IP Law Daily, TRADEMARK NEWS: Mars sues Hershey for infringing MALTESERS chocolate-covered malt ball mark, (Apr 17, 2014)

By Peter Reap, J.D., LL.M.

Mars, Inc., has filed suit in the federal district court in Alexandria, Virginia, accusing rival candy company Hershey of engaging in a scheme to hinder Mars from selling its world-famous MALTESERS candy in the United States by “sporadically pass[ing] off WHOPPERS candy” under Hershey’s MALTESER mark.

According to the complaint, Hershey purported to buy the U.S. rights to the trademark MALTESER in the late 1990’s from a third party (which had itself improperly registered it) in order to block Mars from selling MALTESERS candy in competition with Hershey’s WHOPPERS candy, also a chocolate-covered malt ball, in the United States. Since then, Hershey has made bad faith, token use of the MALTESER mark merely to reserve rights in the name and has pursued a campaign of deception in the USPTO. This campaign caused the USPTO to allow Hershey to maintain its MALTESER registrations, despite the fact that Hershey has no bona fide use of the mark in commerce.

Furthermore, as part of its campaign, Mars alleges that Hershey “helped itself to Mars’ well-known MALTESERS packaging, copying the distinctive, all-red color scheme.” Upon tasting the Hershey product and realizing that he or she had been duped, one consumer put it this way: “One taste and I could not believe what I purchased!…These are not Maltesers by Mars—they are MALTESER by Hershey…These are a cheap knockoff by Hershey that wasn’t very cheap!”

The complaint details, on information and belief, that to the extent Hershey has made token, bad faith use of MALTESER to reserve a right to the name, those sales have been of Hershey’s WHOPPERS candy. On information and belief, Hershey has placed pieces of WHOPPERS candy into MALTESER packaging and sold it as MALTESER candy, without disclosing to consumers that they were actually purchasing WHOPPERS.

The complaint includes claims under the Lanham Act for trademark infringement, trade dress infringement, unfair competition, false designation of origin, and misrepresentation of source. It also includes a claim seeking cancellation of Hershey’s MALTESER mark under the Lanham Act. The complaint also includes claims under state laws.

Mars requests injunctive relief, damages, including treble damages and punitive damages, and an award of Mars’ costs and attorney fees.

The complaint in Mars, Inc. v. The Hershey Company, Case No. 1:14-cv-00399-LO-TCB, was filed April 15, 2014.

Attorneys: Mary D. Hallerman (McDermott Will & Emery LLP) for Mars, Inc.

Companies: Mars, Inc.; The Hershey Company

News: Trademark VirginiaNews