Hershey, The Cookie Department again spar over trademarks

SAN FRANCISCO — The Cookie Department and Hershey Co. are at it again.

The Cookie Department, a Berkeley, Calif.-based nutrition cookie company, on Aug. 31 filed a trademark lawsuit in the US District Court Northern District of California seeking the right to continue using a stylized chocolate chip teardrop on its packaging. The Cookie Department’s lawsuit follows a complaint filed by Hershey, Pa.-based Hershey Co. claiming the chocolate chip teardrop looks too much like its famous Hershey Kisses.

The Cookie Department said it has used the chocolate chip teardrop on its packaging since at least 2009, and Hershey’s complaint is in retaliation for a lawsuit filed by The Cookie Department accusing Hershey of infringing on its “Tough Cookie” trademark.

“Hershey has never claimed infringement or issued a demand or cease and desist until now, during the pendency of TCD’s infringement suit against Hershey for alleged infringement of TCD’s Tough Cookie mark, which suit was filed on Dec. 23, 2020, before presiding Magistrate Judge Hon. Kandis A. Westmore,” the lawsuit said. “Two weeks before a scheduled, long-awaited mediation and after Hershey was made aware that TCD engaged experienced experts who have evaluated and confirmed significant damages caused by Hershey’s alleged infringement of TCD’s Tough Cookie mark, Hershey now purports to suddenly have a basis to claim infringement and other causes of action against TCD despite the fact that: (i) TCD is not using any mark or symbol except the universally known depiction of a chocolate chip (TCD has no line of cookie that uses Hershey’s Kisses or the Kisses Marks) and (ii) TCD has never sold chocolates or candies, but exclusively makes cookies, including chocolate chip cookies. Despite this, Hershey issued not one but two ‘demand’ letters and has notified TCD in writing of its tenuous allegations and has

threatened to sue TCD. TCD maintains that this is a strategic ploy with little to no merit, and the court should enter a judgment that TCD has not violated Hershey’s rights.”

Also in the lawsuit, The Cookie Department called the Kisses marks “inherently weak,” claiming the design and shape “are substantively identical to the universal teardrop shape of chocolate chips or baking chips, commonly desired ingredients used worldwide for more than 80 years.”

The Cookie Department was founded by Chef Akiva Resnikoff in 2009 in Berkeley. Early in its history, The Cookie Department launched a line of cookies known as Fully Functional Cookies. The cookies were introduced as The Cookie Department’s core line of cookie products focusing on cookies with unique functional ingredients that transform cookies into nutritionally healthier snacks. In addition to Tough Cookie, the Fully Functional Cookies line includes Awaken Baked, Great Full and Snap Back.

Hershey has not commented on the complaint.