Photo by Ashley Kirk (Unsplash)

Meena Alnajar is an IPilogue Writer, IP Innovation Clinic Fellow, and a 2L JD Candidate at Osgoode Hall Law School.

On September 28, 2021, The Hershey Co. chocolate company (“Hershey”) filed a lawsuit against Californian cookie maker The Cookie Department Inc. (“Cookie Department”) for copying Hershey’s famous Kisses shape. The design of Hershey’s cone-shaped small chocolate “Kisses” has been a registered trademark with the United States Patent and Trademarks Office (USPTO) since 1996. Hershey alleges in their complaint that Cookie Department released packaging and marketing materials for cookie products with the same conical shape. Cookie Department rejects this claim, stating that the shape used was the “universally known depiction of a chocolate chip.” When it comes to food designs, how far can a trademark go?

This case is one of many battles between Cookie Department and Hershey. Last December, Cookie Department accused Hershey-owned company One Brands LLC of copying one of their trademarks in a California federal court lawsuit. One Brands sold a product labelled “Tough Cookies Only” which Cookie Department argued infringed on its “Tough Cookie” trademark. In response, on August 28, Hershey sent a cease-and-desist order on its Kisses trademark, which led to the September 28 lawsuit.

Hershey’s Kisses trademark may not be considered inherently distinctive since Kisses look like any other chocolate chip on the shelf, making Hershey’s Kisses a descriptive good rather than a mark registrable on the USPTO’s Principal Register. Under U.S. trademark law, a “lack of inherent distinctiveness” is a common reason for the USPTO to reject a trademark registration—so how was the possibly indistinctive Kisses mark registered?

Hershey’s Kisses trademark has specified dimensions of 7/8 of an inch in height and 15/16 of an inch in diameter, perhaps to ensure the Kisses are a distinct shape in comparison with other smaller chocolate chips on the shelf. In establishing a potentially unique, unusual mark such as the Kisses’ specific dimensions, the trademark could be eligible for registration due to its inherent distinctiveness.

A trademark can be “almost anything” so long as it indicates the source of one’s goods and services; shapes are often deemed as “non-conventional” or “unusual” trademarks. Some choose to register shapes because they are fast, visual source identifiers. Further, registering a specific shape ensures that if another business requires said shape, they can only go to one maker. However, the exclusive rights over a shape can prove problematic. For example, in 2019, Hershey’s Kisses were manufactured with broken tips leaving many bakers upset by the quality. Yet, bakers likely had no other option but to utilize Hershey’s broken Kisses, because no one else could make them without being subject to a possible trademark infringement suit.

The current Cookie Department and Hershey battle does not appear to have a clear winner. Hershey’s recent lawsuit requires examining whether The Cookie Department’s use of the chocolate chip symbol could create a likelihood of confusion as to which brand, Hershey or Cookie Department, is the source of the Cookie Department product. On the one hand, Cookie Department argues that they have never sold chocolate or confectionary products in direct competition with the Hershey’s Kisses product line. Therefore, there may only be a minimal likelihood of confusion between the two marks. In addition, the chocolate chip’s shape is a known shape in baking for over eighty years. With this level of consumer recognition, Cookie Department may challenge the overall validity of the Hershey’s Kisses mark. Further, Hershey did not complain about Cookie Department’s products that used chocolate chips until Cookie Department filed the first complaint. The current complaint could therefore be conceived as retaliative, rather than protective of the Hershey’s Kisses trademark.

Conversely, Hershey is a well-known brand, first establishing the Hershey’s Kiss in 1907 and now having many registered marks to further protect its popular confectionary designs. The specific dimensions and widespread marketing can lead consumers to associate a particular chocolate chip shape with the Hershey brand, therefore possibly constituting proof of distinctiveness of Hershey’s Kisses, affirming the mark’s validity, and warranting Hershey’s broad scope of trademark protection in this lawsuit. With justifications for both parties use of a chocolate chip mark, this case highlights the challenges of creating a strong, delicious, and distinctive non-conventional trademark.