Trademark Infringement or Harrassment?

The Hershey Co., maker of KISSES and owner of a federally registered trademark for the same with the USPTO, sued another candy manufacturer, Cerreta Candy Co., for trademark infringement.  Hershey claims that Cerreta’s use of “The Sweetest Place in Arizona” infringes upon its “The Sweetest Place on Earth” slogan, also a federally registered trademark with the USPTO.  In addition, Hershey claims Cerreta’s mints have a shape nearly identical to its KISSES.

Hershey’s actions have apparently left a bad taste in Cerreta’s mouth, according to their response:

In a response filed Friday, Cerreta claims Hershey "had no good faith intention of resolving the issues amicably and that it proceeded with this litigation for the purpose of harassment, intimidation and restraint of trade."

While trademark infringement defenses will undoubtedly be offered by Cerreta, this represents an example of a company’s efforts to strike back at what it deems to be an overzealous trademark owner.  A claim for harassment allows Cerreta to go on the offensive and to immediately communicate to the judge, and media, that it believes Hershey’s claims are not only meritless, but also an unnecessary nuisance.  Trademark owners, like Hershey, bringing trademark infringement claims and litigation may be subjected to counterclaims like this more often depending upon the outcome of this case.  Regardless, given a trademark owner’s affirmative duty to protect its trademark or possibly lose its rights, risks of counterclaims may be a necessary ingredient to arrive at the perfectly, sweet result for trademark owners like Hershey – a finding of trademark infringement.