Hershey Co. has threatened a trademark infringement lawsuit against a California keto-cookie brand known as The Cookie Department. The alleged infringement stems from a shape that most of us know (and some of us love), the iconic teardrop shape of a chocolate chip.

As part of its trademark infringement claim, Hershey asks that The Cookie Department:

• Halt using the chocolate chip shape in its packaging and online map symbols
• Hand over profits received through this alleged infringement
• Pay for additional financial damages to Hershey

However, there is more than meets the eye to this story.

Why Now, Hershey?

The Cookie Department has been displaying the chocolate chip symbol on its wares since 2009. Why would Hershey choose to act on infringement now, 11 years later?

It appears that Hershey’s infringement claim might actually be retaliatory. 

The Cookie Department filed a lawsuit in December 2020 against the Hershey-owned One Brand of protein bars when they used the phrase TOUGH COOKIES ONLY® on a protein bar package. 

The Berkeley-based company contend that their own TOUGH COOKIE® mark came first. Their trademark was registered in 2012, while Hershey did not acquire One until 2019. 

The mediation for the lawsuit involving the infringement of TOUGH COOKIE® was scheduled for mid-September 2021. Hershey sent its letter to The Cookie Company threatening action for trademark infringement involving the chocolate chip images in late August/early September 2021.

The Cookie Department Rallies

The Cookie Department has called out Hershey’s action as a “bad faith” bid for “leverage” in the TOUGH COOKIE® lawsuit.

They argue several points regarding the disputed teardrop shape:

• Its use has been ubiquitous in depictions of baking since the 40s (pre-Hershey mark).
• Chocolate chips are formed by the physics of how they’re manufactured, so to change the shape in depiction would be odd.
• The Cookie Department uses tiny chocolate chips in its packaging artwork, as part of a larger illustration of a cookie; lacking the iconic plume and minuscule, that is part of the Chocolate Kisses images.
• The Cookie Department has never made chocolate candy or confectioneries. While both marks might be in the “food” class for trademarks, their products could not be confused by consumers.

For these reasons, The Cookie Department asserts that the shape of a chocolate chip is “inherently weak” as a mark. By filing their declaratory judgment complaint with the US District Court for the Northern District of California, The Cookie Department is asking the court for a ruling of non-infringement before Hershey gets the ball rolling to file a claim of trademark infringement.

Wondering if your trademark has been infringed or if your trademark can be registered contact an intellectual property lawyer for advice on how to protect your trademark.