As mentioned earlier today, a lawyer for the Hershey Company has sent a stern letter to Jacques Torres warning him against using the name “Champagne Kiss” for one of his bonbons. It’s smoking-gun day here on Grub Street (speaking of the Smoking Gun — check out Lou Reed’s catering rider, posted today!), so read ahead for the letter Torres received, and his snappy reply.
Dear Mr. Torres:
It has come to the attention of the Hershey Company that Jacques Torres Chocolate is selling a chocolate product called “Champagne Kiss” or “Champagne Kisses.” We are concerned by your use of the name “Champagne Kiss” and “Champagne Kisses” in connection with this product as it infringes upon a number of trademarks used by The Hershey Company.
For your information, the mark KISSES® is the subject of federal trademark registrations (Reg. Nos. 2,416,701; 3,363, 296, and 3,493,764 among others) which are owned by the Hershey Chocolate & Confectionery Corporation, a subsidiary of The Hershey Company. In addition, Hershey and its subsidiary (herein together referred to as “Hershey”) have acquired numerous other federal and common law rights in the KISSES® mark stemming from our long-standing use of this mark in connection with our famous HERSHEY®’s KISSES® chocolates. Through substantial use and promotion, the KISSES® mark is considered a famous mark and is afforded a broad scope of protection under trademark law.
Hershey is concerned that Jacques Torres Chocolate’s use of the mark KISS or KISSES may cause consumer confusion with Hershey as to the source, sponsorship, or affiliation of Jacques Torres Chocolate’s product. Even in the absence of any likelihood of confusion, Jacques Torres Chocolate’s use of these Hershey-owned trademarks will dilute the trademarks in violation of federal and state anti-dilution statutes.
Therefore, we demand that Jacques Torres Chocolate immediately discontinue its use of the mark KISSES or KISSES in connection with its chocolate candies. Please respond in writing by April 20th regarding what steps Jacques Torres Chocolate has taken or will be taking to accommodate these demands.
Nothing in this letter should be construed as a waiver, relinquishment or election of rights or remedies by Hershey. Hershey expressly reserves all rights and remedies under all applicable federal and state laws.
And Torres’s lawyer replies:
Dear Ms. Duquette:
Mr. Jacques Torres has referred your writing of April 2, 2009 to me for response. Directly to the point, Mr. Torres will not discontinue his use of the term “Champagne Kiss.” We believe that this is yet another example of a giant, monolithic corporation attempting to take advantage of “the little guy,” in this case, a world-renowned artisan from France.
Ms. Duquette, I can report to you that your concern of “consumer confusion” is without merit. Consider the following:
I. The chocolates of Jacques Torres are considered “high end” and are not mass-produced and marketed as Hershey’s products are.
II. The first ingredient in Jacques Champagne Kiss is champagne. We are unaware of Hershey’s using champagne in any of its products.
III. The shape of Jacques’ product is rectangular and flat—nothing like a Hershey’s Kiss.
IV. The price points are radically different.
V. The availability of Hershey’s products versus the availability of products of Jacques Torres differs radically.
VI. The Champagne Kiss of Jacques Torres has an imprint of lips. The Hershey’s Kiss does not have any such imprint.
VII. Jacques’ product is called “Champagne Kiss.” That is, the product is described in the singular, not the plural.
VIII. The quality of the two products, in terms of ingredients, is like “night and day.”
Ms. Duquette, there are multiple other reasons why the Champagne Kiss of Jacques Torres will never be confused with a Hershey Kiss.
Mr. Torres vigorously disputes your contention that he is using or infringing upon a Hershey-owned trademark. The analogy might be similar to Chevrolet complaining that Rolls Royce is infringing on the Chevrolet trademark.
Ms. Duquette, in summary, if a jury needs to decide this issue, then so be it.