Court: District Court, D. Maryland; July 17, 2014; Federal District Court
Hershey Company and Hershey Chocolate Confectionery Corporation (collectively "Hershey") filed a lawsuit against Friends of Steve Hershey, Senator Steve Hershey, and associated parties ("the Defendants") for trademark infringement and related claims. The Plaintiffs are seeking a preliminary injunction, which has been granted after a hearing on July 16, 2014.
Hershey, established in 1894, owns significant trademark rights to its iconic "Hershey Trade Dress," characterized by a dark brown or maroon background and light-colored font for "HERSHEY’S." This Trade Dress has been in use for over a century, supported by substantial advertising expenditures and annual retail sales exceeding one billion dollars. Market research indicates over 90% brand awareness among U.S. consumers.
Senator Steve Hershey has previously utilized designs in his political campaigns that closely resemble the Hershey Trade Dress. In 2002, during his county commissioner campaign, he used similar design elements, prompting Hershey to request a cessation of such use, which he complied with after the election. In 2010, while running for state delegate, he initially used similar designs but was allowed to continue for the primary election under the condition he would modify them for the general election.
In 2014, Senator Hershey's campaign for the state senate employed a logo featuring a dual-tone brown background with "HERSHEY" in white font, raising concerns from Hershey about the similarity to their Trade Dress. Attempts to resolve the dispute were made, but public and media attention highlighted the resemblance between the campaign materials and Hershey's branding.
On June 6, 2014, the Plaintiffs initiated a lawsuit against the Defendants for federal trademark infringement and breach of contract. Following this, on June 16, 2014, the Plaintiffs requested a preliminary injunction. The Defendants responded by filing a motion to dismiss and opposing the injunction on July 3, 2014. Subsequent exchanges included the Defendants proposing a modified sign design on July 7, 2014, which the Plaintiffs addressed in their response. The Plaintiffs later sought to submit supplemental evidence featuring signs associated with Senator Hershey.
The analysis section outlines the standard for granting a preliminary injunction, emphasizing its rarity and the significant burden placed on the movant, who must demonstrate: likelihood of success on the merits, likelihood of irreparable harm, a favorable balance of equities, and that the injunction serves the public interest. The Plaintiffs aim to prevent the Defendants from using any similar trade dress or trademarks associated with Hershey, as well as seeking the removal of infringing content from the internet and physical signage.
In terms of trademark infringement, the Plaintiffs reference Section 32 of the Lanham Act, detailing the necessary elements to prove their claim: ownership of a mark, the Defendants' use of the mark in commerce, and consumer confusion likely resulting from that use. Additionally, trade dress infringement is addressed, which considers the overall image of the Plaintiff's product and how it compares to the Defendant's offerings.
Plaintiffs own multiple federal registrations for the Hershey Trade Dress, establishing their rights under the Lanham Act's jurisdictional requirement. The Defendants challenge the second element of the infringement claim, asserting that their campaign signage, which uses "HERSHEY" and features distinct colors and designs, does not constitute use of the mark. However, minor differences do not preclude an infringement claim if the overall design is substantially similar. Legal precedent dictates that marks need only be sufficiently similar, with emphasis on dominant elements. Section 32 of the Lanham Act prohibits any use of a registered mark or its imitation that could confuse consumers.
Regarding likelihood of confusion, the Defendants argue their design is unlikely to cause confusion about source or sponsorship. The Fourth Circuit identifies nine relevant factors for this determination, including the strength of the plaintiff's mark, similarity between marks, and consumer sophistication. The Hershey Trade Dress is considered strong and distinctive, supported by extensive advertising, significant sales, and high consumer awareness—over 90% among U.S. consumers. A comparison reveals substantial similarities between the Hershey Trade Dress and the Defendants’ promotional signs, particularly in font, color, and layout. The Maryland flag's subtle integration does not effectively differentiate the design, and the spelling variation between "HERSHEY" and "HERSHEY’S" does not diminish the evident similarity between the two designs.
Defendants argue that no similarity exists between their campaign and Hershey's promotional activities, claiming this eliminates any potential for public confusion. While the court acknowledges that the public is unlikely to confuse a senator with a candy bar, it emphasizes that confusion regarding sponsorship or affiliation is also pertinent. The public's belief that a trademark owner endorses a trademark's use fulfills the confusion requirement, as demonstrated in Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd. Hershey's nationwide advertising, including in Senator Hershey's district, could lead the public to mistakenly believe in an affiliation due to the similar campaign design. Although actual confusion evidence is not requisite, Plaintiffs have provided anecdotal evidence supporting their claims.
Defendants also contend they did not use the mark in connection with goods or services, but courts interpret "services" broadly, including political activities. The Defendants' use of the Hershey Trade Dress to promote a political candidate and solicit donations qualifies as use in connection with services under the Lanham Act.
Regarding First Amendment protections, the court finds that the Defendants' use does not qualify, as it associates a political candidate with a consumer brand rather than serving as parody or commentary. Consequently, this use is not protected by the First Amendment.
The Plaintiffs have satisfactorily demonstrated a likelihood of success on their trademark infringement claim, negating the need to evaluate other claims. They are also likely to suffer irreparable harm due to the Defendants’ ongoing use of Hershey’s Trade Dress. In trademark infringement cases, irreparable harm is typically presumed when unlawful use and consumer confusion are established. Here, the potential for public confusion regarding Hershey's affiliation with Senator Hershey further indicates that Hershey's reputation is at risk of loss.
The balance of equities favors the Plaintiffs, who demonstrate likely irreparable harm from the Defendants' unauthorized use of Hershey Trade Dress. The Defendants face only the cost of producing new campaign materials, which is manageable given the upcoming general election is four months away. They have not substantiated claims that an injunction would hinder voters' access to essential information, nor have they shown that critical voter information relies on the Hershey Trade Dress. Defense counsel indicated that the election is not expected to be highly contested, further minimizing any potential harm from changing materials. Any harm to the Defendants would be self-inflicted, which is outweighed by the damages from trademark infringement.
The public interest is also served by preventing confusion stemming from trademark infringement. The Defendants argue that a preliminary injunction would restrict voter access to candidate information, but they fail to identify any specific information that would be lost. The injunction would only prevent the use of confusingly similar designs while allowing the Defendants to communicate using non-infringing materials. The public has a vested interest in clarity regarding the relationship between Senator Hershey’s campaign and the Hershey Company.
In summary, the Plaintiffs' motion for a preliminary injunction is granted due to the likelihood of success on their trademark infringement claim. The Defendants are prohibited from using designs that resemble the Hershey Trade Dress and must remove all infringing materials from the internet and public display within five days.
The Plaintiffs' motion for a preliminary injunction has been granted based on five claims against the Defendants: 1) infringement of a federally registered trademark under 15 U.S.C. § 1114(1)(a); 2) false designation of origin and endorsement under 15 U.S.C. § 1125(a); 3) trademark dilution under 15 U.S.C. § 1125(c); 4) common law trademark infringement; and 5) breach of contract. The court cited relevant case law, noting that the trademark statute prohibits any commercial use of a registered mark that is likely to cause confusion. The term "use in commerce" is interpreted broadly under Congress's authority and is jurisdictional in nature. The court emphasized that actual confusion need not be shown by the trademark owner. The Defendants' proposal to include a disclaimer with their signage was deemed insufficient to mitigate confusion regarding Hershey's affiliation with Senator Hershey. The court found that the Plaintiffs demonstrated a likelihood of success on their trademark infringement claim, making further examination of the other claims unnecessary. The unauthorized use of the Plaintiffs' trademarks has resulted in irreparable harm, loss of control over business reputation, potential for significant consumer confusion, lack of adequate monetary remedies, and damage to goodwill and reputation.
