In The Hershey Company v Art Van Furniture Inc (Case 08-cv-14463, October 21 2008), the US District Court for the Eastern District of Michigan has granted The Hershey Company’s motion for a temporary restraining order and preliminary injunction on the grounds that Art Van Furniture Inc’s delivery truck decoration showing a chocolate-brown sofa emerging from a candy bar wrapper was likely to dilute the distinctive quality of Hershey’s famous trade dress. However, the court rejected Hershey’s arguments as to a likelihood of confusion.
Hershey is North America’s largest manufacturer of chocolates and confectionery products. Although Hershey offers a wide variety of chocolate and other candy products, it is arguably bestknown for its signature milk chocolate bar that comes wrapped in a sleeve of shiny tinfoil and a brown outer wrapper, and displays the HERSHEY’S mark in white block lettering. Hershey has used virtually the same trade dress for its chocolate bars for over a century.
Art Van is the largest furniture retailer in Michigan, operating dozens of stores, a website and a fleet of delivery trucks. On October 10 2008 Art Van launched an advertising campaign that invited visitors to its website to vote for their favourite truck decoration from 10 proposed designs on its website. The winning design was intended to be displayed on Art Van’s delivery vehicles. One of these designs, the 'couch bar', was “an image of a brown sofa emerging from a red and/or burgundy wrapper”. The outer wrapper of the bar featured the words 'Art Van' (in white block lettering) and was peeled open to expose the chocolate-brown leather sofa and the inner sleeve, made unmistakably of silver tinfoil.
The court began by rejecting Hershey’s likelihood of confusion argument. Although the court found that Art Van’s 'couch bar' intentionally resembled Hershey’s highly distinctive trade dress, it determined that:
“the lack of relatedness between the parties’ goods and services, the difference in marketing channels used and the varying degrees of care purchasers are likely to exercise when buying the parties’ products suggest that consumer confusion is unlikely.”
In balancing the relevant factors, the court found it unlikely that:
"[Art Van’s] truck design will cause consumers to believe that Art Van is somehow affiliated or associated with Hershey, or that customers will patronize Art Van’s stores or purchase its products due to confusion."
On the other hand, the court granted Hershey’s motion with respect to dilution, finding a likelihood that Art Van’s use of the 'couch bar' design would cause dilution of Hershey’s trade dress for its chocolate bars. The court easily found that Hershey’s trade dress is famous and distinctive based on:
- its long-term use;
- the millions spent by Hershey on advertising its candy bar every year; and
- the iconic status of the classic Hershey’s bar, which the court noted is “on the same plane as Coca-Cola”.
Further, the court accepted Hershey’s assertion that Art Van intended to “create an association” with Hershey’s mark and found that the 'couch bar' design bore an “unmistakable resemblance” to Hershey’s line of chocolate bars. In granting the temporary restraining order and preliminary injunction, the court also found that any potential harm to Art Van would be limited, as removing the 'couch bar' from its website would not spell the end to its contest or its advertising campaign.
Art Van also advanced a theory of parody as a defence to Hershey’s claims. However, the court rejected this defence as lost in a comedic no-man’s land, finding Art Van’s 'couch bar' to be “funny, but [...] not biting”, and “neither similar nor different enough to convey a satirical message”.
Therefore, although the court found Hershey’s argument as to a likelihood of confusion to be - at best - unappetizing, Hershey garnered a sweet victory based on its arguments of dilution.
Susan M Natland and Jeffrey H Larson, Knobbe Martens Olson & Bear LLP, Irvine