`
`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