hershey co. v. urban stash - trademark complaint.pdf

63072616 COMPLAINT

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ROBERT BARNES (State Bar No. 119515)

[email protected]

KAYE SCHOLER LLP

1999 Avenue of the Stars, Suite 1600

Los Angeles, California 90067

Telephone: (310) 788-1000

Facsimile: (310) 788-1200

PAUL C. LLEWELLYN

[email protected]

KAYE SCHOLER LLP

250 West 55th Street

New York, New York 10019

Telephone: (212) 836-8000

Facsimile: (212) 836-8689

Attorneys for Plaintiffs

THE HERSHEY COMPANY AND

HERSHEY CHOCOLATE & CONFECTIONERY CORPORATION

UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

THE HERSHEY COMPANY;

HERSHEY CHOCOLATE &

CONFECTIONERY CORPORATION,

Plaintiffs,

v.

URBAN STASH SPOT CLOTHING,

INC.; JERMARIO FIELDS,

Defendants.

Case No. 5:15-cv-2176

Complaint for:

(1) Trademark Infringement Under

15 U.S.C. § 1114

(2) Trademark Infringement and

Unfair Competition Under

15 U.S.C. § 1125(a)

(3) Trademark Dilution Under

15 U.S.C. § 1125(c)

(4) Trademark Dilution Under

Cal. Bus. & Prof. Code § 14247

(5) State Law Unfair Competition

and Trademark Infringement

Case 5:15-cv-02176-PSG-KK Document 1 Filed 10/22/15 of 25 Page ID #:1

1 63072616 COMPLAINT

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Plaintiffs The Hershey Company (“Hershey Company”) and Hershey

Chocolate & Confectionery Corporation (“Hershey Chocolate”) (together,

“Hershey”), for their complaint against Urban Stash Spot Clothing, Inc. and

Jermario Fields (together, “Urban Stash” or “defendants”) for trademark and trade

dress infringement, trademark and trade dress dilution, false designation of origin

and unfair competition, plead and allege as follows:

1. This is an action to stop Urban Stash’s willful acts of infringement and

dilution of the famous, federally registered JOLLY RANCHER® trademarks. Urban

Stash has brazenly misappropriated these trademarks (including both the JOLLY

RANCHER word mark and logo), for use on clothing items that defendants market

as “Sponsor Shirts” and “Sponsor Joggers” (thereby expressly stating that the

products are sponsored or authorized by the JOLLY RANCHER brand). These same

products also bear third party logos, some of which Urban Stash uses to glamorize

illicit drug use and drug abuse. The products are sold alongside other products that

bear references to illicit drug use and drug abuse. Urban Stash also markets clothing

products intended for children. When Hershey objected to Urban Stash’s

unauthorized use of the JOLLY RANCHER trademarks, defendants attempted to

conceal their ongoing wrongful conduct, assuring Hershey that it only had one

sample of the infringing products, that they had removed the JOLLY RANCHER

trademarks from their products, and that incorrect images bearing the JOLLY

RANCHER trademarks had been put on their website. In fact, in direct contradiction

of their representations to Hershey, defendants continue to sell so-called “Sponsor”

clothing bearing the JOLLY RANCHER trademarks, demonstrating an ongoing

pattern of willful trademark infringement and dilution.

NATURE AND BASIS OF THE ACTION

2. This action is brought by Hershey against defendants under the Lanham

Act, 15 U.S.C. §§ 1051 et seq., and parallel California statutory and common law,

seeking preliminary and permanent injunctive relief, disgorgement of profits,



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compensatory damages, punitive damages and other relief relating to defendants’

importation, distribution and sale of products that infringe and dilute the famous

JOLLY RANCHER trademarks.

3. Hershey Company is a leading manufacturer of chocolate and

confectionery products in the United States and worldwide. Hershey Company’s

subsidiary Hershey Chocolate is the exclusive worldwide licensee of the famous,

federally-registered JOLLY RANCHER trademarks, which have been in continuous

use in the United States since at least as early as 1950. Hershey Chocolate has

sublicensed Hershey Company to use the JOLLY RANCHER trademarks in the

United States and abroad. Under the terms of its license agreement, Hershey

Chocolate has the right, not subject to the approval of its licensor, to sue for

infringement of the JOLLY RANCHER trademarks.

4. Notwithstanding Hershey’s exclusive rights in the JOLLY RANCHER

trademarks, Urban Stash has advertised, offered to sell, and sold (and continues to

advertise, offer to sell, and sell) within the United States clothing products that bear

exact copies of the JOLLY RANCHER trademarks. Urban Stash promotes these

products as “Sponsor” apparel, expressly misrepresenting that the products are

sponsored or authorized by the JOLLY RANCHER brand, when they are not.

5. On information and belief, Urban Stash offers its infringing and diluting

products for sale to customers throughout the United States through its office located

in this judicial district, as well as online through various websites and media.

6. Unless such acts of trademark and trade dress infringement, trademark

and trade dress dilution, false designation of origin, and unfair competition are

enjoined, Hershey will suffer irreparable injury for which there is no adequate

remedy at law.

PARTIES

7. Hershey Chocolate is a corporation organized and existing under the

laws of the State of Delaware, with its principal place of business in Wheat Ridge,



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Colorado. Hershey Chocolate is a wholly owned subsidiary of Hershey Company

and is the exclusive worldwide licensee of the JOLLY RANCHER trademarks,

which are described more fully below.

8. Hershey Company is a corporation organized and existing under the

laws of the State of Delaware, with its principal place of business in Hershey,

Pennsylvania. Hershey Company is a major manufacturer and seller of chocolate,

confectionery and snack products. Hershey Company is Hershey Chocolate’s

sublicensee of the JOLLY RANCHER trademarks.

9. On information and belief, defendant Urban Stash Spot Clothing, Inc. is

a corporation organized and existing under the laws of the State of California, with a

place of business in Moreno Valley, California. On further information and belief,

Urban Stash Spot Clothing, Inc. is engaged in the business of creating,

manufacturing, advertising, and selling various apparel and other items, including the

infringing items at issue in this lawsuit as well as a variety of other items that

encourage and glamorize drug abuse and the use of illicit drugs.

10. On information and belief, defendant Jermario Fields is an individual

residing in the State of California, and is the founder and Chief Executive Officer of

Urban Stash Spot Clothing, Inc. On further information and belief, as alleged more

fully below, defendant Fields is personally engaged in the willfully infringing and

otherwise unlawful acts alleged herein.

11. The Court has subject matter jurisdiction over Hershey’s federal law

claims for trademark and trade dress infringement, trademark and trade dress

dilution, false designation of origin, and unfair competition claims under Section 39

of the Lanham Act, 15 U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338(a) &

(b). The Court has subject matter jurisdiction over Hershey’s state-law claims under

28 U.S.C. § 1367 and, because the amount in controversy exceeds $75,000 exclusive

of interest and costs, there is complete diversity of citizenship under 28 U.S.C.

§ 1332.



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12. The Court has personal jurisdiction over defendants because, upon

information and belief, they are present and doing business in the State of California

and this judicial district, and have distributed and offered infringing products for sale

in the State of California and in this judicial district.

13. Venue is appropriate in this Court pursuant to 28 U.S.C. § 1391 because

Urban Stash is subject to personal jurisdiction in this judicial district and because a

substantial part of the events giving rise to plaintiffs’ claims occurred in this judicial

district.

ALLEGATIONS COMMON TO ALL CLAIMS

The Federally Registered and Famous JOLLY RANCHER Trademarks

14. The inherently distinctive and famous JOLLY RANCHER trademarks

have been used since at least 1950 in connection with candy and confectionery

products. For the last nearly 20 years, JOLLY RANCHER-branded products have

been manufactured and distributed by Hershey Company.

15. Hershey Chocolate is the exclusive (even as to the licensor) worldwide

licensee of the federally registered JOLLY RANCHER trademarks and its associated

goodwill, which are owned by Huhtamaki Finance B.V. (“Huhtamaki”). Hershey

Chocolate has sublicensed Hershey Company the right to use the JOLLY

RANCHER trademarks. Huhtamaki has authorized Hershey Chocolate to enforce its

rights to the licensed marks.

16. Huhtamaki owns a number of incontestable, valid, subsisting and

existing United States trademark registrations for the mark JOLLY RANCHER and

the distinctive JOLLY RANCHER logo, as set forth below:

Mark Reg. No. Goods & Services First Use in Commerce

JOLLY RANCHER 1684586 Candy (Class 30) 6/1/1950

1923904 Candy (Class 30) 1/00/1993


https://webtms.hersheys.com/DataFiles/Pics/Jolly_Rancher_(stylized)_US_RN_1923904.jpg


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JOLLY RANCHER 3613727 Pet toys (Class 28) 10/31/2008

JOLLY RANCHER 3738162 Earphones (Class 9) 8/1/2009

JOLLY RANCHER 4220144 Cosmetics; Fragrances (Class 3)

7/19/2006

JOLLY RANCHER 4240666 Frozen confections (Class 30)

1/1/1998

JOLLY RANCHER 3310864 Soft drinks, namely carbonated soft drinks (Class 32)

1/6/2005

JOLLY RANCHER 4355550 Flavored and sweetened gelatins (Class 30)

10/30/2012

JOLLY RANCHER 3289124 Chewing gum; bubble gum (Class 30)

4/25/2007

JOLLY RANCHER 3480388 Lip balm; lip gloss (Class 3)

7/19/2006

JOLLY RANCHER 3480440 Nail polish (Class 3)

6/30/2007

JOLLY RANCHER CRUNCH 'N CHEW

4010389 Candy (Class 30) 3/31/2011

(The JOLLY RANCHER word mark, and the various iterations of the JOLLY

RANCHER logo depicted herein, are referred to collectively as the “JOLLY

RANCHER trademarks.”)

17. Hershey’s licensor, Huhtamaki, also enjoys valid and subsisting

common law rights to the JOLLY RANCHER trademarks as a result of its licensees’

extensive, continuous, and exclusive use of the marks throughout the United States

to identify JOLLY RANCHER products.

18. A picture of a Hershey’s JOLLY RANCHER brand candy product



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featuring the JOLLY RANCHER mark and logo is set forth below:

19. Hershey and its licensees also use and have used the JOLLY

RANCHER trademarks in connection with shirts and other apparel, such as the items

shown here:



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20. In addition, Hershey and its licenses also use and have used the JOLLY

RANCHER trademarks in connection with various other non-candy products,

including the goods set forth in the table of registrations above, examples of which

are depicted here:

pillows

nail polish

candles headphones



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21. Hershey’s JOLLY RANCHER brand products have been widely

advertised and sold throughout the United States for many years, and have achieved

substantial sales. Indeed, Hershey’s JOLLY RANCHER candies are one of the most

popular candy products in the country, with hundreds of millions of dollars of sales

annually in the United States alone in packaging bearing the JOLLY RANCHER

mark and logo.

22. By virtue of Hershey’s substantial sales, marketing, and use of the

JOLLY RANCHER trademarks throughout the United States in connection with the

JOLLY RANCHER candy products, apparel, and other products, and by virtue of the

inherently distinctive nature of the marks, the JOLLY RANCHER trademarks have

become famous and well known, have become distinctive of Hershey’s products, and

have come to identify and indicate the source of Hershey’s products to consumers

and the trade. The JOLLY RANCHER trademarks have developed substantial

goodwill and an excellent reputation among actual and potential purchasers and users

of the products.

Urban Stash’s Willful Infringement and Dilution of the JOLLY RANCHER

Trademarks

23. Well after Hershey’s predecessors in interest first began using the

JOLLY RANCHER trademarks for candy and other products, and after those marks

had become famous, Urban Stash commenced advertising and selling, in the United

States, clothing items that bear imitations of the JOLLY RANCHER word mark and

JOLLY RANCHER logo. These products are not authorized by Hershey.

24. As can be seen in the images below of Urban Stash’s products, the

products sold by defendants use precise copies of the JOLLY RANCHER

trademarks. As is also apparent from the photos below of the various products

offered on its website at ussclothing.com, Urban Stash is using not only the JOLLY

RANCHER trademarks without authorization, but also appears to be infringing a

number of other well-known marks, including BIC, SPRITE, FANTA, XANAX and



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others.

25. Immediately below is an image of Urban Stash’s website advertising the

“Sponsor Shirt” depicting the JOLLY RANCHER trademarks:

26. Immediately below is a detailed image of Urban Stash’s “Sponsor

Shirt,” showing Urban Stash’s copying of the JOLLY RANCHER trademarks:

27. Immediately below is an image of Urban Stash’s website advertising

Urban Stash’s “Sponsor Joggers” depicting the JOLLY RANCHER trademarks:



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28. Immediately below is a detailed image of Urban Stash’s “Sponsor

Joggers,” showing Urban Stash’s copying of the JOLLY RANCHER trademarks:

29. The JOLLY RANCHER-branded products that Urban Stash sells are

not manufactured or authorized by Hershey. Defendants have never been authorized

by Hershey or its affiliates to use the JOLLY RANCHER word mark or logo, or any

variants thereof, in connection with any products.

30. Given that defendants have copied the precise JOLLY RANCHER

trademarks for their clothing items, these products inevitably will cause confusion

among consumers as to the origin, source, or sponsorship of defendants’ products.

31. Not only do Urban Stash’s products bear exact copies of the JOLLY

RANCHER trademarks, but Urban Stash expressly advertised the products as

“Sponsor Shirts” and “Sponsor Joggers,” thereby expressly stating that the products



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are sponsored products and that the JOLLY RANCHER trademarks (and other

brands on the products) are used with the authorization and under the sponsorship of

the brand owners.

32. Defendants’ use of the JOLLY RANCHER trademarks also is likely to

dilute the distinctive quality of the JOLLY RANCHER trademarks, by lessening

their capacity to identify and distinguish Hershey’s products.

33. In addition, defendants’ use of the JOLLY RANCHER trademarks is

likely to dilute the distinctive quality of the JOLLY RANCHER trademarks, by

tarnishing those marks. Such tarnishment will occur because Urban Stash is selling

not only infringing JOLLY RANCHER-branded items, but also various items

promoting and glamorizing illicit drug use and drug abuse, as shown in the “Drugs

and Yen Hoodie” item and the “The American Way” t-shirt depicting a flag

composed of marijuana, both on Urban Stash’s website:



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34. On the same website that they have used to sell infringing JOLLY

RANCHER products and the above products, defendants also sell products intended

for children, such as the below-depicted (and presumably unauthorized) “Urban

Muppets” shirt:



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35. On information and belief, defendant Jermario Fields is an active

participant in the infringing and unlawful acts of defendant Urban Stash Spot

Clothing, Inc. By way of example, after an agent of plaintiffs placed an order on

Urban Stash’s website, the merchandise was received in a package bearing the return

address “Jermario Fields, 24040 Postal Ave # 439, Moreno Valley CA 92553-3014.”

Furthermore, when counsel for plaintiffs objected to Urban Stash’s sale of its

infringing products, as set forth below, Mr. Fields responded in furtherance of Urban

Stash’s unlawful conduct, falsely stating, inter alia, that the JOLLY RANCHER

trademarks were not being used on any items. In addition, Mr. Fields asserts on his

Facebook page that Urban Stash’s products are “my clothing line.”

Plaintiffs’ Objections and Urban Stash’s False Assurances to Conceal Their

Continued Unlawful Activities

36. On August 7, 2015, shortly after first learning of Urban Stash’s

unlawful conduct, in-house counsel for Hershey sent a message to Urban Stash via

the contact form on Urban Stash’s website, objecting to Urban Stash’s unauthorized



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use of the JOLLY RANCHER trademarks and demanding that Urban Stash promptly

agree to cease all use of those marks and any other marks connected to Hershey.

37. When Urban Stash failed to acknowledge or respond to Hershey’s

August 7 message, on August 11, 2015, outside counsel for Hershey sent a letter to

Urban Stash (by certified mail and by email), addressed to defendant Fields. The

August 11 letter reiterated Hershey’s objections to the use of the JOLLY RANCHER

trademarks, and again requested that Urban Stash cease its unlawful conduct.

38. On August 12, 2015, defendant Fields sent an email responding to the

August 11, 2015 letter from Hershey’s outside counsel, which stated in its entirety,

“We only made one sample pair your logo is now took off.” A review of the website

at that time showed that the JOLLY RANCHER trademarks had been removed from

that site.

39. Two weeks later, however, Hershey discovered that Urban Stash’s

JOLLY RANCHER-branded clothing was still being sold by Urban Stash on eBay,

and that Urban Stash was advertising and selling a “Mystery Stash Bag” on its

website and Facebook page that included the infringing “Sponsor Joggers.” Urban

Stash’s website stated that a total of 50 “Mystery Stash Bags” were available, despite

Mr. Fields’s prior assertion that Urban Stash had made only one pair of infringing

joggers.

40. On September 3, 2015, outside counsel for Hershey sent Urban Stash an

email objecting to its continued sale of infringing JOLLY RANCHER-branded

products, and demanding that Urban Stash immediately cease all such conduct,

confirm that it had done so, deliver over to counsel for Hershey all remaining

inventory of infringing products, and provide an accounting of sales and profits.

41. On September 3, 2015, at 3:31 pm, outside counsel for Hershey

received an email response from Mr. Fields that stated, in its entirety, “The wrong

pic was put up on that flyer & don't none of the sponsor joggers are shirts have jolly

ranchers on it the shirt was demo & pants was a sample.”



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42. Also on September 3, 2015, at 3:36 pm, outside counsel for Hershey

received a second email response from Mr. Fields that stated, in its entirety, “& the

mystery box just got put up there & sponsor joggers don't come in them & when our

website gets back I will have him take those pic down.”

43. A review of the ussclothing.com website and eBay the next day showed

that the JOLLY RANCHER trademarks had been removed from the website and

from Urban Stash’s eBay listings.

44. During the week of September 21, 2015, however, Hershey discovered

that Urban Stash continued to advertise and sell infringing products bearing the

JOLLY RANCHER trademarks, via Urban Stash’s Instagram account, as shown in

the Instagram posts immediately below, including a post apparently by Urban Stash

which shows the infringing joggers and a JOLLY RANCHER candy package:



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45. After seeing that Urban Stash continued to advertise the products at

issue on Instagram, Hershey arranged for outside counsel to plan an order from

Urban Stash. On October 8, 2015, counsel for plaintiffs received that order,

including a pair of “Sponsor Joggers” bearing the JOLLY RANCHER trademarks

and a “Sponsor Shirt” bearing the JOLLY RANCHER trademarks. The order was

shipped by Urban Stash in a package bearing the return address “Jermario Fields,

24040 Postal Ave # 439, Moreno Valley CA 92553-3014.”

46. To plaintiffs’ knowledge, Urban Stash continues to this day to advertise,

distribute, and sell infringing and unlawful products bearing the JOLLY RANCHER

trademarks.

47. Urban Stash’s acts are causing and will continue to cause damage and

irreparable harm to Hershey and the valuable reputation and goodwill of its licensed

marks with purchasers and consumers.



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FIRST CLAIM FOR RELIEF

Infringement of Federally Registered Marks

Under Section 32 of the Lanham Act, 15 U.S.C. § 1114

48. Plaintiffs repeat and reallege paragraphs 1 through 47 of this Complaint,

as if fully set forth herein.

49. This claim is for the infringement of trademarks registered in the United

States Patent and Trademark Office, pursuant to Section 32 of the Lanham Act, 15

U.S.C. § 1114, as amended.

50. The marks used by defendants, as described above, are confusingly

similar to, and are colorable imitations of, the federally registered JOLLY

RANCHER trademarks (Reg. Nos. 1684586, 1923904, 3613727, 3738162, 4220144,

4240666, 3310864, 4355550, 3289124, 3480388, 3480440 and 4010389), and

infringe those respective federally registered trademarks.

51. Defendants’ unauthorized use of the aforementioned marks is likely to

cause confusion and mistake and to deceive the public as to the approval,

sponsorship, license, source, or origin of defendants’ products.

52. On information and belief, defendants’ acts of trademark infringement

have been done willfully and deliberately, and defendants have profited and been

unjustly enriched by sales that defendants would not otherwise have made but for

their unlawful conduct.

53. Defendants’ willful and deliberate acts described above have caused

injury and damages to plaintiffs, and have caused irreparable injury to plaintiffs’

goodwill and reputation, and, unless enjoined, will cause further irreparable injury,

whereby plaintiffs have no adequate remedy at law.



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SECOND CLAIM FOR RELIEF

Trademark and Trade Dress Infringement, False Endorsement,

False Designation of Origin and Unfair Competition

Under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)

54. Plaintiffs repeat and reallege paragraphs 1 through 53 of this Complaint


55. This claim is for trademark and trade dress infringement, false

endorsement, false designation of origin, and unfair competition in violation of

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

56. By their unauthorized use of the marks and trade dress described above,

and by their advertisement and promotion of their unauthorized JOLLY RANCHER-

branded products as “Sponsor Shirts” and “Sponsor Joggers,” defendants have (i)

infringed the JOLLY RANCHER mark and the JOLLY RANCHER logo; (ii)

engaged in false endorsement; (iii) falsely designated the origin of their products,

and (iv) competed unfairly with plaintiffs; all in violation of Section 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a).

57. On information and belief, defendants’ acts of trademark infringement,

trade dress infringement, false endorsement, false designation of origin and unfair

competition have been done willfully and deliberately, and defendants have profited

and been unjustly enriched by sales that would not otherwise have been made but for



injury and damages to plaintiffs, have caused irreparable injury to plaintiffs’





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THIRD CLAIM FOR RELIEF

Trademark and Trade Dress Dilution

Under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c)



60. This claim is for the dilution of trademarks and trade dress, pursuant to

Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).

61. The JOLLY RANCHER mark and JOLLY RANCHER logo are each

distinctive and famous within the meaning of Section 43(c) of the Lanham Act, 15

U.S.C. § 1125(c), and were distinctive and famous prior to the date of defendants’

conduct challenged herein.

62. Defendants’ conduct, as described above, is likely to dilute and is

diluting the distinctive quality of the famous JOLLY RANCHER mark and JOLLY

RANCHER logo, in that defendants’ conduct is likely to create and has created an

association between defendants’ marks and the famous JOLLY RANCHER mark

and JOLLY RANCHER logo, which impairs the distinctiveness of those famous

marks and lessens the capacity of those famous marks to identify and distinguish

products marketed and sold by plaintiffs under those marks.

63. Defendants’ conduct, as described above, is likely to dilute and is

diluting the distinctive quality of the famous JOLLY RANCHER mark and JOLLY

RANCHER logo, for the additional reason that defendants’ challenged marks are

likely to cause tarnishment of the famous JOLLY RANCHER mark and JOLLY

RANCHER logo, as a result of defendants’ use of those marks in association with

products and advertising that encourages and glamorizes drug abuse and the use of

illicit drugs.

64. On information and belief, defendants’ acts of trademark dilution have

been done willfully and deliberately, and defendants have profited and have been

unjustly enriched by sales that defendants would not otherwise have made but for



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injury and damages to plaintiffs, and have caused irreparable injury to plaintiffs’



FOURTH CLAIM FOR RELIEF

Trademark and Trade Dress Dilution

Under Cal. Bus. & Prof. Code § 14247



67. This claim is for dilution of trademarks and injury to business or

reputation under Section 14247 of the California Business and Professions Code.

68. The JOLLY RANCHER mark and JOLLY RANCHER logo are famous

in the State of California within the meaning of Section 14247 of the California

Business and Professions Code, and were famous prior to the date of defendants’

adoption and use of similar designs on packages and in advertising for their products.

69. Defendants’ conduct, as described above, is likely to diminish the public

association of the JOLLY RANCHER mark and JOLLY RANCHER logo with

Hershey.

70. Defendants’ conduct, as described above, is likely to dilute and will

dilute the distinctive quality of the famous JOLLY RANCHER mark and JOLLY

RANCHER logo by lessening the capacity of those marks to identify and distinguish

products marketed and sold by plaintiffs under those marks and by causing

tarnishment of those marks.

71. On information and belief, defendants’ acts of trademark dilution have

been done willfully and deliberately and defendants have profited and been unjustly

enriched by sales that defendants would not otherwise have made but for their

unlawful conduct.



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72. Defendants’ acts described above have caused injury and damages to

plaintiffs, and have caused irreparable injury to plaintiffs’ goodwill and reputation

and, unless enjoined, will cause further irreparable injury, for which plaintiffs have

no adequate remedy at law.

FIFTH CLAIM FOR RELIEF

Common Law Trademark Infringement and Unfair Competition



74. This claim is for trademark infringement and unfair competition in

violation of the common law of the State of California.

75. Defendants’ use of their infringing marks and trade dress, as described

above, constitutes common law trademark infringement, passing off, and unfair

competition in violation of common law.

76. On information and belief, defendants’ acts of common law trademark

infringement, passing off, and unfair competition have been done willfully and

deliberately, and defendants have profited and have been unjustly enriched by sales

that defendants would not otherwise have made but for their unlawful conduct.


injury and damages to plaintiffs and have caused irreparable injury to plaintiffs’



PRAYER FOR RELIEF

WHEREFORE, plaintiffs pray that this Court enter judgment against

defendants as follows:

A. Granting preliminary and permanent injunctive relief restraining

defendants, their officers, directors, agents, employees, servants, attorneys,

successors, assigns and others controlling, controlled by or affiliated with defendants

and all those in privity or active concert or participation with any of the foregoing



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(including without limitation each manufacturer, distributor or reseller of defendants’

products), and all those who receive actual notice by personal service or otherwise:

i. from using on or in connection with any products or in any other

medium, for any purpose, (a) the JOLLY RANCHER mark, or

any other mark confusingly similar thereto or dilutive thereof;

and (b) any version of the JOLLY RANCHER logo, or any other

mark or trade dress confusingly similar thereto or dilutive thereof;

ii. from stating, implying, or suggesting in any way that plaintiffs or

the JOLLY RANCHER brand or any other of plaintiffs’ brands

have sponsored, endorsed, or authorized any product made,

advertised, or sold by defendants; and

iii. from otherwise competing unfairly with plaintiffs.

B. Ordering that defendants be adjudged to have violated Sections 32,

43(a), and 43(c) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and 1125(c), to

have caused trademark and trade dress dilution in violation of California Business

and Professions Code § 14247, and to have committed acts of common-law

trademark and trade dress infringement and unfair competition;

C. Ordering defendants to recall from all chains of distribution and to

disable all internet access to all goods, product packaging, product displays,

promotional materials, advertisements, commercials, infomercials and other items,

the dissemination by defendants of which would violate the injunction herein

requested;

D. Ordering defendants to deliver up for destruction any and all goods,

product packaging, product displays, promotional materials, advertisements,

commercials and other items in the possession, custody, or control of defendants

which, if sold, displayed, or used, would violate the injunction herein granted;

E. Ordering defendants to disable all web sites to the extent they contain

any content, the display or use of which would violate the injunction herein



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requested;

F. Ordering an accounting of all gains, profits, savings and advantages

realized by defendants from their aforesaid acts of trademark and trade dress

infringement, trademark and trade dress dilution, false endorsement, false

designation of origin, and unfair competition, and awarding treble profits pursuant to

15 U.S.C. § 1117(a) on the ground that defendants engaged in its wrongful acts with

knowledge or bad faith or under other circumstances warranting treble profits;

G. Awarding such damages as plaintiffs shall establish in consequence of

defendants’ acts of trademark and trade dress infringement, trademark and trade

dress dilution, false endorsement, false designation of origin, and unfair competition,

together with appropriate interest thereon, including three times the amount found as

actual damages by the trier of fact to properly compensate plaintiffs for their

damages, pursuant to 15 U.S.C. § 1117(a), and California Business and Professions

Code §§ 14247 and 14250.

H. Ordering defendants to pay for and cause to be disseminated corrective

advertising to ameliorate the adverse consequences of defendants’ acts of trademark

and trade dress infringement, trademark and trade dress dilution, false endorsement,

false designation of origin and unfair competition, the content, nature, form and

extent of which is to be approved by plaintiffs and this Court;

I. Ordering defendants to pay for and cause to be disseminated to each

distributor and reseller of defendants’ products a notice advising said persons of

defendants’ acts of trademark and trade dress infringement and dilution, false

endorsement, false designation of origin, and unfair competition and advising of the

issuance and content of the injunction herein requested;

J. Ordering that, pursuant to Section 34(a) of the Lanham Act, 15 U.S.C.

§ 1116(a), defendants shall serve upon plaintiffs within thirty (30) days after service

on defendants of an order granting an injunction, or such extended period as the

Court may direct, a report in writing under oath setting forth in detail the manner and



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form in which defendants have complied with the injunction;

K. Awarding plaintiffs their costs and expenses of this action;

L. Declaring that this is an exceptional case pursuant to 15 U.S.C. § 1117,

because of the willful and deliberate nature of defendants’ acts of trademark and

trade dress infringement, trademark and trade dress dilution, false endorsement, false

designation of origin, and unfair competition, and awarding plaintiffs their

reasonable attorneys’ fees;

M. Awarding plaintiffs punitive damages in an amount to be determined by

the trier of fact for defendants’ willful and knowing trademark infringement and

unfair competition, pursuant to the common law; and

N. Granting such other and further relief as this Court may deem just and

proper.

JURY DEMAND

Pursuant to the Seventh Amendment, Plaintiffs hereby demand a trial by jury.

Dated: October 22, 2015 Respectfully submitted, KAYE SCHOLER LLP By: _/s/ Robert Barnes___________ Robert Barnes Attorneys for Plaintiffs THE HERSHEY COMPANY AND HERSHEY CHOCOLATE & CONFECTIONERY CORPORATION


hershey co. v. urban stash - trademark complaint.pdf

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