throbber
Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 1 of 42
`
`IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE
`DISTRICT OF PENNSYLVANIA
`
`Case No.:
`
`COMPLAINT FOR DAMAGES
`AND INJUNCTIVE RELIEF
`
`Jury Trial Demanded
`
`THE HERSHEY COMPANY, a
`Delaware Corporation, and
`HERSHEY CHOCOLATE &
`CONFECTIONERY LLC, a
`Delaware Limited Liability Company,
`
`Plaintiffs,
`
`vs.
`
`THE COOKIE DEPARTMENT,
`INC., a California Corporation,
`
`Defendant.
`
`Plaintiffs, The Hershey Company and Hershey Chocolate & Confectionery
`
`LLC (collectively, “Hershey”), by and through its undersigned counsel, as and for
`
`its Complaint against Defendant, The Cookie Department, Inc. (“Defendant”),
`
`hereby alleges as follows:
`
`Introduction
`
`1.
`
`Hershey is a leading manufacturer of chocolate, confectionery, and
`
`other snack food products in the United States and worldwide. Founded in 1894
`
`by Milton S. Hershey in Pennsylvania, Hershey has a longstanding presence in its
`
`market. Since its founding over 125 years ago, Hershey and its subsidiaries have
`
`grown to be the largest producer of quality chocolate in North America and a
`
`global leader in chocolate and confectionery.
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 2 of 42
`
`2.
`
`Hershey’s product portfolio includes some of the most renowned
`
`chocolate brands such as HERSHEY’S and KISSES chocolates.
`
`3.
`
`In 1907, Hershey adopted the KISSES design marks for use in
`
`connection with chocolate candy. Hershey has established rights in the KISSES
`
`conical configuration (collectively, “Kisses Marks”) through long term, continuous
`
`and exclusive use of those marks in commerce in the United States and worldwide,
`
`both in the shape of the actual chocolate candy and in design images depicting that
`
`shape.
`
`4.
`
`As discussed further below, the iconic KISSESs Marks feature an
`
`upwardly pointing tip (with and without a “plume”), a notable distinction between
`
`the KISSES Marks and chocolate chip designs (featuring drooping tips).
`
`5.
`
`Defendant, The Cookie Department, has used the KISSES conical
`
`configuration in its logo, packaging, and marketing of its cookie products, and has
`
`acted in bad faith in appropriating Hershey’s goodwill and/or in diluting the value
`
`of the KISSES Marks.
`
`The Parties
`Plaintiff, The Hershey Company, is a corporation organized and
`
`6.
`
`existing under the laws of the State of Delaware, with its principal place of
`
`business at 19 East Chocolate Avenue, Hershey, Pennsylvania 17033; Plaintiff,
`
`Hershey Chocolate & Confectionery LLC, is a limited liability company organized
`
`and existing under the laws of the State of Delaware, with its principal place of
`- 2 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 3 of 42
`
`business at 8001 Arista Place, Suite 430, Broomfield, CO 80021 (collectively,
`
`“Hershey”).
`
`7.
`
`On information and belief, Defendant, The Cookie Department, Inc.,
`
`is a California Corporation and is authorized to do business and is doing business
`
`in the State of California, County of Alameda, with its principal place of business
`
`at Berkeley, California.
`
`8.
`
`On information and belief, Defendant conducts business through
`
`interstate commerce throughout the United States, including within Middle District
`
`of Pennsylvania district where this Court is situated.
`
`Jurisdiction and Venue
`
`9.
`
`This is an action for trademark infringement, dilution, and violation of
`
`the Trademark Act of 1946, as amended, 15 U.S.C. §§ 1051 et seq. (“Lanham
`
`Act”), and unfair competition under the statutory and common
`
`law of
`
`Pennsylvania.
`
`10.
`
`This Court has subject matter jurisdiction of this action under 15
`
`U.S.C. § 1121, 28 U.S.C. §§ 1331 and 1338 (a) and (b), as this suit is based on a
`
`Federal question and statute, namely 15 U.S.C. § 1051 et seq.; and has
`
`supplemental jurisdiction under 28 U.S.C. § 1367(a) over Plaintiff’s state law
`
`claims.
`
`11.
`
`This Court has personal jurisdiction over Defendant, The Cookie
`
`Department, Inc., because it conducts business in the State of Pennsylvania and
`- 3 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 4 of 42
`
`within this district, including contracting to sell its goods to consumers in
`
`Pennsylvania and the advertising and sale of its products through the Internet to
`
`Pennsylvania residents.1
`
`12. Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b) because
`
`The Cookie Department resides in this district, as it is subject to personal
`
`jurisdiction in this district, and because a substantial part of the events giving rise
`
`to these claims occurred in this district. The Cookie Department conducts business
`
`throughout Pennsylvania, including marketing and selling its products to
`
`consumers in this district through retail stores and online, and has committed the
`
`infringement as alleged below in this judicial district, such that the acts and/or
`
`omissions complained of took place, in whole or in part, within Lackawanna
`
`County, Pennsylvania.
`
`The Famous KISSES Marks
`
`13. Hershey’s KISSES chocolate candy and confectionery products, with
`
`their well-known conical shape with an upwardly pointing tip, have been offered
`
`for sale in the United States since 1907, and are one of Hershey’s most beloved
`
`and successful product lines. For more than a hundred years, Hershey’s KISSES
`
`chocolate and confectionery products have been sold continuously throughout the
`
`United States.
`
`1 See, e.g., https://thecookiedepartment.com/pages/store-locator (last visited Aug.
`17, 2021) (identifying where Defendant sells its products).
`- 4 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 5 of 42
`
`14. Hershey’s KISSES chocolate and confectionery products sold in the
`
`United States include, without limitation, a variety of flavors of individually
`
`wrapped chocolates in Hershey’s distinct foil and plume, as well as unwrapped
`
`chocolates for use in baking, including for use as ingredients in other companies’
`
`products, such as cookies, as well as in other product categories.
`
`15.
`
`The conical configuration of Hershey’s KISSES chocolate and
`
`confectionery products (a candy with an upwardly pointing tip, with and without
`
`the “plume”) is the subject of numerous trademark registrations2 with the United
`
`States Patent and Trademark office, including, but not limited to:
`
`Mark
`
`U.S. Reg.
`No.
`
`Reg. Date
`
`Goods
`
`1031836
`
`January 27, 1976 Solid chocolate
`
`1038025
`
`April 13, 1976
`
`Solid chocolate
`
`1986822
`
`July 16, 1996
`
`Candy
`
`2138566
`
`February 24,
`1998
`
`Candy
`
`2 Plaintiffs note that these registrations cover wrapped and unwrapped designs.
`- 5 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 6 of 42
`
`2187189
`
`September 08,
`1998
`
`Candy
`
`3028381
`
`December 13,
`2005
`
`Candy; Confectionery
`bits for baking
`
`3059066
`
`February 14,
`2006
`
`Candy
`
`3572216
`
`February 10,
`2009
`
`Candy
`
`Breath freshening
`confectionery, namely,
`dissolvable breath strips,
`breath mints, candy and
`gum; Breath mints for
`use as a breath freshener
`
`Candy; Candy bars;
`Candy mints; Chewing
`gum; Chocolate;
`Chocolate chips;
`Chocolate syrup;
`Chocolate topping;
`Confectionery chips for
`baking; Flavoring syrup
`Breath freshening
`confectionery, namely,
`dissolvable breath strips,
`breath mints, candy and
`gum; Breath mints for
`use as a breath freshener
`
`Candy; Candy bars;
`Candy mints; Chewing
`
`5475741 May 22, 2018
`
`4856311
`
`November 17,
`2015
`
`- 6 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 7 of 42
`
`gum; Chocolate;
`Chocolate chips;
`Chocolate syrup;
`Chocolate topping;
`Confectionery chips for
`baking; Flavoring syrup
`Retail store services
`featuring clothing,
`chocolate, candy and
`related promotional
`products
`Entertainment services,
`namely, providing and
`operating a facility
`exhibiting the history
`and highlights of the
`chocolate industry
`Goods in 9, Services in
`41 and 42 (relating to a
`use at Hersheypark for
`RFID readers and tags,
`etc.)
`
`Entertainment in the
`nature of a water park
`and amusement center;
`Providing waterpark
`services
`
`5027734
`
`August 23, 2016
`
`4937669
`
`April 12, 2016
`
`88882354
`(pending) N/A
`
`5563731
`
`September 18,
`2018
`
`(collectively, hereinafter referred to as the “KISSES conical configuration”). True
`
`and correct copies of the above-listed trademark registrations are attached hereto as
`
`Exhibit A.
`
`16.
`
`Some of the above registered marks on the Hershey’s KISSES conical
`
`configuration have become incontestable pursuant to 15 U.S.C. § 1065, including
`
`- 7 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 8 of 42
`
`at least Registration Nos. 1986822; 2138566; 2187189; 3028381; 3059066; and
`
`3572216.
`
`17. Hershey also uses the KISSES conical configuration as part of its
`
`corporate logos, both with and without the plume, which is extensively used on the
`
`company website, social media, and on packaging for Hershey products, see, e.g.,:
`
`18.
`
`The conical configuration is also featured in the KISSES logo,
`
`including between the K and the I in the KISSES stylized mark, and is pervasively
`
`displayed on product packaging:
`
`- 8 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 9 of 42
`Case 1:21-cv-01675-CCC Document1 Filed 09/28/21 Page 9 of 42
`
`FORMERLY CLASSIC
`
`MeL
`
`mETWNT112(311 NET WT77 408 al
`
`milk chocolate
`
`- 9 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 10 of 42
`
`19. Hershey has also promoted its KISSES Marks throughout the United
`
`States via sponsorships, charities, and fundraisers to build a positive image for the
`
`company and all KISSES-Branded Goods (as defined below).
`
`20. Over the past century, Hershey, its predecessors, subsidiaries, and
`
`licensees have expended significant time, money, and effort to establish public
`
`recognition of the KISSES Marks in the United States and abroad, particularly
`
`within the chocolate and confectionery industry.
`
`21.
`
`Products and services bearing the KISSES Marks (“KISSES-Branded
`
`Goods”) have been and continue to be extensively advertised, distributed, and sold
`
`throughout the United States and many other countries of the world.
`
`22. KISSES-Branded Goods are currently sold in at least 70 countries.
`
`Hershey’s customers consist of wholesale distributors, chain grocery stores, mass
`
`merchandisers, chain drug stores, vending companies, wholesale clubs,
`- 10 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 11 of 42
`
`convenience stores, dollar stores, concessionaires and department stores. The
`
`majority of Hershey customers, with the exception of wholesale distributors, resell
`
`Hershey products to end consumers in retail outlets in North America and other
`
`locations worldwide. Hershey also sells KISSES-Branded Goods online from its
`
`own websites, www.hersheysstore.com, www.hersheyland.com, and through
`
`ecommerce platforms, such as Amazon.com.
`
`23. Over the last five years, annual sales of KISSES-Branded Goods
`
`products in the U.S. alone averaged over $490,000,000 per year.
`
`24. Hershey sells chocolate and confectionery products embodying the
`
`KISSES conical configuration in a variety of sizes and formats, including for use
`
`in baking products. Moreover, many Hershey products embodying the KISSES
`
`configuration are used as ingredients in other companies’ baked or dessert
`
`products. True and accurate representations of a sampling of the multitude of
`
`products bearing the KISSES Marks are attached hereto as Exhibit B.
`
`25.
`
`There is a long-standing association between Hershey’s KISSES-
`
`Branded Goods and baking. Hershey’s website features many recipes for cookies
`
`using KISSES chocolates, including an iconic recipe for peanut butter blossoms
`
`cookies, which feature a KISSES chocolate on top of a cookie:
`
`- 11 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 12 of 42
`
`26. Hershey’s sells its iconic KISSES-Branded Goods in many sizes and
`
`flavors, including MINI KISSES chocolates, which are also used in recipes that
`
`feature multiple, unmelted MINI KISSES chocolates on top of a baked cookie:
`
`- 12 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 13 of 42
`Case 1:21-cv-01675-CCC Document1 Filed 09/28/21 Page 13 of 42
`
`unamtcea——"
`
`- 13 -
`-13-
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 14 of 42
`
`27. Hershey’s KISSES chocolates were first linked to the now iconic
`
`blossom or thumbprint cookie recipe after a Pillsbury Bake-Off cookie competition
`
`in or around 1957.
`
`28.
`
`Following the success of that cookie recipe, Hershey began publishing
`
`the cookie recipe using the KISSES chocolates, and later even printed it on the
`
`bags for Hershey’s KISSES chocolates.
`
`- 14 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 15 of 42
`
`29. Hershey’s KISSES chocolates are essential
`
`to
`
`these
`
`iconic
`
`“thumbprint”-style cookies, which, after many decades, have become ubiquitous
`
`with baking for the winter holiday season, as reflected in these Google search
`
`results, which display many images of sheets of cookies featuring Hershey’s
`
`KISSES chocolates:
`
`- 15 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 16 of 42
`
`30. Hershey also maintains a large and prosperous business of licensing
`
`the right to sell products bearing the KISSES Marks to other manufacturers.
`
`Consistent with its obligations as owner and licensor of the KISSES Marks,
`
`Hershey establishes and maintains the highest quality and standards for licensed
`
`products bearing the KISSES Marks.
`
`31. Hershey and/or its licensing company licenses its KISSES Marks to
`
`companies manufacturing and selling cookie products featuring KISSES chocolate
`
`and confectionery products:
`
`- 16 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 17 of 42
`
`32. Hershey also manufactures and sells KISSES candy products,
`
`prominently bearing the KISSES Marks, that feature cookies as an ingredient or
`
`flavor, for example:
`
`33. Hershey (including through its licensees) has also used the iconic
`
`KISSES conical configuration to signify locations on maps, including the locations
`
`of Hershey’s museums and theme parks:
`
`- 17 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 18 of 42
`Case 1:21-cv-01675-CCC Document1 Filed 09/28/21 Page 18 of 42
`
`
`
`
`KissaTower@—Theverster CHAINNTRSAYENe SPECIAL OFFERS & UPDATES
`Great Bear
`o
`Skyrush9
`9
`is
`we %
`¥ @
`
`"teing
`
`mi
`gat
`
`v
`
`
`
`He
`~
`The Hershey
`a
`Story Museum
`
`Ga)
`9 @ Fenicci's of Hershey
`
`Chipotle Mexican Grill
`we
`we
`ck Donut
`}
`uck Donuts
`©Wells FargoBank
`
`ae
`+
`
`
`nee|= Simolicity Inn Hershey ©
`
`Join The Hershey Story email list get the latest news,
`specials, and event information sent directly to your inbox!
`
`
`
`SIGN ME UP!
`
`=
`
`Map
`
`Satellite
`von
`
`Fahrenheit
`.
`
`7
`
`
`
`
`
`
`
`SPECIAL OFFERS & UPDATES
`
`Join the Hersheypark email list to be the first to know
`about exclusive savings, new attractions, and special events.
`Email Address
`
`
`
`Uershaypark Stadium ©
`Hershey's
`= ‘olate World ?
`
`Hersheypark’
`
`© storm Runner
`Mana
`
`ZooAmerica 9°
`\ Skyrush o
`° Great Bear
`he
`ve
`he,
`oft Hershey
`Avenue Grill
`
`Chipotle Mexican Grill 9
`
`SIGN ME UP! The Chocolate
`
`SPECIAL OFFERS & UPDATES
`Join the Hershey's Chocolate World email list to be the
`first to know about exclusivesavings and special events,
`
`
`SIGN ME UP!
`
`
`
`£a
`
`ot
`
`:
`
`vo
`
`Fahrenheit
`
`.
`
`‘ot
`Pe Hersheyparkstadium
`hacal
`Hershey
`2 Sara
`tcenter@
`
`Hersheypark 9
`0
`3
`‘ Skyrush
`ty
`aM,
`
`Chipotle Mexican Grill @
`Pare at L
`
`
`
`The Official Resorts of Hersheypark - Make a Reservation
`
`How Does HersheyResorts
`Raise The Bar?
`
`For starters, we combined the most convenient Mid-Atlantic
`
`location in the Northeastwith morethan 125,000 sq.ft. offlexible
`meeting space at 3 award-winning properties, The Hotel
`Hershey®, Hershey Lodge® , and Hershey® Country Club. And
`that’s just the beginning. Ask how your meeting at Hershey
`Resorts™ helps provide life-changing opportunities at Milton
`Hershey School.
`
`View Our Properties
`
`- 18 -
`-18-
`
`Pes Ea
`a °
`
`PHILADELPHIA-90MILES
`
`‘
`
`
`Pay iss
`SLUTRD [1
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 19 of 42
`
`34. Hershey distributes advertising, promotional, and informational
`
`materials displaying the KISSES Marks. Through these advertisements, along
`
`with other marketing materials and strategies, Hershey has developed substantial
`
`goodwill for itself and for the KISSES Marks. The expenditure of significant time,
`
`money, and effort has confirmed the public’s recognition of the KISSES Marks as
`
`associated with Hershey’s products, including cookie products.
`
`35.
`
`The conical configuration depicted in the KISSES Marks is inherently
`
`distinctive and/or has acquired distinctiveness, signifying Hershey’s fame and
`
`respected reputation throughout the United States and abroad, particularly in the
`
`chocolate and confectionery industry and distinguishing its products from those
`
`sold by others.
`
`36.
`
`The KISSES Marks have become famous and are a valuable asset
`
`conjuring Hershey’s products, as well as their quality and goodwill.
`
`37. Given the longevity of this brand, the KISSES Marks have become
`
`famous before the acts of The Cookie Department alleged herein.
`
`- 19 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 20 of 42
`
`The Cookie Department’s Infringing Use of the KISSES Marks
`
`38.
`
`The Cookie Department uses a stylized image of cookies featuring
`
`conical-shaped chocolate pieces on a baking sheet, which is substantially similar to
`
`the iconic conical configuration of the KISSES Marks3:
`
`39. On information and belief, this logo is displayed on packaging for The
`
`Cookie Department’s individually wrapped cookie products, and on the boxes in
`
`3 Images available at https://thecookiedepartment.com/ and
`https://www.facebook.com/thecookiedepartment/photos/a.10150299300015341/10
`156956644395341/.
`
`- 20 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 21 of 42
`
`which those cookie products are displayed in retail stores, on its website, on social
`
`media, as well as in other marketing and promotional materials4:
`
`4 Images available at:
`https://www.facebook.com/thecookiedepartment/photos/a.10161207314525341/10
`164723031875341/ (November 18, 2020 post);
`https://www.facebook.com/thecookiedepartment/photos/a.10161207314525341/10
`164719626740341/ (November 17, 2020 post).
`
`- 21 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 22 of 42
`
`40. On information and belief, The Cookie Department has been in
`
`operation since 2009, when it started as a small, local business selling cookie
`
`- 22 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 23 of 42
`
`products in the Berkeley area. The Cookie Department subsequently began using a
`
`logo containing conical-shaped decorations, but unlike its registration of the word
`
`mark THE COOKIE DEPARTMENT (Reg. No. 4,209,436), on information and
`
`belief, The Cookie Department never filed an application for its logo that included
`
`the conical shaped-decorations.
`
`41.
`
`The Cookie Department’s packaging features conical shapes that are
`
`substantially similar to the conical configuration of the KISSES Marks, including
`
`as decorative elements embedded within statements about the ingredients in the
`
`cookie products. These conical shaped elements are featured on the packaging
`
`boxes in which the cookies are displayed in retail stores, as well as on the
`
`individually packaged cookies. On information and belief, these conical shape
`
`images are used on packaging for all of The Cookie Department’s products, not
`
`only those that contain chocolate chips as an ingredient:
`
`- 23 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 24 of 42
`
`42.
`
`The Cookie Department’s website also uses conical-shaped images
`
`that are substantially similar to the conical configuration of the KISSES Marks,
`
`- 24 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 25 of 42
`
`including using the conical shapes to pinpoint retail store locations on a map to
`
`direct consumers to where The Cookie Department’s products can be purchased 5:
`
`5 Images generated from and available at
`https://thecookiedepartment.com/pages/store-locator (last visited 14 August 2021).
`- 25 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 26 of 42
`
`43. On information and belief, The Cookie Department has used and is
`
`continuing to use packaging that displays images of stylized individual cookies (for
`
`“chocolate chip” flavored products, as well as other cookie products) featuring
`
`conical shaped ingredients or toppings that are substantially similar to the conical
`
`configuration of the KISSES Marks, see, e.g.,6:
`
`6 Images available at https://www.tastingcollective.com/benefits/the-cookie-
`department-17-off-cookies-packed-with-healthy-benefits (last visited 14 August
`2021).
`
`- 26 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 27 of 42
`Case 1:21-cv-01675-CCC Document1 Filed 09/28/21 Page 27 of 42
`
`
`
`- 27 -
`_27-
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 28 of 42
`
`44.
`
`The Cookie Department also markets and promotes its cookie
`
`products as ingredients to be used in baked or dessert items7:
`
`45.
`
`The taste of The Cookie Department’s products, and products made
`
`with The Cookie Department’s cookies, is substantially different than the taste of
`
`Hershey’s KISSES chocolates and products made with Hershey’s KISSES
`
`chocolates, including cookies. The Cookie Department promotes its cookie
`
`products, including its chocolate cookie products (Awaken Baked, a double
`
`chocolate, caffeinated cookie; Champion Chip™, a chocolate chip cookie; and
`
`Mint Condition™, a mint chocolate cookie), as an alternative, healthier snack food
`
`made with “superfoods” and probiotics. These products do not taste as sweet as
`
`Hershey’s KISSES chocolates and/or cookies or other products containing KISSES
`
`7 Images available at https://www.facebook.com/thecookiedepartment/ (February
`19, 2021 and February 7, 2020 posts).
`
`- 28 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 29 of 42
`
`chocolates as an ingredient. As a result, consumers are likely to be confused by
`
`The Cookie Department’s products, which feature conical configurations in their
`
`logo, packaging, and marketing, but which do not taste like products made using
`
`Hershey’s KISSES chocolates as an ingredient.
`
`46.
`
`The Cookie Department has not been authorized by Hershey or its
`
`affiliates to use the KISSES Marks for its products.
`
`The Cookie Department’s Infringing Use is Likely to Cause Confusion with
`
`and Dilution of the Famous KISSES Marks
`
`47.
`
`The Cookie Department’s use of a conical-shaped image in its logo,
`
`packaging, and marketing of its cookie products infringes and dilutes Hershey’s
`
`strong federally-registered trademark rights in the distinctive conical shape of
`
`Hershey’s KISSES chocolates.
`
`48. Both parties are in the same general business of manufacturing and
`
`selling snack food products. In addition, The Cookie Department’s products and
`
`some of Hershey’s KISSES-Branded Goods, including Hershey’s licensed
`
`products, are in the same general business of manufacturing and selling cookies.
`
`The Cookie Department’s infringing cookie products and Hershey’s KISSES
`
`chocolate and confectionery products are also both marketed as ingredients for
`
`baking or desserts.
`
`49.
`
`The Cookie Department’s use of conical-shaped images in its logo, on
`
`its packaging, on its website and in social media, and generally in its marketing
`- 29 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 30 of 42
`
`and promotion of its cookie products, is likely to cause confusion, mistake or
`
`deception of purchasers and the consuming public as to the source or origin of its
`
`goods and services. Actual and potential consumers, upon encountering The
`
`Cookie Department’s products or advertisements bearing Hershey’s iconic conical
`
`configuration of the KISSES Marks are likely to mistakenly believe that those
`
`products originate with, or are licensed, approved, or sponsored by, or otherwise
`
`affiliated with or related to, Hershey or its KISSES-Branded Goods, or to
`
`mistakenly believe that Hershey’s KISSES-Branded Goods are used as an
`
`ingredient in The Cookie Department’s products.
`
`50.
`
`The Cookie Department’s use of Hershey’s
`
`iconic conical
`
`configuration of the KISSES Marks in its logo, on its packaging, on its website and
`
`in social media, and generally in its marketing and promotion of its cookie
`
`products, is likely to dilute and is diluting the distinctive quality of the famous
`
`KISSES Marks , in that The Cookie Department’s infringing logo, packaging and
`
`marketing is likely to create and has created an association between The Cookie
`
`Department’s products and the famous KISSES Marks , which impairs the
`
`distinctiveness of those famous marks and lessens the capacity of those famous
`
`marks to identify and distinguish products marketed and sold by Hershey and/or its
`
`licensees under those marks.
`
`51.
`
`The Cookie Department’s unauthorized use of the KISSES Marks is
`
`causing and will cause substantial harm to Hershey’s valuable intellectual property
`- 30 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 31 of 42
`
`rights, and constitutes, among other things, trademark infringement and dilution,
`
`false designation of origin, and unfair competition in violation of Sections 32,
`
`43(a) and 43(c) of the federal Lanham Act, and state law.
`
`COUNT ONE
`
`Infringement of Federally Registered Marks
`Under Section 32 of the Lanham Act, 15 U.S.C. § 1114
`52. Hershey repeats and realleges paragraphs 1 through 51 of this
`
`Complaint as if fully set forth herein.
`
`53.
`
`This claim is for the infringement of trademarks registered in the
`
`United States Patent and Trademark Office, pursuant to Section 32 of the Lanham
`
`Act, 15 U.S.C. § 1114, as amended.
`
`54.
`
`The conical shaped images used by The Cookie Department,
`
`including in its logo, packaging, and in marketing and advertising for its cookie
`
`products, as described above, are confusingly similar to, and are colorable
`
`imitations of, the federally registered Hershey’s KISSES Marks, including, at least,
`
`those listed herein, and infringe those respective federally registered trademarks.
`
`55.
`
`The Cookie Department’s unauthorized use of Hershey’s KISSES
`
`Marks, including by its use of a similar conical shaped image in its logo,
`
`packaging, and in marketing and advertising for its products, is likely to cause
`
`confusion and mistake and to deceive the public as to the approval, sponsorship,
`
`license, source or origin of The Cookie Department’s products.
`
`- 31 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 32 of 42
`
`56. On information and belief, The Cookie Department’s acts of
`
`trademark infringement have been done willfully and deliberately, and The Cookie
`
`Department has profited and been unjustly enriched by sales that The Cookie
`
`Department would not otherwise have made but for its unlawful conduct.
`
`57.
`
`The Cookie Department’s willful and deliberate acts described above
`
`have caused injury and damages to Hershey, and have caused irreparable injury to
`
`Hershey’s goodwill and reputation, and, unless enjoined, will cause further
`
`irreparable injury, whereby Hershey has no adequate remedy at law.
`
`COUNT TWO
`
`Trademark Dilution
`Under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c)
`58. Hershey repeats and realleges paragraphs 1 through 57 of this
`
`Complaint as if fully set forth herein.
`
`59.
`
`This claim is for the dilution of trademarks, pursuant to Section 43(c)
`
`of the Lanham Act, 15 U.S.C. § 1125(c).
`
`60. Hershey’s KISSES Marks are each distinctive and famous within the
`
`meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and were
`
`distinctive and famous prior to the date of The Cookie Department’s conduct
`
`challenged herein, including its use of a similar conical shape image in its logo,
`
`packaging, and in marketing and advertising for its cookie products.
`
`- 32 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 33 of 42
`
`61.
`
`The Cookie Department’s conduct, as described above, is likely to
`
`dilute and is diluting the distinctive quality of the famous KISSES Marks, in that
`
`The Cookie Department’s infringing logo, packaging and marketing are likely to
`
`create and have created an association between The Cookie Department’s products
`
`and the famous KISSES Marks, which impairs the distinctiveness of those famous
`
`marks and lessens the capacity of those famous marks to identify and distinguish
`
`products marketed and sold by Hershey and/or its licensees under those marks,
`
`including but not limited to cookie products and baking ingredient products.
`
`62. On information and belief, The Cookie Department’s acts of
`
`trademark dilution have been done willfully and deliberately and The Cookie
`
`Department has profited and been unjustly enriched by sales that The Cookie
`
`Department would not otherwise have made but for its unlawful conduct.
`
`63.
`
`The Cookie Department’s willful and deliberate acts described above
`
`have caused injury and damages to Hershey, and have caused irreparable injury to
`
`Hershey’s goodwill and reputation, and, unless enjoined, will cause further
`
`irreparable injury, whereby Hershey has no adequate remedy at law.
`
`COUNT THREE
`
`Trademark Infringement, False Designation of Origin and Unfair
`Competition Under Section 43(a) of the Lanham Act
`15 U.S.C. § 1125(a)
`64. Hershey repeats and realleges paragraphs 1 through 63 of this
`
`complaint as if fully set forth herein.
`
`- 33 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 34 of 42
`
`65.
`
`This claim is for trademark infringement, false designation of origin,
`
`and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
`
`§ 1125(a).
`
`66. By its unauthorized use of the marks in interstate commerce as
`
`described above, The Cookie Department has (i) infringed the KISSES Marks; (ii)
`
`falsely designated the origin of its products; and (iii) competed unfairly with
`
`Hershey, all in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`67.
`
`The Cookie Department’s unauthorized use of the Hershey’s KISSES
`
`Marks, including by its use of a similar conical shaped image in its logo,
`
`packaging, and in marketing and advertising for its products, is likely to cause
`
`confusion and mistake and to deceive the public as to the approval, sponsorship,
`
`license, source or origin of The Cookie Department’s products.
`
`68. On information and belief, The Cookie Department’s acts of
`
`trademark infringement, false designation of origin and unfair competition have
`
`been done willfully and deliberately, and The Cookie Department has profited and
`
`been unjustly enriched by sales that it would not otherwise have made but for its
`
`unlawful conduct.
`
`69.
`
`The Cookie Department’s willful and deliberate acts described above
`
`have caused injury and damages to Hershey, and have caused irreparable injury to
`
`Hershey’s goodwill and reputation, and, unless enjoined, will cause further
`
`irreparable injury, whereby Hershey has no adequate remedy at law.
`- 34 -
`
`

`

`Case 1:21-cv-01675-CCC Document 1 Filed 09/28/21 Page 35 of 42
`
`COUNT FOUR
`
`Trademark Dilution Under Pennsylvania Trademark Act
`54 Pa. Cons. Stat. Ann. § 1124
`70. Hershey repeats and realleges paragraphs 1 through 69 of this
`
`Complaint as if fully set forth herein.
`
`71.
`
`This claim is for dilution of trademarks under Section 1124 of the
`
`Pennsylvania Trademark Act.
`
`72.
`
`The KISSES Marks are each famous marks in the State of
`
`Pennsylvania within the meaning of Section 1124 of the Pennsylvania Trademark
`
`Act, and were famous prior to the date of The Cookie Department’s adoption and
`
`use of similar conical shaped images in its logo, packaging, and in marketing and
`
`advertising for its cookie products.
`
`73.
`
`The Cookie Department’s conduct, as described above, is diluting and
`
`will dilute the distinctive quality of Hershey’s famous KISSES Marks, thereby
`
`lessening the capacity of those marks to identify and distinguish products marketed
`
`and sold by Hershey under those marks.
`
`74. On information and belief, The Cookie Department’s acts of
`
`trademark dilution have been done willfully and deliberately and The Cookie
`
`Department has profited and been

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket