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63072616 COMPLAINT
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ROBERT BARNES (State Bar No. 119515)
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
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
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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
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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
as if fully set forth herein.
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
their unlawful conduct.
58. Defendants’ willful and deliberate acts described above have caused
injury and damages to plaintiffs, 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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THIRD CLAIM FOR RELIEF
Trademark and Trade Dress Dilution
Under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c)
59. Plaintiffs repeat and reallege paragraphs 1 through 58 of this Complaint
as if fully set forth herein.
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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their unlawful conduct.
65. 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.
FOURTH CLAIM FOR RELIEF
Trademark and Trade Dress Dilution
Under Cal. Bus. & Prof. Code § 14247
66. Plaintiffs repeat and reallege paragraphs 1 through 65 of this Complaint
as if fully set forth herein.
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
73. Plaintiffs repeat and reallege paragraphs 1 through 72 of this Complaint
as if fully set forth herein.
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.
77. 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.
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
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