Most people have eaten a Jolly Rancher candy at some point in their life. The hard candy in various flavors represents the JOLLY RANCHER® brand since the 1950’s.
Hershey Chocolate & Confectionary LLC (“Hershey”) is the licensee for multiple trademark registrations for the JOLLY RANCHER® brand. The marks include good and services from candy, gelatins and beverages to nail polish and lip balm. These trademarks all include the words “Jolly Rancher” in some form.
Hershey recently instituted an opposition proceeding against William Monk (“Monk”), an individual, who filed an intent to use trademark application for Jollipops for candy and lollipops in Class 003. Intent to use trademarks are filed when the owner has not yet used the mark in interstate commerce but has a bona fide intent to use the mark for the enumerated goods/services in the future. Intent to use trademark applications represent a way to establish priority for the mark prior to using it in commerce.
Likelihood of confusion with Jolly Rancher®
Hershey alleges a likelihood of confusion given the similarity between the marks and goods sold. In addition to its signature rectangular hard candies, Hershey also sells lollipops under the JOLLY RANCHER® brand. Thus, the goods sold are identical. The goods also sold to the same consumers and in the same channels of trade.
Dilution of Jolly Rancher®
Further, Hershey alleges dilution. Specifically, given the distinctive quality and fame of its JOLLY RANCHER® marks, the distinctiveness would be blurred by registering the Jollipops mark. Dilution is only available for famous marks. Famous marks afforded a broader scope of protection. In determining fame, one must consider the inherent strength based on the mark itself as well as its commercial strength based on marketplace recognition. Commercial strength measured indirectly by sales volume; advertising expenditures; length of use of the mark; widespread critical assessments; notice by independent sources of the goods or services identified in the mark; and general reputation of the goods or services.
The Examiner for Monk’s mark did not cite any of the JOLLY RANCHER® marks against it. However, this is not dispositive of a lack of likelihood of confusion. The Trademark Trial and Appeal Board will weigh the evidence presented by both sides and evaluate the similarity of the marks using the Dupont factors.
In a likelihood of confusion case, the important consideration is whether an ordinary consumer would be confused as to the source of the goods. Here, given the similarity in the marks, similarity in the goods themselves, same consumers and same trade channels, Monk will likely have a difficult time obtaining a registration. Monk has until March 20th to file their response.
Jolly Rancher may be considered a famous mark given its commercial and inherent strength.