Hershey’s Chocolate Diluted By Failed Trademark Parody

By: DEAN R. KARAU

December 2008

To paraphrase Mark Twain, too much chocolate is just enough – at least for a Samuel Clemens fan and chocoholic like me.

But for Art Van Furniture, Inc., trucks that looked too much like chocolate – Hershey’s chocolate – was more than enough for The Hershey Company.

Art Van, a Michigan-based chain of furniture stores, ran a contest on its website, asking customers to vote for their favorite truck design. One of the designs appearing on the website depicted a peeled-back candy bar wrapper revealing a chocolate brown leather sofa:

The Hershey Company thought Art Van’s truck design looked too much like one of its chocolate bars. So it filed suit for trademark infringement and trademark dilution, among other claims, and asked the court for a temporary restraining order (TRO) to stop the trucks in their tracks.

The court rejected a TRO on Hershey’s infringement claim, finding that Art Van likely would be able to establish at trial that there is no likelihood that consumers would be confused into thinking that Art Van was associated with Hershey or that consumers would buy Art Van’s products thinking they were Hershey’s products.

But then it got sticky for Art Van. The court found that Hershey had established that it would likely prevail at trial on the merits of its dilution by blurring claim, and granted the TRO.

Dilution protects “famous” marks which are well-known to the general public, even in the absence of a likelihood of consumer confusion. Marks are “famous” under the dilution theory when the general public associates the mark primarily with the owner of the mark, even when it is used with products other than owner’s product. Examples of dilution by blurring would be as the result of the marketing of items such as Rolex aspirin, Chrysler shoes, or Kodak bagels. The harm to Chrysler isn’t that you will be confused and thus believe that Chrysler shoes are made by the car company, but that you begin to associate the term Chrysler with something other than cars. In other words, the strength of the Chrysler mark, that when you hear the term Chrysler you only think of the car company, is diluted if you begin to think of the shoe company, too.

In this case, the court found that Hershey’s candy bar packaging trade dress was a famous and distinctive mark, and that Art Van’s use of its truck design gave rise to an association between Art Van’s furniture and Hershey’s trade dress – dilution by blurring.

Parody is protected under the First Amendment, but in this case the court didn’t buy Art Van’s argument that it’s truck design was a protectable parody of Hershey’s product packaging.

Under the parody defense to trademark infringement, while the defendant’s mark must initially bring to mind the original mark, it must be clever enough to be clear that it is not the original and that the defendant is not associated with the trademark owner. According to the court, Art Van’s design may be funny, but is not “biting,” its similarity to Hershey’s famous trade dress is “too muted to poke fun,” yet “too transparent to evoke a generic candy bar.” Simply put, the court said that Art Van’s design was neither similar enough nor different enough to convey a satirical message.

However, the TRO was not needed. Art Van said that no delivery trucks with the chocolate bar design ever delivered furniture because, in response to Hershey’s initial contact, Art Van changed the color of its chocolate bar wrapper to red.

The take-away? To paraphrase someone more clever than me, engaging in trademark parody, particularly involving a famous mark, is a little like shooting at the king – you had better be good at it, because if you try and fail, you’ll have a big sticky trademark infringement mess on your hands.

Hershey Company et al v. Art Van Furniture, Inc., Case No. 08-cv-14463 (E.D. Mich. Oct. 21, 2008).