DW Plays Role in Victory for the Hershey Company

DW Plays Role in Victory for the Hershey Company

1/7/2009
By: Frank R. Ortiz Dickinson Wright attorneys Frank R. Ortiz, and Jason R. Klingensmith, recently obtained a significant victory for The Hershey Company, when a federal court in Detroit blocked furniture retailer Art Van Furniture from using a "couch in a candy wrapper" design to promote its business. Art Van sponsored a promotion that gave visitors to its web site the opportunity to select a new design for the company's furniture delivery trucks. Among the designs offered was a chocolate brown sofa emerging from a candy bar wrapper bearing "Art Van" in plain block letters. The original design used a dark brown wrapper with exposed foil ends. Art Van changed the color to red after Hershey challenged the design. On behalf of Hershey, Dickinson Wright filed a complaint and an emergency motion for a temporary restraining order and preliminary injunction on October 21, 2008 alleging trademark infringement, false association, sponsorship and approval, trademark dilution by blurring, unfair competition, and common law conversion. On October 24, U.S. District Judge Victoria Roberts enjoined the use of the offending design, finding that Hershey was likely to succeed on its claim that Art Van's use of the candy wrapper device diluted the distinctive value of Hershey's famous brown and silver foil candy wrapper design. Unlike trademark infringement, dilution by blurring does not require a showing of a likelihood of consumer confusion in the marketplace, but "exists to protect the quasi-property rights a holder has in maintaining the integrity and distinctiveness of his mark." Dilution by blurring occurs when the defendant makes commercial use of the plaintiff's famous mark or a modification of it, thus impairing the mark's distinctiveness and ability to serve as a unique identifier of the plaintiff's products. In order to establish its claim of dilution by blurring, Hershey was required to prove the following five elements - the senior mark must be: (1) famous and (2) distinctive; (3) use of the junior mark must be in commerce; (4) have begun subsequent to the senior mark becoming famous; and (5) be likely to cause dilution of the distinctive quality of the senior mark. Only the last factor was in real controversy. To resolve this dispute the court applied the six criteria set forth in the Trademark Dilution Revision Act of 2006 ("TDRA")(1). The court found that factors two through four were easily met. The court concluded that the Art Van couch bar design was similar (factor 1) to the packaging of Hershey's products (including a dark chocolate bar with a red label) and that Art Van intended to create an association with the Hershey's mark (factor 5), but it was less clear whether such an association had in fact been made (factor 6). Nevertheless, the court found that Hershey demonstrated a likelihood of succeeding on its dilution by blurring claim and enjoined Art Van from using the couch bar design. The court also rejected Art Van's "parody defense," finding that Art Van was not attempting to comment on Hershey's mark but was instead essentially commercially exploiting it. _______________________________________________________________ (1.)The TDRA provides that, in determining whether or not dilution by blurring is likely, all relevant factors should be considered, including the following: (i) The degree of similarity between the mark or trade name and the famous mark; (ii) The degree of inherent or acquired distinctiveness of the famous mark; (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (iv) The degree of recognition of the famous mark; (v) Whether the user of the mark or trade name intended to create an association with the famous mark; (vi) Any actual association between the mark or trade name and the famous mark.
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