As the case captioned The Cookie Department, Inc. v. The Hershey Company, et al., Case No. 3:21-cv-06743-SK and on file in the Northern District of California seeking protection against the alleged “retaliatory threat of trademark litigation” by Hershey Co. and Hershey Chocolate & Confectionary LLC (collectively “Hershey”) ramps up, this might be a good time to review the basic underlying principles of trademark law.
The Cookie Department, Inc. (“Cookie Department”), a California cookie maker, has filed suit against candy maker, The Hershey Company (“Hershey Co.”), alleging that it has engaged in trademark infringement. Hershey Co. has made the same claims against Cookie Department and the marks at issue include the iconic Hershey’s Kisses “Kiss” image and Cookie Department’s TOUGH COOKIE trademark.
Cookie Department develops, products, advertises, and sells cookie products, but it has never sold any chocolate or confectionary products, nor does it sell any products in direct competition with the Hershey’s Kisses product line. Therefore, according to Cookie Department, the likelihood of confusion between the two marks is minimal.
Until the recent lawsuits, Hershey had never claimed infringement, issued a demand, or issued a cease-and-desist letter to Cookie Department. It was only after Cookie Department’s own trademark infringement suit against Hershey and ONE Brands, LLC, filed in December 2020, that Hershey threatened trademark infringement litigation against Cookie Department in a letter dated August 27, 2021.
Cookie Department’s 2020 trademark infringement suit against Hershey and ONE Brands for alleged improper use of Cookie Department’s TOUGH COOKIE trademark registered with the United States Patent and Trademark Office (“USPTO”) is currently pending in the same federal district court as The Cookie Department, Inc. v. The Hershey Company, et al., Case No. 4:20-cv-09324-KAW. In that case, the TOUGH COOKIE registered trademark was allegedly infringed by ONE Brands’ ONE Bar Chocolate Chip Cookie Dough Flavored Protein Bar in which the packing and marketing materials for the bar used the term “TOUGH COOKIES ONLY.” ONE Brands, a nutrition bar maker, was acquired by Hershey Co. in 2019.