packaging that
                                            S         rs          n         g

                     on         andy bar:
depicts a cross-sectio of each ca
               Mars’ Application to Register a Cross-Section of Its SNICKERS Bar
             and Its Misrepresentations as to Exclusive Use of the Applied-For Design

       7.      Despite the common nature of a candy bar configuration with nougat, peanut

butter or fudge at the bottom, topped with caramel and nuts, and enrobed in chocolate, despite

the widespread use of that configuration by Hershey and others in the United States in

connection with chocolate confectionery products, and despite the common practice of depicting

a cross-section or cut-open candy bar on packaging and in advertising, applicant filed the subject

application for registration of the design mark depicted below:




       8.      Applicant describes its mark as consisting 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.” In particular,

the applied-for mark depicts what appears to be a cross-section of applicant’s SNICKERS brand

candy bar, which consists of nougat topped with a mixture of caramel and peanuts, enrobed in a

layer of milk chocolate.

       9.      In filing the application, counsel for applicant declared and represented that “to

the best of his/her knowledge and belief no other person, firm, corporation, or association has the

right to use the mark in commerce, either in the identical form thereof or in such near resem-

blance thereto as to be likely, when used on or in connection with the goods/services of such

other person, to cause confusion, or to cause mistake, or to deceive.”
       10.     As described above, Hershey manufactures or sells various candy bar products in

the United States that, when viewed as a cross section, are highly similar in appearance to the

applied-for mark depicting applicant’s goods.         Such candy bars manufactured or sold by

Hershey, which include but are not limited to the products referenced in paragraph 3, above,

were offered and sold throughout the United States during the time prior to, and at the time of,

applicant’s filing of the subject application and applicant’s assertion of its claim of Section 2(f)

distinctiveness.

       11.     As described above, third parties manufacture or sell various candy bar products

in the United States that, when viewed as a cross section, are highly similar in appearance to the

applied-for mark depicting applicant’s goods. Upon information and belief, such candy bars

manufactured or sold by third parties, which include but are not limited to the products

referenced in paragraph 4, above, were offered and sold throughout the United States during the

time prior to, and at the time of, applicant’s filing of the subject application and applicant’s

assertion of its claim of Section 2(f) distinctiveness.

       12.     For example, applicant’s applied-for mark is substantially similar to the cross-

section view of a Nestle OH HENRY! bar. As shown below, the OH HENRY! bar, just like

applicant’s SNICKERS bar, consists of nougat topped with a mixture of caramel and peanuts,

enrobed in chocolate and is indistinguishable from the applicant’s product presented in its

applied-for mark.
                            The Functionality of the Applied-For Mark

       13.     The candy bar configuration depicted in applicant’s applied-for mark is functional

because it depicts a candy bar that results from a widely used and comparatively more efficient

or less expensive method of manufacture for candy bars containing similar ingredients.

       14.     Thus, a common method for manufacturing candy bars is the “layering” process.

That process often begins with a “slab” of nougat, peanut butter or fudge. The slab is then

pressed through a series of rollers, then topped with caramel. Nuts are mixed with the caramel,

either by “ingrediating” the nuts into the caramel before it is poured onto the slab, or by pressing

the nuts into the caramel after it has been poured onto the slab. The slab is then cut by a series of

knives until it forms individual candy-bar shaped pieces, which are then enrobed in chocolate.

       15.     Other arrangements of ingredients are comparatively more difficult or expensive

to manufacture. For example, the nougat, peanut butter or fudge is placed at the bottom because

the caramel is too sticky to go directly onto the manufacturing surface (generally a moving belt)

in an efficient manner. The placement of the caramel on top of the nougat or fudge results in

numerous benefits and efficiencies in the manufacturing process (e.g., the nuts will stick to the

caramel).

       16.     Accordingly, candy bars manufactured using the “layering” process that contain

ingredients similar to those in applicant’s Snickers candy bar will have a similar appearance,

when viewed as a cross-section, to the applied-for mark.

       17.     In addition, candy bars manufactured through other processes may also result in

candy bars that have a similar appearance, when viewed as a cross-section, to the applied-for

mark. For example, Hershey’s NUTRAGEOUS candy bar, although it is manufactured using a

“co-extruded” manufacturing process as opposed to a “layering” process, will appear outwardly

similar to the applied-for mark when viewed as a cross-section by a consumer.
                                  FIRST CLAIM FOR RELIEF

                           (The Applied-For Mark is Merely Descriptive
                            and is Not Distinctive of Applicant’s Goods)

       18.     Opposers reallege and incorporate herein the allegations of paragraphs 1 to 17.

       19.     The applied-for mark is merely descriptive of applicant’s goods within the

meaning of Section 2(e) of the Trademark Act, 15 U.S.C. § 1052(e).

       20.     The cross-sectional view of applicant’s goods, as depicted in the applied-for

mark, are not distinctive of applicant’s goods, and are used by opposers and others in connection

with the same type of goods.

       21.     Applicant has not shown that it has acquired, nor has it acquired, secondary

meaning in the applied-for mark.

       22.     Accordingly, registration should be denied under Sections 1, 2 and 45 of the

Trademark Act.

                                SECOND CLAIM FOR RELIEF

                           (The Applied-For Mark is De Jure Functional)

       23.     Opposers reallege and incorporate herein the allegations of paragraphs 1 to 17.

       24.     The candy bar configuration depicted in the applied-for mark results from a

manufacturing process that favorably affects both the cost and quality of a candy bar.

       25.     As described above, the candy bar configuration depicted in the applied-for mark

results from a comparatively simple and inexpensive method of manufacture.

       26.     The candy bar configuration depicted in the applied-for design constitutes one of

a few superior designs for a candy bar that contains the following ingredients: (i) nougat, peanut

butter or fudge; (ii) caramel and nuts; and (iii) a chocolate outer coating.
        27.    The exclusive use by applicant of the candy bar configuration depicted in the

applied-for mark would put opposers and other competitors at a significant non-reputation-

related disadvantage.

        28.    The applied-for mark is de jure functional for the reasons set forth herein.

        29.    Accordingly, registration should be denied under to Section 2 of the Trademark

Act.

                                THIRD CLAIM FOR RELIEF

                                (The Applied-For Mark is Generic)

        30.    Opposers reallege and incorporate herein the allegations of paragraphs 1 to 17.

        31.    The candy bar configuration depicted in the applied-for design is a generic candy

bar configuration and is incapable of functioning as a mark.

        32.    Accordingly, registration should be denied under to Sections 1, 2 and 45 of the

Trademark Act.

                               FOURTH CLAIM FOR RELIEF

                                  (Failure to Function as a Mark)

        33.    Opposers reallege and incorporate herein the allegations of paragraphs 1 to 17.

        34.    As set forth above, candy bars are often sold using packaging or advertising that

depicts a cross-section or cut-open view of the candy bar.

        35.    Many candy bars available to consumers, including candy bars sold by Hershey

and others as set forth above, have similar appearances when viewed as a cross-section or cut-

open.

        36.    The applied-for mark is not readily perceived by consumers as an indication of

the source or origin of applicant’s goods.
       37.    The applied-for m
                  a                                         ark” within the meanin of
                              mark does not function “as a ma                    ng

        2(f)      rademark Ac 15 U.S.C. § 1052(f).
Section 2 of the Tr         ct,

       38.        rdingly, regi
              Accor                       ould be denied under to Sections 1, 2 and 45 o the
                              istration sho                                 ,          of

      ark
Tradema Act.

       WHEREFOR Hershey respectfull prays that this opposi
       W      RE,     y           ly         t                       tained, that r
                                                         ition be sust            regis-

         o           b           and
tration to applicant be refused, a that opp
                                          posers be gra
                                                      anted such o           rther relief a the
                                                                 other and fur            as

       eems just and proper.
Board de           d

       T Patent and Tradema Office a Tradema Trial an Appeal B
       The      a         ark      and     ark      nd                  ereby
                                                             Board are he

        ed                                  y           e          tion from the deposit acc
authorize to collect any fees necessitated by this Notice of Opposit           e           count

        ey’s     ys,      holer LLP, D
of Hershe attorney Kaye Sch                     ount No. 11-
                                     Deposit Acco          -0228.

       October 30, 2013
Dated: O           2




                                                       wellyn
                                            Paul C. Llew
                                            Kyle D. Goooch
                                            KAYE SCH  HOLER LLP P
                                            425 Park Avvenue
                                            New York, New York 10022
                                                                 8000
                                            Telephone: (212) 836-8

                                            John P. Rynnkiewicz
                                            KAYE SCH  HOLER LLP    P
                                            901 Fifteenth Street, N.W.
                                                      n,
                                            Washington DC 20005    5
                                            Telephone: (202) 682-3 3671

                                                       or
                                            Attorneys fo Opposers
                                CERTIFICATE OF SERVICE

       I certify that the foregoing Notice of Opposition is being electronically filed with the

United States Patent and Trademark Office on October 30, 2013, and that a true and correct copy

of the foregoing Notice of Opposition was served on applicant by first-class mail to:

       Cristina A. Carvalho
       Arent Fox, LLP
       1050 Connecticut Avenue, NW
       Washington, DC 20036

                                                                                             /s/ Kyle D. Gooch
                                                          ______________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________

				
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