As demonstrated by a recent lawsuit filed by a carpet manufacturer against chocolate-giant Hershey, one has to ask how far large companies are going to go in attempt to stretch their trademark rights. What these companies want is a monopoly over their marks in every good and service.
However, trademark rights are limited in scope. The goods and services listed on a trademark registration establish the scope of the applicant’s rights in the relevant mark. This, however, does not prevent large companies from testing the boundaries.
In the lawsuit, Shaw Industries Group Inc., a carpet manufacturer owned by Berkshire Hathaway Inc., is seeking declaration that a carpet color it calls “Chocolate Kiss” does not infringe Hershey’s “Kisses” and “Hershey’s Kisses” trademarks.
Shaw has used the name “Chocolate Kiss” for a particular carpet color for over two decades without any indication of confusion between the products or the companies until December of 2012, when Hershey sent a cease and desist letter to Shaw in demanding that it stop using the “Chocolate Kiss” name. Despite Shaw’s response that it already planned to phase out the use of the “Chocolate Kiss” color name in June of 2013, Hershey demanded that it immediately stop using the term and threatened to file suit. Shaw, however, beat Hershey to the punch.
Shaw is requesting that the court issue a declaratory judgment that it is not infringing or diluting Hershey’s trademarks and that Hershey essentially agreed to its use of the name by not challenging it for twenty years. Specifically, Shaw states in its complaint that “[d]eclaratory relief is proper in this case because it will clarify and settle the actual, present dispute between the parties as to whether the plaintiffs use of the ‘Chocolate Kiss’ name violates defendant’s rights in its Kiss trademarks,” and “[i]t will allow Shaw to continue its regular business without fear of incurring further loss, as well as the uncertainty, insecurity and controversy giving rise to this action.”
Large companies such as Hershey’s are known to vigorously defend their brands and enforce their trademark rights, but one has to ask whether a carpet color name can be confused with Hershey’s trademarks. These companies are known to push their limits and test the boundaries of their rights, but require some push back by companies, such as Shaw, so they do not get out of hand.