Chocolate Manufacturers Urge Preserve Trademark in Hershey Lawsuit


A Hershey lawsuit is an interesting scenario. According to the Hershey Company’s web site, the Kiss family has been a longstanding business partner for over 100 years. This may explain why the company believes it is appropriate to file a trademark suit against the family’s namesake chocolate confectionary.

On May 8th, Hershey filed a complaint in the U.S. Patent and Trademark Office against the Kiss family, charging them with infringing three patents and one trademark. Hershey first complained that the Cookie Monster sesame Street character used an image of milk in an unnatural and deceptive manner. In the complaint, Hershey specifically stated that the Cookie Monster image “mimics the visual appearance of milk.” Moreover, the Cookie Monster suit further claimed that the character toppings do not contain real milk and are instead a “fancy cosmetic item.” Finally, the complaint contends that the entire theme of the show is designed to be educational, and that consumers are not able to discern that items containing real milk or other similar products were included in the composition of the Cookie Monster.

The Hershey Company quickly moved to block the proposed trademark, and on May 10th the United States Patent and Trademark Office denied the patent application. On June 7th, however, the United States Patent and Trademark Office reversed its initial decision and granted the patent. The original Hershey lawsuit was filed in the United States District Court for the Eastern District of Pennsylvania, but the lawsuit was moved to the Eastern District of Ohio. The plaintiff’s motion for reconsideration of the granting of the patent was denied by the United States Court of Appeals for the Fourth Circuit.

There are two main factors to consider when assessing the likelihood of a Hershey trademark infringement lawsuit. One factor considers whether the plaintiff’s claim is likely to succeed. This aspect of the analysis considers whether the plaintiff can demonstrate that their competitor’s product is substantially similar to the plaintiff’s product, and if so, whether they will be able to obtain a United States District Court judgment against the competitor. Another factor considers whether the parties are likely to resolve their disputes through arbitration or other dispute resolution processes. Although the parties may resolve some aspects of the dispute without litigation, resolving all aspects without litigation results in a higher likelihood of success for the plaintiff.

The United States Patent and Trademark Office have advised that chocolate manufacturers based in the United Kingdom should avoid the practice of issuing products bearing the names “ective” and “licensing” as these terms are considered to be trademark infringement lawsuits in the United States. Such lawsuits are also classified as “tarnishments” under the Lanham Act. Specifically, the United States Patent and Trademark Office have advised chocolate manufacturers in the United Kingdom that they are required to apply for a US trademark in addition to a British trademark for any chocolate that contains any United States logos, indicators, or designs. If a trademark application is refused, the chocolate manufacturer may submit a Notice of Infringement to the United States Patent and Trademark Office. Upon receiving the Notice of Infringement, the applicant must then submit an amendatory application that focuses on why the trademark should be cancelled, and why the British trademark should be issued.

Hershey itself is not directly involved in this lawsuit. Nevertheless, it is advised that Hershey attorneys monitor and/or advise their clients based on the facts of this case, including whether there is a likelihood of a Hershey lawsuit and whether there is a likelihood of the United States Patent and Trademark Office declining to cancel the mark. The potential impact of this case is significant as chocolate manufacturers are experiencing strong customer interest in Hershey chocolate products. Importantly, this case is important for chocolate manufacturers as a result of the fact that the United States Patent and Trademark Office to refuse to issue a United States trademark to products that contain certain elements that come from the chocolate plant in which Hershey operates. This refusal to protect the mark has resulted in Hershey being forced to seek damages in this lawsuit from the owner of the offending chocolate plant.

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