CLL DEFEATS HERSHEY IN EPIC TRADEMARK INFRINGEMENT AND DILUTION CASE
Cowan, Liebowitz & Latman successfully represented The Promotion In Motion Companies, Inc., the company which manufactures the popular WELCH’S FRUIT SNACKS and numerous other popular confectionery and snack items, in a litigation brought by The Hershey Company claiming infringement and dilution of Hershey’s KISSES trademark.
Following a five-day bench trial, the United States District Court for the District of New Jersey issued a 59-page opinion on January 18, 2013 finding that Promotion In Motion’s SWISSKISS chocolate candy did not violate Hershey’s trademark rights in its KISSES trademark. Promotion In Motion first sought to introduce SWISSKISS chocolates in 2004. However, Hershey claimed that the product infringed and diluted the KISSES trademark, and the parties have been litigating first in the United States Patent & Trademark Office and then in federal court since 2005.
The Court found that the SWISSKISS mark did not create a likelihood of confusion or dilution with Hershey’s KISSES trademark. The Court concluded that any similarities flowing from the shared use of the term “kiss” in both parties’ marks were overcome by numerous other distinguishing elements, including the different color scheme and Swiss theme for Promotion In Motion’s proposed product. The Court also noted that the term “kiss” has been used to describe small pieces of candy since prior even to Hershey’s launch of its KISSES product in 1907, and that Hershey has co-existed over the years in the marketplace with other candies incorporating the term “kiss.” The Court further rejected Hershey’s two market research surveys, and credited Promotion In Motion’s counter-survey showing that confusion was unlikely.
Michael G. Rosenberg, President and CEO of The Promotion In Motion Companies, indicated that the Court decision vindicated Promotion In Motion’s position throughout the case that it could create its own brand image and position that was completely different from anything associated with Hershey’s product. “I have said all along that we intended to develop our own premium Swiss chocolate product that would stand in the marketplace on its own merits, and I am pleased that the Court agreed we are free to do just that,” Mr. Rosenberg said. The Court found that there was no evidence at all to show that Mr. Rosenberg or his company had any intention of benefiting from Hershey’s goodwill in any way in developing their SWISSKISS product.