The Cookie Department Inc. (“TCD”) recently filed a lawsuit against The Hershey Company (“Hershey”) and its subsidiary ONE Brands LLC (“ONE”). The complaint alleges trademark infringement of their TOUGH COOKIE trademark based on a likelihood of confusion.

TCD has used the mark since 2012 in connection with various types of cookies, including a protein rich cookie containing 10g of protein. They obtained a federal trademark registration for the TOUGH COOKIE® mark on June 16, 2020 as a standard character mark. TCD alleges they have extensively marketed and promoted the TOUGH COOKIE® mark. Packaging of their product is shown below:

Product packaging from TCD product showing TOUGH COOKIE mark
Image taken from complaint

ONE’s use of “TOUGH COOKIES ONLY”

ONE manufactures and sells several flavors of the ONE Protein Bar since 2015. The flavors include a chocolate chip cookie dough flavor containing 20g of protein. This flavor bears the mark “TOUGH COOKIES ONLY” on its packaging as shown below:

Product packaging from ONE's chocolate chip cookie dough product bearing TOUGH COOKIES ONLY mark
Image taken from complaint

The chocolate chip cookie dough flavor protein bar is marketed as a cookie protein snack. The flavor brings substantial revenue to ONE.

TCD alleges ONE uses the same play on words as TCD’s TOUGH COOKIE mark. TCD alleges, given the similarities in the mark itself as well as the goods offered, a likelihood of confusion exists between the marks. Specifically, TCD notes the marks are similar in appearance, sound, connotation and commercial impression. TCD alleges the connotation of both marks signifies protein fortification. TCD notes both goods are sold through similar marketing channels and to similar consumers. These consumers are not likely sophisticated with the purchase of the goods being an impulse buy.

TCD also alleges such infringement is intentional. TCD provided exhibits of image search results of “tough cookie protein” in a Google search. Such results show ONE’s product outnumbering TCD’s mark by at least 4 to 1. TCD also alleges ONE used the term “TOUGH COOKIES ONLY” in their alt tags for the images on their website. ONE also included this term in the source code. TCD alleges such actions were performed to manipulate a Google search to promote ONE’s product at the expense of TCD.

Takeaway

While we will have to wait to see Hershey’s response, TCD’s likelihood of confusion between the marks may be persuasive to the court. The marks are very similar in appearance, sound and connotation. The goods are very similar. The marks are also sold in the same retail channels to the same consumers who may not exercise care when purchasing. Such factors could lean towards a finding of a likelihood of confusion. However, TCD may have a difficult time proving willful infringement unless they present additional evidence.

FAQ

Do marks have to be exact for trademark infringement?

No, marks do not need to be exact. The standard for infringement is whether there is a likelihood of confusion as to the source of the goods/services.

Michele Lawson

Michele Lawson is a U.S. Registered Patent Attorney.