Hershey Victorious Before Trademark Trial and Appeal Board Regarding MILKSHAKE Trademark

NEW YORK: Kaye Scholer won summary judgment on behalf of longtime client The Hershey Co. before the US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), in an opposition proceeding relating to the trademark MILKSHAKE as applied to candy bars.

Hershey opposed an application seeking to register MILKSHAKE that had been filed by an applicant who claimed that he sought to “resurrect” the MILKSHAKE candy bar that had been sold by a Hershey predecessor, Hollywood Candy, until the 1990s. The applicant argued that Hershey gave up its right to the MILKSHAKE mark when Hollywood’s MILKSHAKE bar was discontinued and when Hershey’s prior trademark registration for MILKSHAKE was abandoned. Hershey countered with evidence that the company has used the mark on certain of its Kit-Kat and Whopper products since 2005, and that the applicant’s proposed MILKSHAKE mark was likely to be confused with Hershey’s common law MILKSHAKE mark. The TTAB ruled that Hershey’s common law rights to MILKSHAKE were valid and that the applicant could not register the MILKSHAKE mark.

Kaye Scholer has advised Hershey on trademark registration and enforcement matters involving many of the company’s most valuable brands, including the HERSHEY’S®, REESE’S® and KISSES® marks and related trade dresses, as well as the trademark registration for the design configuration of its iconic Hershey’s chocolate bar.

Partner Paul Llewellyn, Co-Head of the firm’s Trademark, Copyright & False Advertising Practice, led the Kaye Scholer team representing Hershey in this case. Other members of the team included Counsel John Rynkiewicz, Associate Kyle Gooch and former associate Jennifer Co.