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April 23, 2014

Shaw Industries Files Declaratory Judgment Action Against Hershey Over KISSES® Trademarks

In a case that has already drawn considerable publicity, carpet giant Shaw Industries Group, Inc. ("Shaw"), of Dalton, Georgia, filed a complaint in the Northern District of Georgia against The Hershey Company, of Hershey, Pennsylvania, and Hershey Chocolate and Confectionary Corporation, of Wheat Ridge, Colorado (collectively, "Hershey"), asking the Court to enter a declaratory judgment that Shaw's use of the term "Chocolate Kiss" for one of its carpet colors does not infringe or dilute Hershey's KISSES® and HERSHEY'S KISSES® trademarks.[1]

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According to the complaint, Shaw, a worldwide manufacturer of carpet, rugs, and flooring, has used the name "Chocolate Kiss" in connection with a certain carpet color for over 20 years. Shaw contends that it plans to phase out the "Chocolate Kiss" color name in June of 2013.[2] On December 19, 2012, counsel for Hershey sent a letter to one of Shaw's distributors demanding that the distributor cease use of the "Chocolate Kiss" color name in connection with carpets. After a brief letter writing campaign, Shaw determined that "in view of Defendants' specific and direct threats of trademark infringement and dilution contained in the letters dated December 19, 2012 and January 24, 2013, a controversy of sufficient immediacy and reality exists with respect to Plaintiff's use of the "Chocolate Kiss" color name to warrant the issuance of a declaratory judgment." Shaw's complaint includes counts for declaration of non-infringement of Hershey's federal and common law trademarks, declaration of no dilution of Hershey's trademarks, and declaration that Hershey is precluded from obtaining relief based on the doctrines of laches and acquiescence due to the 20-year delay in asserting its rights. 

Hershey has been involved in numerous suits over its trademarks and trade dress. Several weeks ago, a New Jersey court delivered a marginal win for Hershey, cancelling a competitor's SWISSKISS mark for candies, but holding that the SWISSKISS mark did not infringe or dilute Hershey's KISSES® mark.[3] In another case, Hershey successfully brought a trade dress dilution claim against a furniture company over a delivery van design that depicted a "brown sofa emerging from a red or burgundy wrapper reminiscent of a candy or chocolate bar, with its packaging torn open and mouth-watering contents exposed."[4] 

The case is Shaw Indus. Group, Inc. v. Hershey Co. et al., No. 4:13-cv-00027-HLM, United States District Court for the Northern District of Georgia, Rome Division, and is assigned to Judge Harold L. Murphy.


[1] For further coverage, see: Atlanta Business Chronicle, Rome News-Tribune, and ConfectionaryNews.com

[2] As of the time of this writing, the "Chocolate Kiss" color does not appear on Shaw's website, though it is available through other local retailers.  (See e.g.http://www.myerscarpet.com/shaw_tuftex_freedom_tower.html.)

[3] Hershey Co. et al. v. Promotion In Motion, Inc., No. 2:07-cv-1601-SDW-MCA, Slip Op., Docket No. 176 (D.N.J. Jan. 18, 2013) (Wigenton, J.).

[4] Hershey Co. v. Art Van Furniture, Inc., No. 08-14463, 2008 WL 4724756 (E.D. Mich. Oct. 24, 2008).

Copyright © 2014 Womble Carlyle Sandridge & Rice, PLLC. All Rights Reserved.

About the Author

Preston H Heard, Womble Carlyle Law Firm, Intellectual Property Attorney
Partner

Preston Heard is an experienced patent litigation attorney who represents clients in a variety of industries, including the mechanical, computer and chemical sectors, in patent-related disputes.

 A registered patent attorney, Preston has represented patent clients in U.S. District Court in numerous states, as well as before the U.S. International Trade Commission. He works with patent owners to devise overall strategies to protect and enforce patent rights and to assess potential patent-related claims. He also works with clients to develop effective defenses against patent...

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