In June, 2014, the Hershey Company (“Hershey”) brought a trademark infringement action against Colorado-based TinctureBelle, LLC. Hershey alleged that TinctureBelle infringed on numerous registered trademarks in the naming, packaging and marketing of its chocolate and confectionery products containing marijuana. TinctureBelle appeared in the action, but never filed an answer. Instead, after months of negotiation, the parties reached a settlement agreement and a final judgment was entered in the case on September 25, 2014. Although spared any monetary penalty, TinctureBelle has agreed to permanently discontinue its distribution, advertising and sale of the allegedly infringing products.
The Hershey Trademarks & Alleged Infringement
In its complaint, Hershey described its “well-known brands in the United States,” such as Hershey’s Reese’s Peanut Butter Cup, Heath Bar, Almond Joy and York Peppermint Patty products. Each of these products has associated registered trademarks, with first use in commerce dates of as early as 1922.
Marijuana-based candy products (or “edibles”) may now be sold and consumed legally in the State of Colorado. TinctureBelle used similarly colored packaging as the respective Hershey products when it marketed its edibles, such as “Hashees” (allegedly infringing upon the Reese’s Peanut Butter Cup mark), “Ganga Joy” (allegedly infringing upon the Almond Joy mark), “Hasheath” (allegedly infringing upon the Heath Bar mark), and “Dabby Patty” (allegedly infringing upon the York Peppermint Patty mark). Hershey alleged a likelihood of confusion between its products and those of TinctureBelle, as well as claims for dilution of its famous trademarks.
The Trademark Dispute Settlement
As part of its settlement, TinctureBelle “has ended all distribution, advertising, sale and other use anywhere in the world” of its allegedly infringing products. Further, TinctureBelle has agreed to provide a recall notice to all of its distributors, customers, resellers and retailers directing them to destroy any unsold inventory. Although TinctureBelle turned over all of its sales records to Hershey as part of the proceeding, Hershey will not recover any money as a result of the settlement.
Trademark infringement cases are more difficult to defend when a famous mark has allegedly been infringed upon. Hershey’s long-standing registered marks are entitled to be given strong protections in a court of law. While “parody” may be a defense in some trademark infringement actions, in this matter, the sale of goods packaged similarly to well-known products would likely have subjected the owner to serious financial penalties had it not settled early in the proceeding, as TinctureBelle did in this case.