Trademark Infringement: A Kiss of Death? - Klein Moynihan Turco LLP

Trademark Infringement: A Kiss of Death?

The proverbial battle of David versus Goliath is currently unfolding in United States District Court for the Northern District of California. The Cookie Department, Inc. (“Cookie Department”), a California cookie maker, is embroiled in trademark litigation with sweets superpower, The Hershey Company (“Hershey Co.”). Both allege that the other has engaged in trademark infringement. The marks at issue include the iconic Hershey’s Kisses “Kiss” image and Cookie Department’s TOUGH COOKIE trademark.

On August 31, Cookie Department filed suit 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”). The case is styled The Cookie Department, Inc. v. The Hershey Company, et al., Case No. 3:21-cv-06743-SK.

In its complaint, Cookie Department alleges that Hershey “suddenly” seeks to prevent Cookie Department from continuing to offer its goods for sale using “stylized chocolate chip teardrop imagery.” According to the complaint, the image at issue has been used by Cookie Department since 2009, exclusively for the sale of cookie products.

Cookie Department engages in the development, production, advertising, and sale of cookie products. Cookie Department 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.

Prior to Hershey’s allegations and threat of litigation, it 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. See 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.

What is the basis for a trademark infringement claim?

Trademark Law

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.

Business owners often find themselves the subject of trademark infringement claims even when they have the best of intentions. Accordingly, prior to going to market with a brand, it is recommended that businesses consult with knowledgeable trademark lawyers so that they are apprised of potential legal issues.

If you are interested in learning more about this topic or require assistance in connection with trademark filings and/or enforcement, please e-mail us at, or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

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Photo by Madison Kaminski on Unsplash

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David Klein

David Klein is one of the most recognized attorneys in the technology, Internet marketing, sweepstakes, and telecommunications fields. Skilled at counseling clients on a broad range of technology-related matters, David Klein has substantial experience in negotiating and drafting complex licensing, marketing and Internet agreements.

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