Hershey v. Ferrero: Two Confectionary Giants Face Off at the TTAB
On January 12, 2015 the Hershey Chocolate & Confectionery Corporation filed a notice of opposition with the Trademark Trial & Appeal Board against a trademark filed for ‘KUSSCHEN’, which means, “a little kiss.”
Hershey is one of the most well-known chocolate companies in the United States and produces the popular HERSHEY’S KISSES chocolates. Ferrero oHG mbH, the company which filled the ‘KUSSCHEN’ trademark, is a German confectionery company most well-known in the United States for their Ferrero Rocher hazelnut pralines, packaged in gold foil. In February of 2014 Ferrero filed a §1(b) intent-to-use application for the design mark.
KÜSSCHEN is a German word that translates to “a little kiss” or a “peck on the cheek.” Ferrero provided the English translation as “little caress on the lips,” likely to distance itself as much as possible from Hersey’s “kiss” marks.
Hershey, however, noticed Ferrero’s application (a clear credit to Hershey’s robust trademark monitoring service), and, filed an opposition alleging a likelihood of confusion with its family KISS-formative marks, including KISSES, MINI KISSES, and LOVE & KISSES, among almost forty others. The Notice of Opposition filed by Hershey also alleges that Ferrero’s KÜSSCHEN would dilute Hershey’s famous KISSES mark. As an interesting note, in April 2000, the TTAB held the Hershey’s KISSES mark “is, in fact, a famous trademark for [Hershey’s] chocolate candy.” In re Homestead, Serial No. 75/183278, at 6 (TTAB Apr. 4, 2000). The decision was mostly based on a survey in which almost 80% of consumers recognized the KISSES brand.
The question remains, will Hershey succeed in preventing the registration of KUSSCHEN? It will be interesting to see if this case goes to trial, or, if it is settled by the parties.
Josh Gerben, Esq.
Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.
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