Does “Chocolate Kiss” Colored Flooring Infringe on Hershey’s Trademarks?

San Diego – Shaw Industries Group Inc., a carpet manufacturer owned by Berkshire Hathaway Inc, filed a complaint for declaratory relief requesting that a Georgia federal court issue a judgment that the carpet color it calls “Chocolate Kiss” does not infringe The Hershey Co.’s “Kisses” and “Hershey’s Kisses” trademarks.

In the complaint, Shaw claims that Hershey has threatened it with a lawsuit over the name, despite the fact that Shaw has used the name for over two decades without any indication of confusion between the products or the companies.

“Declaratory relief is proper in this case because it will clarify and settle the actual, present dispute between the parties as to whether the plaintiffs use of the ‘Chocolate Kiss’ name violates defendant’s rights in its Kiss trademarks,” the complaint said. “It will allow Shaw to continue its regular business without fear of incurring further loss, as well as the uncertainty, insecurity and controversy giving rise to this action.”

On December 19, 2012, counsel for Hershey sent a cease and desist letter to Shaw demanding that it cease use of the name, claiming that the carpet color name constitutes infringement and dilutes the KISS trademarks owned by Hershey.

Though Shaw introduced the color in January of 1993 and used the name to describe the color for over 200 styles of flooring distributed worldwide, Shaw claims it had never been made aware of any consumer confusion between the name of the carpet color and chocolate Hershey’s Kisses. It also alleges that Hershey had never requested it cease using the name before the December cease and desist letter.

Shaw claims it responded to the letter and informed Hershey it had already planned to phase out the “Chocolate Kiss” carpet color and would no longer be using the name by June of this year. The company also claimed in its response that Hershey had in no way shown there was any confusion between the two products.

Hershey responded with another cease and desist letter on January 24th requesting a signed agreement from Shaw that it would cease using the “Chocolate Kiss” name immediately and demanding that it surrender all infringing goods by February 8.
Shaw is requesting that the court issue a declaratory judgment that it is not infringing or diluting Hershey’s trademarks and that Hershey essentially agreed to its use of the name by not challenging it for twenty years.