“Big Chocolate” Gets Injunction Against Whack-A-Mole Senator; Trademark “Services” Include Political Activities

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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Last week, Judge William Quarles of the District of Maryland issued an injunction preventing Maryland Republican State Senator Steve Hershey from using his own campaign literature. The case was brought by the Hershey Chocolate Company, which alleged that the Senator’s campaign poster and other materials infringed the famous confectioner’s trade dress. The lawsuit must have come as no surprise to Senator Hershey because, prior to this, the parties had been playing trademark whack-a-mole for about a dozen years.

Big Chocolate Whack-a-Mole

In 2002, Mr. Hershey ran for County Commissioner, using a brown campaign poster with bold white font reminiscent of the chocolatier’s trade dress. The Chocolate Company complained, but the campaign was over so soon that the issue apparently just went away.

2In 2010, Mr. Hershey ran for Maryland State Delegate, using a similar design. The Chocolate Company complained again, but agreed to let him use his already-printed campaign materials as long as he stopped after that. But he didn’t stop.

By 2014, State Delegate Hershey had become State Senator Hershey. For his 2014 campaign, he returned to the chocolate bar-ish motif. The Chocolate Company brought suit on June 6, 2014 for trademark infringement, trademark dilution and false designation of origin, and requested a preliminary injunction. Senator Hershey countered by proposing a new design, one which included the same colors and font with the slogan “Our Senator, not Big Chocolate . . . we’re not confused.” The Chocolate Company was unimpressed and continued to pursue the injunction.

The Court’s Ruling

3On July 17, 2014, Judge Quarles granted the Chocolate Company’s motion, stating that “although the Court agrees that the public is not likely to confuse the Senator with a candy bar, the confusion requirement also encompasses confusion with respect to sponsorship or affiliation,” and there was a likelihood of such confusion here.  The Court also rejected Senator Hershey’s argument that he did not use the mark “in connection with the sale . . . or advertising of goods and services,” citing recent case law (notably Radiance Foundation, Inc. v. NAACP, which we have previously discussed here) interpreting the term “services” to encompass political activities. The injunction prevents Senator Hershey “from using a design in predominately dark brown or maroon with the word HERSHEY or HERSHEY’S, or the words on any background color in a font substantially similar to the Hershey trade dress . . .”

Meanwhile, despite the controversy, Senator Hershey won his party primary on June 24, 2014, a few weeks before the injunction issued.  The general election will be held in November.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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