Hershey v. Ferrero: Two Confectionary Giants Face Off at the TTAB

By Josh Gerben, Esq.

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.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.