Hershey Company, The et al v. Tincturebelle, LLC et al Doc.

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

Civil Action No. 14-cv-01564-WYD-WJW

THE HERSHEY COMPANY and

HERSHEY CHOCOLATE & CONFECTIONERY CORPORATION,

Plaintiffs,

v.

TINCTUREBELLE, LLC,
TINCTUREBELLE MARIJUANKA LLC and
CHARMIN MAYES,

Defendants.

CONSENT ORDER

WHEREAS, Hershey Chocolate & Confectionery Corporation is the owner and

The Hershey Company is the licensee of various marks associated with the REESES

brand for candy and confectionery products, including, without limitation, the marks

REESES, REESES MILK CHOCOLATE PEANUT BUTTER CUPS, REESES

PEANUT BUTTER CUPS, REESES PUFFS, and a variety of other marks and trade

dresses used in connection with such products (together, the REESES Marks),

including, without limitation, the marks set forth in United States Trademark Registration

Nos. 925,609; 1,215,096; 2,256,226; 2,491,191; 3,601,728; 3,631,320; 4,148,621;

4,330,229; and 4,432,557 (copies of the registration certificates for the foregoing

registrations are attached as Exhibit A-1);

WHEREAS, The Hershey Company is the exclusive licensee in the United States

of various marks owned by Huhtamaki Finance B.V. that are associated with the

Dockets.Justia.com
HEATH brand for candy and confectionery products, including, without limitation, the

mark HEATH as set forth in United States Trademark Registration Nos. 1,404,302 and

3,840,907 and a variety of other marks and trade dresses used in connection with such

products (together, the HEATH Marks) (copies of the registration certificates for the

foregoing registrations are attached as Exhibit A-2);

WHEREAS, The Hershey Company is the exclusive licensee in the United States

of various marks owned by Kraft Foods Ireland Intellectual Property Limited and

Cadbury Ireland Limited that are associated with the ALMOND JOY brand for candy

and confectionery products, including, without limitation, the mark ALMOND JOY as

set forth in United States Trademark Registration Nos. 443,802 and 4,125,366 and a

variety of other marks and trade dresses used in connection with such products

(together, the ALMOND JOY Marks) (copies of the registration certificates for the

foregoing registrations are attached as Exhibit A-3);

WHEREAS, The Hershey Company is the exclusive licensee in the United States

of various marks owned by Kraft Foods Ireland Intellectual Property Limited that are

associated with the YORK brand for candy and confectionery products, including,

without limitation, the mark YORK as set forth in United States Trademark Registration

Nos. 564,557 and 1,644,557 and a variety of other marks and trade dresses used in

connection with such products (together, the YORK Marks) (copies of the registration

certificates for the foregoing registrations are attached as Exhibit A-4);

WHEREAS, Hershey Chocolate & Confectionery Corporation is the owner and/or

The Hershey Company is the licensee of a number of other trademarks and trade

dresses for candy and confectionery products sold by The Hershey Company in the

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United States, including without limitation the marks set forth on Exhibit A-5 and the

trade dresses used by Hershey in connection with those marks (together, the Other

Hershey Marks and, collectively with the REESES Marks, the HEATH Marks, the

ALMOND JOY Marks and the YORK Marks, the Hershey Marks);

WHEREAS, Hershey Chocolate & Confectionery Corporation and The Hershey

Company (together, Hershey) accused defendants TinctureBelle, LLC and

TinctureBelle Marijuanka LLC (together, the TinctureBelle Companies) of advertising,

distributing and selling in the United States various candy or confectionery products

containing cannabis or tetrahydrocannabinol (the Original Accused TinctureBelle

Products, examples of which are depicted in Exhibit B hereto) using names and/or

trade dresses that infringe and dilute the REESES Marks, the HEATH Marks, the

ALMOND JOY Marks and the YORK Marks;

WHEREAS, on June 3, 2014, Hershey commenced this action against the

TinctureBelle Companies alleging claims for, inter alia, trademark infringement,

trademark dilution, false designation of origin, unfair competition and violation of the

Colorado Consumer Protection statute (C.R.S. 6-1-101 et seq.), all in relation to the

Original Accused TinctureBelle Products, which Hershey contended infringed and

diluted its REESES Marks, the HEATH Marks, the ALMOND JOY Marks and the YORK

Marks;

WHEREAS, simultaneously with the submission of this Consent Order to the

Court, Hershey has filed a First Amended Complaint in this action adding as parties the

above-named individual defendant (collectively with the TinctureBelle Companies,

TinctureBelle), who is an officer of both of the TinctureBelle Companies;

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 WHEREAS, TinctureBelle has informed Hershey that certain of the Original

Accused TinctureBelle Products are no longer being sold in the form depicted in

Hersheys complaint in the Litigation, and has provided Hershey with examples of

products with revised names and/or packaging;

WHEREAS, Hershey continues to object to certain of the revised versions of the

Accused TinctureBelle Products depicted in Exhibit C (the New Accused TinctureBelle

Products and, together with the Original Accused TinctureBelle Products, the Accused

TinctureBelle Products);

WHEREAS, TinctureBelle denies the claims asserted against it and denies that

its conduct alleged in the Litigation violates Hersheys rights; and

WHEREAS, Hershey and TinctureBelle have agreed to entry of this Consent

Order;

IT IS ORDERED, ADJUDGED AND DECREED THAT:

1. This Court has personal jurisdiction over Hershey and TinctureBelle and

has subject matter jurisdiction of this action.

2. TinctureBelle represents that:

a. as of no later than December 30, 2013, TinctureBelle has ended all

distribution, advertising, sale and other use anywhere in the world

of:

i. the Accused TinctureBelle Products, and any

packaging or other variations thereof, and

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 ii. any names, marks, package designs or trade dresses

that are confusingly similar to, imitative of or an attempted satire of, any Hershey

Marks; and

b. at no time has it used, in any products, whether as ingredients or

components or in any other manner whatsoever, any products

manufactured or distributed by Hershey.

3. Within three days after entry of this order, to the extent that it has not

already done so pursuant to the parties agreement effective as of September 22, 2014

(the Settlement Agreement), TinctureBelle will provide to its distributors, customers,

resellers and retailers of its Accused TinctureBelle Products a copy of a recall notice

substantially in the form depicted in Exhibit D, which shall advise those parties to

(i) cease further sale of the Accused TinctureBelle Products; (ii) destroy any unsold

inventory of the Accused TinctureBelle Products; and (iii) remove any advertising or

marketing materials, including webpages, that reference the Accused TinctureBelle

products or packaging.

4. TinctureBelle shall refrain in the future from:

a. using, in any media and any channels of advertising, distribution or

sale anywhere in the world, including without limitation product

labeling, product packaging, print advertising, in-store displays,

domain names, keywords, metatags, online names and handles,

hashtags, social media identities, social media posts, and internet

advertising:

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 i. the terms or marks HASHEES, GANJA JOY,

HASHEATH, HASHEATS, THINGAMAJIGGY and REEFERS, and any

substantially similar or confusingly similar variations thereof;

ii. the REESES Marks, the HEATH Marks, the

ALMOND JOY Marks, the YORK Marks and the Other Hershey Marks, and any

substantially similar or confusingly similar variations thereof;

iii. the product packaging and trade dresses shown in

Exhibit B, and any substantially similar or confusingly similar variations thereof;

iv. any product packaging and trade dress that is

substantially similar or confusingly similar to the packaging and trade dress for

Hersheys REESES, HEATH, ALMOND JOY and YORK branded products;

v. any names, marks, package designs or trade dresses

that are confusingly similar to, imitative of or an attempted satire of, any Hershey

Marks;

vi. the mark or term REEFER, in connection with any

candy, confectionery or other edible products containing peanut butter or

characterized by a peanut butter flavor; and

vii. any design or trade dress that bears a partially or

predominantly orange background or that uses any combination of orange,

yellow and brown elements, in connection with any candy, confectionery or other

edible products containing peanut butter or characterized by a peanut butter

flavor;

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 b. using, in any products manufactured, repackaged, advertised,

distributed or sold TinctureBelle, whether as ingredients or

components or in any other manner whatsoever, any products

manufactured or distributed by Hershey;

c. making any statements in any media or channels whatsoever

claiming or suggesting that any products manufactured,

repackaged, advertised, distributed or sold TinctureBelle are in any

way approved by, sponsored by, authorized by or otherwise

affiliated or associated with Hershey; and

d. making any false or disparaging statements about Hershey or its

products (and will remove and disable the webpage at

http://www.wherevent.com/detail/Audrey-Hatfield-Tincturebelle-

Legal-Defense-Fundraiser and any other materials in its custody or

control that disparage Hershey or cast it in a negative light).

5. TinctureBelle represents that as of the date of this Consent Order, to the

best of its ability, it has removed and deleted from the Internet and all social media and

other electronic channels all advertising, posts, messages and similar communications

in the custody or control of TinctureBelle, the dissemination of which by TinctureBelle

would violate Paragraph 4 hereof.

6. TinctureBelle shall refrain both now and in the future from registering,

applying to register or maintaining the registration, anywhere in the world, of any design,

trade dress, trademark, domain name, online name or handle, or social media identity,

the use of which by TinctureBelle is prohibited by Paragraph 4 hereof.

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 7. Hershey reserves the right to object to future packaging, advertising and

marketing materials of TinctureBelle that Hershey believes violate its intellectual

property or other rights.

8. Within one week after execution of this Consent Order, TinctureBelle shall:

a. provide to Hershey, through counsel in Colorado, two physical

specimens (including contents and packaging) of (i) each product

depicted in Exhibit B; (ii) each product depicted in Exhibit C; and

(iii) each other product, the sale by TinctureBelle of which would

violate Paragraph 4 hereof, to the extent any such specimens

remain in existence; and

b. destroy all remaining specimens of each product, including without

limitation cartons, containers, packaging, wrappers, labels, displays

and any other materials, in the custody or control of TinctureBelle

or Charmin Mayes, the sale by TinctureBelle of which would violate

Paragraph 4 hereof.

9. TinctureBelle represents that neither the TinctureBelle Companies nor

Charmin Mayes:

a. have licensed to third parties or assigned to any other person or

entity any design, trade dress or trademark described in Paragraph

4 hereof; or

b. owns any applications or registrations anywhere in the world for

any design, trade dress or trademark described in Paragraph 4

hereof.

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 10. TinctureBelle hereby acknowledges the validity of Hersheys rights in the

Hershey Marks as described herein and as depicted in the Exhibits hereto, and shall not

seek to cancel or otherwise challenge the validity or enforceability of Hersheys rights

therein or assist any others in doing so.

11. Prior to the execution of this Consent Order, TinctureBelle has provided to

Hershey, through counsel, a written statement of sales by the TinctureBelle Companies

and by Charmin Mayes of the Accused TinctureBelle Products. TinctureBelle

represents and warrants that the written statement it has provided to Hershey

constitutes a complete and accurate accounting of all sales by the TinctureBelle

Companies and by Charmin Mayes of any Accused TinctureBelle Products and any

products using substantially similar packaging.

12. TinctureBelle expressly recognizes and acknowledges that a violation or

breach by it of any of the representations, covenants, conditions, agreements, or

undertakings in this Agreement will cause Hershey irreparable harm which cannot be

adequately calculated or remedied solely in money damages in an action at law,

thereby entitling Hershey to seek (in addition to any other remedy to which it may be

entitled at law) immediate injunctive relief or other equitable remedies.

13. TinctureBelle shall comply with the terms of the Settlement Agreement.

14. Pursuant to Section 34(a) of the Lanham Act, 15 U.S.C. 1116(a), within

thirty days after service upon TinctureBelle of this Consent Order, TinctureBelle shall

serve upon Hershey, a report in writing under oath setting forth in detail the manner and

form in which TinctureBelle has complied with this Consent Order.

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 15. In the event that a court of competent jurisdiction finds that TinctureBelle

has engaged in a breach or violation of this Consent order, Hershey shall be entitled (in

addition to any other remedy to which it may be entitled at law) to its reasonable

attorneys fees incurred in enforcing its rights under this Consent Order. In addition, in

the event that a court of competent jurisdiction finds that TinctureBelle has engaged in a

breach or violation of Paragraph 1, 2, 3, 4, 5 or 13 of this Consent Order, because the

actual damages sustained by Hershey as a result of such breach would be

impracticable or extremely difficult to calculate, Hershey shall be entitled (in addition to

any other remedy to which it may be entitled at law) to liquidated damages in the

amount of $25,000 per breach (which amount is expressly agreed to represent a fair

estimate of the damage that will accrue as a result of each such breach, to the extent

such breach is compensable in money, and not a penalty) or such actual damages or

profits that Hershey establishes, whichever is greater.

16. This Court shall retain continuing jurisdiction over the persons and entities

identified in this Consent Order and over the subject matter of plaintiffs Complaint to

ensure compliance and performance with the terms of this Consent Order and to modify

the Consent Order as justice so requires.

17. The provisions of this Consent Order shall apply worldwide.

Dated: September 24, 2014.

BY THE COURT:

/s/ Wiley Y. Daniel .

Wiley Y. Daniel
Senior United States District Judge

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The undersigned parties, by their duly authorized attorneys, hereby consent to the entry

of this Consent Order:

By: /s/ Carl F. Manthei By: /s/ Eric B. Liebman

Carl F. Manthei Eric B. Liebman
OLLILA LAW GROUP, LLC MOYE WHITE LLP
2569 Park Lane, Suite 202 16 Market Square, 6th Floor
Boulder, CO 80026 1400 16th Street
Telephone: (303) 938-9999 Denver, CO 80202-1486
cmanthei@olgip.com Telephone: (303) 292-7944
eric.liebman@moyewhite.com
Paul C. Llewellyn
Kyle D. Gooch Attorneys for Defendants
KAYE SCHOLER LLP TinctureBelle, LLC, TinctureBelle
425 Park Avenue Marijuanka LLC and Charmin
New York, New York 10022 Mayes
Telephone: (212) 836-8000
paul.llewellyn@kayescholer.com
kyle.gooch@kayescholer.com

Attorneys for Plaintiffs The Hershey

Company and Hershey Chocolate &
Confectionery Corporation

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