A word of caution to startup businesses: don’t play-off another company’s graphic designs; they can be very protective of their intellectual property. I know it’s tempting to use well-known images to jump-start your sales, but it’ll probably end up badly. Case in point; Pot-infused candy maker, TinctureBelle, thought using variations of recognizable Hershey product packaging would be an appropriate marketing strategy. Hershey Co., however, thought differently, suing the small Colorado company for trademark infringement over four of the company’s candies; Ganja Joy, Hasheath, Hashees and Dabby Patty, which Hershey’s claims are too similar to Hershey’s Almond Joy, Heath, Reese’s peanut butter cups and York peppermint patty candies, respectively.
TinctureBelle’s alleged packaging appropriation is not surprising, as many people tend to view trademarks as applying only to names, logos or symbols. However, Trademarks, however, also encompass non-traditional characteristics, such as shapes, sounds, smells, tastes and textures. While it is true that these non-traditional types of trademarks are the most difficult when applying for Federal registration, unregistered trademarks still receive a good amount of statutory and common-law protection.
Trademark law, specifically through the Lanham Act, ensures that consumers are not confused as to the makers of similar products or services due to similarities in their branding. Also, the Lanham Act prohibits false designation of origin, false or misleading descriptions or representations and false advertising.
TinctureBelle’s alleged packaging appropriation is not surprising, as many people tend to view trademarks as applying only to names, logos or symbols.
Given the potential for problems down the road, it is critical for new businesses or businesses with new product lines, to have an Intellectual Property attorney review their strategic and marketing plans to understand the potential risks. It doesn’t make any sense for a business to move ahead without both protecting their own intellectual property and getting clearance in their use. Imagine implementing a marketing plan, creating package designs, developing a website, buying domain names, hiring a public relations firm, and even purchasing business cards and stationary, only to receive as cease-and-desist letter fro the Trademark holder.
That may be what happened with TinctureBelle. Their product packaging looks so similar to Hershey’s product packaging, that Hershey’s sued them on the belief that consumers, including children, might think they are Hershey products. Based on the look of the packaging, and aggressive nature with which Hershey tends to defend its intellectual property, a good IP attorney probably would have advised against the package designs. Perhaps TinctureBelle was aware of the risks and still chose to move ahead; either way, they are now fighting a major corporation with lots of money and legal resources at their disposal.
Nevertheless, it is still up to Hershey to prove the trademark infringement. Courts look at several factors when deciding whether there might be a likelihood of confusion between two products or services. Known as the “Polaroid Factors,” they are derived from a 1961 Supreme Court case of Polaroid Corp. v. Polarad Elecs. Corp. Each of the factors weighs against each other; none being determinative, but some carrying more weight than others. The factors include:
- Strength of the mark; the more distinctive the mark, the more likely there will be confusion.
- Similarity of the marks, from the standard of a normal observer.
- Similarity of the products or services. If the packaging held playing cards, there would be much less confusion than for candy products.
- Likelihood that the mark’s owner will move into the infringing products market. TinctureBelle is a food product, so it is more likely Hershey would enter the pot-infusion market than automobile parts or some other non-food related product line.
- Evidence of actual confusion. Proof of consumer confusion is not required, but it helps.
- Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion.
- Quality of the infringing products or services. Lesser quality products cause the consumer more harm than if the product was better than the original.
There are numerous ways of proving or disproving the “Polaroid factors,” so TinctureBelle is not out of the game yet, although the fight will be a tough one. Hershey will likely ask the court to impose an injunction, which stops TinctureBelle from selling any of the four products pending the outcome of the case. Unless the outcome is almost assuredly in favor of Hershey, the court will be hesitant to impose such a damaging action before TinctureBelle has been able to present their defense. If they can get past that hurdle, TinctureBelle will have some breathing room. One thing that can be sure though, cases like this take a long time to play out.