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  • Writer's pictureDavid Baker

The Cookie Crumbles? Part 2 – Trademark Law

If you're a regular reader of our posts, then you already know that a trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of goods and/or services. If a competitor is offering similar goods and/or services through use of a brand name that is similar to a registered (or common law) mark, the competitor may be committing trademark infringement. However, in situations where another business is using a similar name but is not offering goods and/or services that are similar to those of the trademark owner, this may not amount to trademark infringement (e.g., Delta airplanes, Delta faucets, Delta dental insurance, etc.). Owners of “famous” marks have additional trademark rights by virtue of the fact that their marks have such an immediate connection in the minds of consumers such that the public expects a certain quality when identifying those marks. In order to achieve the legal standard of fame, courts have often looked at how much is spent on advertising and how long the goods and/or services have been in the marketplace.

Trademark Confusion

The USPTO examines every application for federal registration for compliance with federal law and the Trademark Rules of Practice. One of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the applied-for mark and a previously registered trademark or a pending application with an earlier filing date.

Similarity of Marks

To determine whether a likelihood of confusion exists, the trademarks are first examined for their similarities and differences. It is important to note, that in order to find a likelihood of confusion, the trademarks do not have to be identical. When trademarks sound alike when spoken, are visually similar, and/or create the same general commercial impression in the consuming public’s mind, the trademarks may be considered confusingly similar. Similarity in sound, appearance, and/or meaning may be sufficient to support a likelihood of confusion, depending on the relatedness of the goods and/or services.

Particularly important to the Cookie Department and Hershey fact pattern is that relatedness of goods and/or services does not require that said goods and/or services be identical. Whether the goods and/or services are related is determined by considering the commercial relationship between the goods and/or services identified in an application with those identified in the registration or earlier-filed application. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source. The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.

Avoiding Trademark Infringement Claims

The layers of Cookie Department and Hershey litigation provide a good example of the delicate analysis exhibited in determining whether trademark infringement in fact exists. It remains to be seen if Cookie Department will succeed in the TOUGH COOKIE trademark infringement case. Additionally, the unfiled Hershey lawsuit does not appear on its face to necessarily establish a likelihood of confusion between the Hershey’s Kiss trademark and the Cookie Department imagery. However, a trademark as famous and publicly-recognizable as the “Kiss” mark, which has been protected since 1976, affords the Hershey legal team the additional and valuable tool of claiming broader scope legal protection in its proposed suit against Cookie Department.

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