On May 19, 2010, Hershey Co. (Hershey), the renowned Pennsylvania-based chocolate confection producer, filed suit in the U.S. District Court for the Middle District of Pennsylvania against New Jersey-based candy and craft mold manufacturer Life of the Party, Inc. (LPI), alleging claims of trademark infringement and dilution, false designation of origin, and unfair competition due to LPI’s manufacture and sale of conically-shaped molds for chocolate. Hershey Co. v. Life of the Party, Inc., No. 1:cv-10-1064 (M.D. Pa. 2010).

The lawsuit is a bold step by Hershey in its effort to curb counterfeiting. According to the complaint, LPI sells a product that allows customers to create conically-shaped chocolates that are virtually identical to Hershey’s “Kisses”- and “Hugs”-brand candies, which account for hundreds of millions of dollars in annual sales for Hershey. In addition to its “Kisses”- and “Hugs”-brand trademarks, Hershey owns several trademark registrations for the conical configuration of these particular chocolates. Hershey asserts that its trademarks are universally-recognized and distinctive symbols of its goodwill and that LPI’s conically-shaped chocolate molds, which embody and mimic Hershey’s trademarks, are likely to create the mistaken perception that the infringing molds, as well as the chocolates created from them, are associated with Hershey. Hershey goes on to argue that the mold maker knows that its customers will use its product to manufacture counterfeit “Kisses” and is aware that these counterfeits will likely confuse consumers as to the origin of the chocolates and, consequentially, lessen the distinctiveness of Hershey’s trademarks.

The LPI lawsuit is the second suit filed by Hershey relying on trademark registrations for the design of its products. On May 11, 2010, Hershey filed a similar suit against Williams-Sonoma, Inc. (William-Sonoma) in the U.S. District Court for the Middle District of Pennsylvania, alleging that one of the gourmet cookware company’s products infringes a design mark that Hershey has used for decades on its flagship chocolate bar product. Hershey Co. v. Williams-Sonoma, Inc., No. 1:10-cv-1011 (M.D. Pa. 2010). Hershey alleges that Williams-Sonoma’s “chocolate bar brownie pan” embodies Hershey’s trademarked design, which is “a rectangle containing twelve equally-sized rectangular panels arranged in a 4 x 3 format, with each panel having its own raised borders.” Though nearly identical to the complaint against LPI, Hershey’s complaint against Williams-Sonoma goes a bit further by pointing to specific evidence of actual consumer confusion regarding Hershey’s trademark.

Arent Fox is continuing to monitor these cases for further developments. For more information on this case or on anti-counterfeiting in general, please contact Sarah L. Bruno.