Hershey Co. v. LBB Imports - Trademark Complaint PDF

Case 2:15-cv-00734-CAS-JEM Document 1 Filed 02/02/15 Page 1 of 38 Page ID #:1
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Robert Barnes (State Bar No. 119515)

robert.barnes@kayescholer.com
KAYE SCHOLER LLP
1999 Avenue of the Stars, Suite 1600
Los Angeles, California 90067-6048
Telephone: (310) 788-1000
Facsimile: (310) 788-1200
Attorneys for Plaintiffs The Hershey
Company and Hershey Chocolate &
Confectionery Corporation
IN THE UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
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Complaint for:
(1) Trademark Infringement
Plaintiffs,
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Case No. 2:15-cv-00734
THE HERSHEY COMPANY and

HERSHEY CHOCOLATE &
CONFECTIONERY CORPORATION,
(2) Trademark Dilution
v.
(3) Unfair Competition
LBB IMPORTS, LLC,
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(4) Breach of Contract

Demand for Jury Trial
Defendant.
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Plaintiffs The Hershey Company (Hershey Company) and Hershey
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Chocolate & Confectionery Corporation (Hershey Chocolate) (together,
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Hershey), for their complaint against defendant LBB Imports, LLC (LBB) for
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trademark and trade dress infringement, trademark and trade dress dilution, false
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designation of origin, unfair competition and breach of contract, plead and allege as
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follows:
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1.
LBB imports candy products that are manufactured outside of the
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United States, including TOFFEE CRISP, YORKIE, MALTESERS, CADBURY,
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KIT KAT and ROLO chocolate, candy and confectionery products (collectively, the
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Infringing Products). By selling these products in the United States, LBB violates
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COMPLAINT
trademark rights that are owned or licensed by Hershey. In particular, the imported
TOFFEE CRISP product sold by LBB closely resembles the well-known REESES
trade dress that is protected by a number of federal trademark registrations: among
other things, both have the same orange background color, and both feature a slanted
yellow font with brown outlining. In addition, the Infringing Products sold by LBB
violate Hersheys rights in the United States in the YORK, MALTESER,
CADBURY, KIT KAT and ROLO trademarks. What is more, defendant continues
to import and sell the Infringing Products, despite previously admitting that its
actions infringed Hersheys trademark rights and repeatedly agreeing to stop its
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infringing conduct. Hershey brings this suit to prevent LBB from continuing to
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breach its agreements and to violate Hersheys acknowledged trademark rights.

NATURE AND BASIS OF THE ACTION
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2.
This action is brought by Hershey against LBB under the Lanham Act,
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15 U.S.C. 1051 et seq., and state law, seeking preliminary and permanent
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injunctive relief, disgorgement of profits, compensatory damages, punitive damages
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and other relief relating to defendants importation, distribution and sale of products
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that infringe and dilute certain well-known trademarks owned or licensed by
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Hershey, namely, the REESES trade dress, the YORK trademark, the MALTESER
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trademark, the CADBURY trademark and trade dress and the KIT KAT trademark
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and trade dress, and the ROLO trademark and trade dress, (collectively, the
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Hershey Marks).
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3.
Hershey is a leading manufacturer of chocolate and confectionery
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products in the United States and worldwide. For many years, Hershey has
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manufactured and sold REESES, YORK, MALTESER, CADBURY, KIT KAT and
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ROLO branded candies and confections, among other products.
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4.
As set forth more fully below, Hershey owns or licenses the exclusive
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rights to use the Hershey Marks in connection with various chocolate and
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confectionery products in the United States. Notwithstanding those exclusive rights,

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COMPLAINT
defendant imports into the United States, offers for sale, and sells within the United
States the Infringing Products, none of which are made or authorized by Hershey:
TOFFEE CRISP brand confectionery products in a trade dress that
infringes and dilutes the famous REESES trade dress;
YORKIE brand confections that infringe and dilute the famous YORK
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trademark;
MALTESERS brand confections that infringe Hersheys MALTESER
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trademark;
CADBURY brand chocolate products that infringe the famous
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CADBURY trademark and trade dress;

KIT KAT brand confections that infringe the famous KIT KAT
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trademark and trade dress; and

ROLO brand confections that infringe and dilute the famous ROLO
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trademark and trade dress.

5.
On information and belief, defendant offers its Infringing Products for
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sale to customers throughout the United States through its offices in California, New
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Jersey and New York. On information and belief, defendant also advertises and
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sells the Infringing Products through its website (www.lbbimports.com).
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6.
Unless such acts of trademark and trade dress infringement, trademark
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and trade dress dilution, false designation of origin, unfair competition and breach of
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contract are enjoined, Hershey will suffer irreparable injury for which there is no
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adequate remedy at law.

PARTIES
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7.
Hershey Company is a corporation organized and existing under the
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laws of the State of Delaware, with its principal place of business at 100 Crystal A
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Drive, Hershey, Pennsylvania 17033. Hershey Company is a major manufacturer
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and seller of chocolate, confectionery and snack products. Hershey Company is the
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exclusive United States licensee of the YORK trademark, the CADBURY trademark
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COMPLAINT
and trade dress, and the KIT KAT trademark and trade dress, and the ROLO
trademark and trade dress with respect to the products at issue in this lawsuit.
8.
Hershey Chocolate is a corporation organized and existing under the
laws of the State of Delaware, with its principal place of business at 4860 Robb
Street, Wheat Ridge, Colorado 80033. Hershey Chocolate is a wholly owned
subsidiary of Hershey Company and is the owner of the REESES trade dress and
the MALTESER trademark.
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9.
On information and belief, defendant LBB is a limited liability
company organized and existing under the laws of the State of New Jersey, with
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places of business at 2015 S. Acacia Court, Rancho Dominguez, CA 90220 and 201
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Penhorn Avenue, Secaucus, New Jersey 07094. On information and belief, LBB is
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engaged in the business of importing, distributing and selling a wide range of
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products throughout the United States, including the Infringing Products at issue in
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this lawsuit.
JURISDICTION AND VENUE
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10.
The Court has subject matter jurisdiction over Hersheys federal-law
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claims for trademark and trade dress infringement, trademark and trade dress
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dilution, false designation of origin, and unfair competition claims under Section 39
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of the Lanham Act, 15 U.S.C. 1121, and under 28 U.S.C. 1331 and 1338(a) &
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(b). The Court has subject matter jurisdiction over Hersheys state-law claims under
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28 U.S.C. 1367 and, because the amount in controversy exceeds $75,000 exclusive
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of interest and costs and there is complete diversity of citizenship, under 28 U.S.C.
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1332.
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The Court has personal jurisdiction over defendant because, upon
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information and belief, defendant is present and doing business in the State of
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California and this judicial district either directly or through its agents, and has
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distributed its Infringing Products to persons in, and offered its Infringing Products
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for sale in, the State of California and this judicial district.
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COMPLAINT
12.
Venue is appropriate in this Court pursuant to 28 U.S.C. 1391 because
defendant is subject to personal jurisdiction in this judicial district and because a
substantial part of the events giving rise to plaintiffs claims occurred in this judicial
district.
ALLEGATIONS COMMON TO ALL CLAIMS
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A.
Hersheys Federally Registered and Famous

REESES Orange Mark and REESES Trade Dress
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Among Hersheys most successful product lines is the REESES family
of candy products, first introduced in 1928. For more than 40 years, Hersheys
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REESES products have been sold throughout the United States in packaging that
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features a distinctive orange background color and a distinctive combination of
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orange, yellow and brown elements.
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Hershey Chocolate owns an incontestable, valid, subsisting and existing
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federal trademark registration (No. 2,256,226) consisting of an orange-colored
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background covering the entirety of the packaging for the goods, for candy and
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confectionery chips for baking with peanut butter as the characterizing flavor or one
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of various characterizing flavors (the REESES Orange Mark). A copy of the
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certificate of registration for the REESES Orange Mark is attached as Exhibit A.
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Hersheys REESES brand candy products have also been widely
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advertised and sold throughout the United States for many years in packaging that
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features a unique combination of orange, brown and yellow elements (including the
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orange background of the REESES Orange Mark, with prominent yellow type with
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dark outlining). These elements are the subject of an incontestable, valid, subsisting
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and existing federal trademark registration (No. 925,609) owned by Hershey
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Chocolate for the mark REESES MILK CHOCOLATE PEANUT BUTTER CUPS
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and Design (the REESES Trade Dress). A copy of the certificate of registration
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for the REESES Trade Dress is attached as Exhibit B.
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COMPLAINT
16.
The REESES family of products includes the famous REESES Peanut
Butter Cup, REESES Peanut Butter Cup Miniatures, REESES PIECES candies,
REESES WHIPPS, REESES Crispy Crunchy, REESES FAST BREAK,
REESES Sticks and REESES BIG CUP, all of which are examples of how
Hershey uses its distinctive REESES Orange Mark and its distinctive REESES
Trade Dress on packages to immediately identify these candy products as part of the
REESES family of products. Representative images of product packaging
embodying the REESES Trade Dress and REESES Orange Mark are attached as
Exhibit C.
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Hershey Chocolate also owns a number of valid, subsisting and existing
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federal trademark registrations for various iterations of packaging for its REESES
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brand line extensions, each of which claims a combination of orange, yellow and
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brown as a feature of the mark. Copies of the certificates of registration for these
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designs are attached as Exhibit D.
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The distinctive REESES orange background color that comprises the
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REESES Orange Mark is an arbitrary design element that is nonfunctional and
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inherently distinctive. Likewise, the REESES Trade Dress constitutes an arbitrary
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combination of arbitrary design elements, the overall appearance and the elements of
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which are nonfunctional and inherently distinctive.
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In addition, for many decades, the REESES Orange Mark and the
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REESES Trade Dress have figured prominently in Hersheys promotion of the
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REESES brand. As early as the 1960s, Hershey used print advertising that alerted
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consumers to Look for REESES Peanut Butter Cups wherever candy is sold, in the
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familiar orange wrapper and to Look for the bright orange pack. Many of
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Hersheys print ads for the REESES family of products are set against a field of the
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unique REESES orange color used in the REESES packaging, with orange, brown
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and yellow elements. Other advertising and promotional materials for REESES
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products also feature the bright REESES orange with elements of orange, brown
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COMPLAINT
and yellow. Hershey spends millions of dollars for advertising of its REESES
family of peanut butter products each year.
20.
Hersheys REESES Peanut Butter Cups is one of the most popular
candy bar products in the country, with sales of over $1 billion each year in the
United States alone in packaging bearing the REESES Orange Mark and the
REESES Trade Dress. In total, sales of the REESES family of products in the
United States have exceeded $7 billion in the last five years alone.
21.
By virtue of Hersheys substantial sales, marketing and use of the
REESES Orange Mark and the REESES Trade Dress throughout the United States
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in connection with the REESES family of products, the REESES Orange Mark and
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the REESES Trade Dress have become famous and well known, have become
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distinctive of Hersheys products, and have come to identify and indicate the source
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of Hersheys products to consumers and the trade. Hershey has developed for itself
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and its REESES Orange Mark, REESES Trade Dress and REESEs family of
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products substantial goodwill and an excellent reputation among actual and potential
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purchasers and users of its products.
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In light of the distinctiveness of the REESES Orange Mark and the
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REESES Trade Dress and the duration and extent of Hersheys sales, marketing and
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use of this mark throughout the United States, the REESES Orange Mark and the
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REESES Trade Dress are distinctive and famous among consumers in the State of
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California and throughout the United States.
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B.
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Defendants Infringement and Dilution of the

REESES Orange Mark and the REESES Trade Dress
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Well after Hershey first began using its REESES Orange Mark and the
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REESES Trade Dress for its candy products, and after those marks had become
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famous, defendant commenced selling, in the United States, TOFFEE CRISP brand
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confectionery products that are manufactured for sale outside of the United States by
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COMPLAINT
entities other than Hershey and that are not authorized by Hershey for sale in the
United States.
24.
The TOFFEE CRISP products sold by defendants use sold in a package
design that is strikingly similar to the REESES Orange Mark and REESES Trade
Dress.
25.
First, the predominant color on the TOFFEE CRISP package is a shade
of orange that is identical or nearly identical to the shade of orange that is protected
by the REESES Orange Mark and that Hershey uses in connection with its
REESES family of products.
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Second, the name TOFFEE CRISP is displayed in an identical or nearly
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identical shade of yellow as Hershey uses on its REESES packaging for the words
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Reeses, Pieces, and Big Cup, among others, and uses a slanted font similar to
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that of the REESES packaging.
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Third, the yellow TOFFEE CRISP text is surrounded by dark outlining
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that is nearly identical to the dark outlining that Hershey uses for yellow type on its
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REESES products.
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An image of a TOFFEE CRISP product of the type sold by defendant is
set forth below, above an image of Hersheys REESES product:
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Example of infringing
TOFFEE CRISP products
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Example of Hershey
REESES products
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COMPLAINT
29.
On information and belief, defendant imports its infringing TOFFEE
CRISP products into the United States and offers them for sale through, inter alia,
its sales offices and catalogs. On information and belief, defendant also advertises
and sells its TOFFEE CRISP products through its website (www.lbbimports.com).
30.
The TOFFEE CRISP products that defendant sells in the United States
are not manufactured or authorized by Hershey. Defendant has never been
authorized by Hershey or its affiliates to use the REESES Orange Mark or the
REESES Trade Dress, or any variants thereof, in connection with candy or any
other product.
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31.
Given that the trade dress of the TOFFEE CRISP products sold by
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defendant is extremely similar to Hersheys famous REESES Orange Mark and
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famous REESES Trade Dress, and is used for confectionery products, defendants
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sale of TOFFEE CRISP products inevitably will cause confusion among consumers
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as to the origin, source or sponsorship of defendants TOFFEE CRISP products.
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32.
In addition, the TOFFEE CRISP trade dress is likely to dilute the
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distinctive quality of the REESES Orange Mark and the REESES Trade Dress by
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lessening their capacity to identify and distinguish Hersheys products.
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33.
Defendants acts are causing and will continue to cause damage and
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irreparable harm to Hershey and the valuable reputation and goodwill of its marks
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with purchasers and consumers.
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C.
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Hersheys Exclusive Right to Use the YORK Mark

34.
The distinctive and famous YORK trademark has been used since the
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1920s in connection with chocolate and confectionery products. The well-known
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YORK peppermint patty was introduced in 1940. For the last quarter-century, since
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1988, YORK-branded products have been manufactured and distributed in the
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United States by Hershey Company.
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35.
Hershey Company owns an exclusive license (even as to the licensor) to
use the famous registered trademark YORK in connection with, inter alia, all food
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COMPLAINT
and food-related products in the United States. Hershey Companys licensor, Kraft
Foods Ireland Intellectual Property Limited (Kraft), owns two incontestable, valid,
subsisting and existing United States trademark registrations for the YORK
trademark (Nos. 564,557 and 1,644,557). Copies of the certificates for the foregoing
federal registrations for the YORK mark are attached as Exhibit E.
36.
The YORK mark has been extensively advertised and used throughout
the United States for decades. Hershey has spent tens of millions of dollars on
advertising for YORK products and sells more than $100 million of YORK products
each year in the United States.
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37.
Through substantial use, sales and promotion of products bearing the
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YORK mark by Hershey and its licensor, the YORK mark has become extremely
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well known and famous for use in connection with YORK confectionery products
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licensed by Hershey, has become distinctive of these products and has come to
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identify and indicate the source of these products to consumers and the trade.
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38.
In light of the distinctiveness of the YORK mark, as well as the
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duration and extent of Hersheys sales, marketing and use of the YORK mark
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throughout the United States, the YORK mark is distinctive and famous among
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consumers in the State of California and throughout the United States.
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39.
Pursuant to the license agreement between Hershey Company and
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Krafts predecessor-in-interest, Cadbury Schweppes Inc., Hershey is expressly
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authorized to file a lawsuit to protect the marks that it licenses from Kraft.
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D.
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Defendants Infringement and Dilution of the YORK Mark

40.
Well after Hershey began using the YORK mark in the United States,
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and after the YORK mark had become famous in the United States, defendant
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commenced selling in the United States YORKIE brand confectionery products that
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are manufactured for sale outside of the United States by entities other than Hershey
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and that are not authorized by Hershey for sale in the United States.
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COMPLAINT
41.
On information and belief, defendant imports these infringing products
into the United States and offers them for sale through, inter alia, its sales offices
and catalogs. On information and belief, defendant also advertises and sells its
YORKIE products through its website (www.lbbimports.com).
42.
The YORKIE products that defendant sells in the United States are not
manufactured or authorized by Hershey. Defendant has never been authorized by
Hershey or its affiliates to use the YORK mark, or any variant thereof, in connection
with candy or any other product.
43.
Given that the YORKIE mark used by defendant is extremely similar to
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Hersheys famous YORK mark, and is used for chocolate confectionery products,
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defendants sale of YORKIE products inevitably will cause confusion among
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consumers as to the origin, source or sponsorship of defendants YORKIE product.
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In addition, the YORKIE mark is likely to dilute the distinctive quality
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of the famous YORK mark by lessening its capacity to identify and distinguish
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Hersheys products.
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irreparable harm to Hershey and the valuable reputation and goodwill of its licensed
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marks with purchasers and consumers.
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E.
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Hersheys Exclusive Rights to Use the MALTESER Mark

46.
Since as early as 1961, Hershey and its predecessors-in-interest have
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used the distinctive trademark MALTESER in connection with chocolate-covered
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malted milk ball candy products.
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47.
Hershey owns incontestable, valid, subsisting and existing United
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States trademark registrations for the MALTESER mark (Reg. No. 761,679) and for
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a stylized version of the MALTESER mark (Reg. No 1,923,905) for use in
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connection with candy. Copies of the certificates for the foregoing federal
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registrations are attached as Exhibit F.
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COMPLAINT
48.
The MALTESER mark has been used in the United States for more
than 52 years in connection with chocolate-covered malted milk ball candy products
in the United States.
49.
Through substantial sales, marketing and use of the MALTESER mark
in the United States, the MALTESER mark has become distinctive of Hersheys
products in the United States, and has come to identify and indicate the source of
those products to consumers and the trade.
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50.
In light of the distinctiveness of the MALTESER mark, Hersheys sales
and use of the mark, and Hersheys federal registrations pertaining to the mark,
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Hershey owns the exclusive right to use the word MALTESER, or any term
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substantially similar thereto or derivative thereof, in connection with candy products
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throughout the United States.
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F.
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Defendants Infringement of the MALTESER Mark

51.
Defendant sells chocolate-covered malted milk ball candy products in
the United States under the brand name MALTESERS.

52.
On information and belief, defendant imports these infringing products
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into the United States and offers them for sale through, inter alia, its sales offices
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and catalogs. On information and belief, defendant also advertises and sells its
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MALTESERS products through its website (www.lbbimports.com).
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53.
The MALTESERS products that defendant sells in the United States are
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not manufactured or authorized by Hershey. Indeed, defendant has never been
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authorized by Hershey or its affiliates to use the MALTESER mark, the
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MALTESERS mark, or any variant thereof, in connection with candy or any other
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product.
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54.
Defendants MALTESERS mark is merely the plural form of Hersheys
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registered mark MALTESER, and is used by defendant in connection with an
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extremely similar product.
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COMPLAINT
55.
Accordingly, defendants sale of candy under its MALTESERS mark
inevitably will cause confusion among consumers as to the origin, source or
sponsorship of the products offered by defendant, and cause many potential
purchasers to mistakenly believe that the products are the same as those offered by
Hershey, or that they are in some way authorized or licensed by the source of the
MALTESER brand.
56.
irreparable harm to Hershey and the valuable reputation and goodwill of its marks
with purchasers and consumers.
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G.
Hersheys Exclusive Right to Use the CADBURY Mark and
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the CADBURY Trade Dress for Chocolate Products in the United States
57.
The well-known and famous CADBURY brand of chocolate candy was
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introduced in the United Kingdom in approximately 1855. For a quarter of a
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century, since 1988, Hershey has manufactured and sold chocolate products bearing
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the CADBURY mark in the United States.
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58.
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use the famous registered trademark CADBURY in the United States in connection
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with, among other things, chocolate candy. Hershey Companys licensor, Cadbury
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UK Limited Corporation (Cadbury UK), owns incontestable, valid, subsisting and
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existing United States trademark registrations covering the famous CADBURY
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mark and logos, including Registration No. 65,081 covering CADBURY for
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chocolate; Registration No. 230,468 covering CADBURY for, inter alia,
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chocolate candy; Registration No. 977,811 covering CADBURY for, inter alia,
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candy; and Registration No. 1,107,458 covering a stylized version of the
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CADBURY mark for, inter alia, chocolate and chocolates and non-medicated
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confectionery. Cadbury UK also owns incontestable, valid, subsisting and existing
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United States trademark registrations covering the names of various candy bars sold
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under the CADBURY brand, including CARAMELLO (Reg. Nos. 771,569 and
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COMPLAINT
2,962,010) and DAIRY MILK (Reg. Nos. 1,403,327, 2,942,301 and 4,224,494).
Cadbury UK also owns an incontestable, valid, subsisting and existing United States
trademark registration covering a design that appears on the packaging of some
milk-chocolate varieties of CADBURY products, which depicts milk being from one
full glass on the left and one half glass on the right (the glass and a half design)
(Reg. No. 1,460,259). Copies of the certificates of registration for the foregoing
federal registrations are attached as Exhibit G.
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59.
Hershey Company also owns an exclusive license (even as to the
licensor) to use the distinctive trade dress associated with the CADBURY mark (the
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CADBURY Trade Dress). The CADBURY Trade Dress features, inter alia, a
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purple and gold color scheme, the distinctive CADBURY stylized script (typically in
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gold) including the large spiral C and the mirror-image design of the d and b,
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and, on some milk-chocolate varieties of CADBURY products, the glass and a
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half design. Representative images of product packaging embodying the
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CADBURY Trade Dress are attached as Exhibit H.
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60.
The CADBURY Trade Dress constitutes an arbitrary combination of
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arbitrary design elements, the overall appearance and the elements of which are
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nonfunctional and inherently distinctive.
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61.
The CADBURY mark and the CADBURY Trade Dress have been
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extensively advertised and used throughout the United States for decades. Hershey
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Company has spent tens of millions of dollars on advertising for CADBURY
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products (including CARAMELLO and DAIRY MILK products) that feature the
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CADBURY mark and the CADBURY Trade Dress, and retail sales of CADBURY
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chocolate products bearing those marks have exceeded half a billion dollars in the
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past five years alone.
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62.
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CADBURY mark and the CADBURY Trade Dress throughout the United States in
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connection with the CADBURY family of products, the CADBURY mark and the
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COMPLAINT
CADBURY Trade Dress have become famous and well known, have become
distinctive of Hersheys products, and have come to identify and indicate the source
of Hersheys products to consumers and the trade. Hershey has developed for itself
and its CADBURY mark, CADBURY Trade Dress and CADBURY family of
products substantial goodwill and an excellent reputation among actual and potential
purchasers and users of its products in the United States.
63.
Pursuant to the license agreement between Hershey Company and
Cadbury UK, Hershey is expressly authorized to file suit in order to protect the
marks that it licenses from Cadbury UK from infringement, dilution, unfair
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competition, or impairment in the United States.
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H.
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Defendants Infringement and Dilution of

the CADBURY Mark and the CADBURY Trade Dress
64.
Well after Hershey began using the CADBURY mark and the
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CADBURY Trade Dress in the United States, and after the CADBURY mark and
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the CADBURY Trade Dress had become famous in the United States, defendant
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commenced selling CADBURY chocolate products in the United States that are
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manufactured for sale outside of the United States by entities other than Hershey and
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that are not authorized by Hershey for sale in the United States.
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65.
On information and belief, defendant imports its infringing CADBURY
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products into the United States and offers them for sale through, inter alia, its sales
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offices and catalogs. On information and belief, defendant also advertises and sells
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its CADBURY products through its website (www.lbbimports.com).
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66.
Defendants CADBURY products bear marks that are identical to the
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registered CADBURY mark for which Hershey owns an exclusive license in the
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United States. In addition, many of defendants CADBURY products bear marks
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that are identical to the registered CARAMELLO or DAIRY MILK marks, for
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which Hershey owns an exclusive license in the United States.
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COMPLAINT
67.
Defendants CADBURY products bear a trade dress that is essentially
identical to the distinctive and well-known CADBURY Trade Dress for which
Hershey owns an exclusive license. Defendants products bear the same purple and
gold color scheme, the same distinctive CADBURY stylized script in gold type
including the large spiral C and mirror-image design of the d and b, and the
same glass and a half design on milk chocolate varieties.
68.
The CADBURY chocolate products that defendant sells in the United
States are not manufactured or authorized by Hershey. Upon information and belief,
these products are manufactured by Hersheys licensor for sale in markets outside of
10
the United States and are not intended for sale within the United States. Defendant
11
has never been authorized by Hershey to use the CADBURY mark or the
12
CADBURY Trade Dress in connection with chocolates or any other product in the
13
United States.
14
69.
Defendants imported CADBURY products are materially different
15
from Hersheys CADBURY products that are intended for sale in the United States
16
in a number of ways. Among other differences, the packages for the defendants
17
CADBURY products display non-U.S. contact information and often bear
18
nutritional information required by non-U.S. regulatory authorities. In addition,
19
defendant also sells some different varieties and configurations of CADBURY
20
products than Hershey.
21
70.
Defendants use of marks that are identical to the CADBURY mark,
22
and a trade dress that is identical or nearly identical to the CADBURY Trade Dress,
23
on chocolate products that are not manufactured, authorized, or approved by
24
Hershey, and that are materially different than those intended by Hershey for sale in
25
the United States, is likely to cause confusion among consumers as to the origin,
26
source, or sponsorship of the defendants CADBURY products.
27
28
16
COMPLAINT
71.
In addition, defendants sale of CADBURY products is likely to dilute
the distinctive quality of the CADBURY mark and the CADBURY Trade Dress by
lessening their capacity to identify and distinguish Hershey Companys products.
72.
I.
Hersheys Exclusive Rights to Use the KIT KAT Mark and
the KIT KAT Trade Dress for Confectionery Products in the United
States
10
73.
The well-known and famous KIT KAT brand of chocolate-covered
11
wafer confections was introduced in United Kingdom in approximately 1937. For
12
more than thirty-five years, since 1979, Hershey Company has manufactured and
13
sold confectionery products bearing the KIT KAT mark in the United States.
14
74.
15
use the famous registered mark KIT KAT in the United States in connection with,
16
inter alia, the familiar chocolate-covered wafer confections. Hershey Companys
17
licensor, Socit des Produits Nestl S.A. (Nestl), owns incontestable, valid,
18
subsisting and existing United States trademark registrations for the KIT KAT mark
19
(Reg. No. 1,022,181) and for a stylized version of the KIT KAT mark (Reg. No
20
1,535,582) for use in connection with wafer fingers in milk chocolate. Copies of
21
the certificates of registration for the foregoing federal registrations are attached as
22
Exhibit I.
23
75.
Hershey Company also owns an exclusive license to use the distinctive
24
trade dress associated with KIT KAT products (the KIT KAT Trade Dress). The
25
KIT KAT Trade Dress features a distinctive red-and-white color scheme and a
26
distinctive stylized script, which includes two oversized Ks that dwarf the other
27
letters in the words Kit and Kat, slanted typeface, and an oval shape that
28
17
COMPLAINT
surrounds the term Kit Kat. Representative images of product packaging
embodying the KIT KAT Trade Dress are attached as Exhibit J.
76.
The KIT KAT Trade Dress constitutes an arbitrary combination of
77.
The KIT KAT mark and the KIT KAT Trade Dress have been
extensively advertised and used throughout the United States for decades. Hershey
has spent tens of millions of dollars on advertising for KIT KAT products that
feature the KIT KAT mark and the KIT KAT Trade Dress in the past five years
10
alone, and retail sales of KIT KAT products bearing the KIT KAT mark and the KIT
11
KAT Trade Dress in that time period have exceeded one billion dollars.
12
78.
By virtue of Hersheys substantial sales, marketing and use of the KIT
13
KAT mark and the KIT KAT Trade Dress throughout the United States in
14
connection with Hersheys KIT KAT products, the KIT KAT mark and the KIT
15
KAT Trade Dress have become famous and well known, have become distinctive of
16
Hersheys products, and have come to identify and indicate the source of Hersheys
17
products to consumers and the trade. Hershey has developed for itself and its KIT
18
KAT mark, KIT KAT Trade Dress and KIT KAT products substantial goodwill and
19
an excellent reputation among actual and potential purchasers and users of its
20
products.
21
79.
In light of the distinctiveness of the KIT KAT mark and the KIT KAT
22
Trade Dress and the duration and extent of Hersheys sales, marketing and use of
23
this mark throughout the United States, the KIT KAT mark and the KIT KAT Trade
24
Dress are distinctive and famous among consumers in the State of California and
25
throughout the United States.
26
27
80.
Pursuant to a license agreement between Hershey Company and
Nestls predecessor-in-interest, Rowntree Mackintosh Limited, Hershey is
28
18
COMPLAINT
expressly authorized to file suit in order to protect the marks that it licenses from
Nestl from infringement, dilution, or unfair competition in the United States.
J.
4
5
Defendants Infringement and Dilution of the

KIT KAT Mark and the KIT KAT Trade Dress
81.
Well after Hershey began using the KIT KAT mark and the KIT KAT
Trade Dress in the United States, and after the KIT KAT mark and Trade Dress had
become famous in the United States, defendant commenced selling KIT KAT-
branded chocolate-covered wafer products in the United States that are
manufactured for sale outside of the United States by entities other than Hershey and
10
11
that are not authorized by Hershey for sale in the United States.
82.
On information and belief, defendant imports its infringing KIT KAT
12
13
14
its KIT KAT products through its website (www.lbbimports.com).
15
83.
Defendants KIT KAT products bear the mark KIT KAT, which is
16
identical to the registered mark KIT KAT owned by Hersheys licensor. Moreover,
17
defendants KIT KAT products use a stylized script that is nearly identical to the
18
registered stylized KIT KAT mark, with a trade dress that is nearly identical to the
19
KIT KAT Trade Dress.
20
84.
The KIT KAT products that defendant sells in the United States are not
21
22
Hershey to use the KIT KAT mark or the KIT KAT Trade Dress in connection with
23
chocolate-covered wafers or any other product.
24
85.
Defendants imported KIT KAT products are materially different from
25
Hersheys KIT KAT products that are intended for sale in the United States in a
26
number of ways. Among other differences, the packages for the defendants KIT
27
KAT products display non-U.S. contact information and often bear nutritional
28
information required by non-U.S. regulatory authorities.

19
COMPLAINT
86.
Defendants use of a mark that is identical to the registered mark KIT
KAT, in a stylized form that is nearly identical to the stylized mark licensed by
Hershey, with a trade dress that is nearly identical to the KIT KAT Trade Dress, on
products that are not manufactured, authorized, or approved by Hershey, and that are
materially different than those intended by Hershey for sale in the United States, is
likely to cause confusion among consumers as to the origin, source, or sponsorship
of the defendants KIT KAT products.
8
9
10
87.
In addition, defendants sale of KIT KAT products is likely to dilute the
distinctive quality of the KIT KAT mark and the KIT KAT Trade Dress by lessening
their capacity to identify and distinguish Hersheys products.
11
88.
12
13
14
K.
15
16
Hersheys Exclusive Rights to Use the ROLO Mark and

the Trade Dress for Confectionery Products in the United States
89.
The distinctive and famous ROLO brand of chocolate confections was
17
introduced in United Kingdom in approximately 1937. Since 1979, for over thirty-
18
five years, Hershey Company has manufactured and sold confectionery products
19
bearing the ROLO mark in the United States.
20
90.
21
use the famous registered mark ROLO in the United States in connection with, inter
22
alia, the familiar caramel-filled chocolates. Hershey Companys licensor, Nestl,
23
owns incontestable, valid, subsisting and existing United States trademark
24
registrations for the ROLO mark (Reg. No. 3,365,435) and for a stylized version of
25
the ROLO mark (Reg. No. 363,472) for use in connection with candy. Copies of
26
the certificates of registration for the foregoing federal registrations are attached as
27
Exhibit K.
28
20
COMPLAINT
91.
Hershey Company also owns an exclusive license to use the distinctive
trade dress associated with ROLO products (the ROLO Trade Dress). The ROLO
Trade Dress features a cylindrical package bearing a distinctive red, brown, and gold
scheme. The word ROLO is featured prominently in thick, red lettering with thin
white outlining, set against a brown background with gold foil exposed at the ends
of each cylinder. An image of the distinctively-shaped ROLO product is set to the
right of the large, red ROLO text. An example of the distinctive ROLO Trade
Dress, as it appears on one of Hersheys ROLO products, is set forth below:
9
10
11
12
92.
The ROLO Trade Dress constitutes an arbitrary combination of
13
14
15
93.
The ROLO mark and Trade Dress have been extensively advertised and
16
used throughout the United States for decades. Hershey has spent tens of millions of
17
dollars on advertising for its ROLO products in the United States over the past five
18
years. Hershey sells more than $100 million of ROLO products each year in the
19
United States.
20
94.
21
ROLO mark and the ROLO Trade Dress throughout the United States in connection
22
with Hersheys ROLO products, the ROLO mark and the ROLO Trade Dress have
23
become famous and well known, have become distinctive of Hersheys products,
24
and have come to identify and indicate the source of Hersheys products to
25
consumers and the trade. Hershey has developed for itself and its ROLO mark,
26
ROLO Trade Dress and ROLO products substantial goodwill and an excellent
27
reputation among actual and potential purchasers and users of its products.
28
21
COMPLAINT
95.
In light of the distinctiveness of the ROLO mark and the ROLO Trade
Dress and the duration and extent of Hersheys sales, marketing and use of this mark
throughout the United States the ROLO mark and the ROLO Trade Dress are
distinctive and famous among consumers in the State of California and throughout
the United States.
96.
Pursuant to a license agreement between Hershey Company and
Nestls predecessor-in-interest, Rowntree Mackintosh Limited, Hershey is
expressly authorized to file suit in order to protect the marks that it licenses from
Nestl from infringement, dilution, or unfair competition in the United States.
10
11
12
L.
Defendants Infringement and Dilution of

the ROLO Mark and the ROLO Trade Dress
97.
Well after Hershey began using the ROLO mark and the ROLO Trade
13
Dress in the United States, and after the ROLO mark and the ROLO Trade Dress
14
had become famous in the United States, defendant commenced selling ROLO-
15
branded caramel-filled chocolate products in the United States that are manufactured
16
for sale outside of the United States by entities other than Hershey and that are not
17
authorized by Hershey for sale in the United States.
18
98.
On information and belief, defendant imports its infringing ROLO
19
20
21
its ROLO products through its website (www.lbbimports.com).
22
99.
Defendants ROLO products bear marks that are identical to the
23
registered ROLO mark for which Hershey owns an exclusive license in the United
24
States.
25
100.
Defendants ROLO products bear a trade dress that is essentially
26
identical to the distinctive and well-known ROLO Trade Dress for which Hershey
27
owns an exclusive license. Defendants products bear the same brown, red and gold
28
22
COMPLAINT
color scheme, and a highly similar red script with white outlining for the ROLO
mark.
101.
An image of a ROLO product of the type sold by defendant is set forth
below, beside an image of Hersheys ROLO product:
5
6
7
8
9
Example of Hersheys ROLO product

102.
Example of infringing ROLO product
The ROLO products that defendant sells in the United States are not
10
11
Hershey to use the ROLO mark or the ROLO Dress in connection with caramel-
12
filled chocolates or any other product.
13
103.
Defendants imported ROLO products are materially different from
14
Hersheys ROLO products that are intended for sale in the United States in a number
15
of ways. Among other differences, the packages for the defendants ROLO products
16
display non-U.S. contact information and often bear nutritional information required
17
by non-U.S. regulatory authorities.
18
104.
Defendants use of a mark that is identical to the registered mark
19
ROLO, in a stylized form that is nearly identical to the stylized mark licensed by
20
Hershey, with a trade dress that is nearly identical to the ROLO Trade Dress, on
21
products that are not manufactured, authorized, or approved by Hershey, and that are
22
materially different than those intended by Hershey for sale in the United States, is
23
likely to cause confusion among consumers as to the origin, source, or sponsorship
24
of the defendants ROLO products.
25
105.
In addition, defendants sale of ROLO products is likely to dilute the
26
distinctive quality of the ROLO mark and the ROLO Trade Dress by lessening their
27
capacity to identify and distinguish Hersheys products.
28
23
COMPLAINT
106.
M.
5
6
Defendants Acknowledgement of Its Infringement and

Defendants Agreement to Stop Importing the Infringing Products
107.
As set forth in detail below, defendant has been on notice of Hersheys
objections to its sale of the Infringing Products since at least December 2012. After
months of delay cause by defendants failure to offer a substantive response to
Hersheys objections, defendant finally acknowledged that its activities infringed
10
Hersheys trademark rights and promised to stop advertising and selling the
11
Infringing Products in the United States, an agreement it has broken.
12
108.
Hersheys counsel first wrote to defendant on December 19, 2012,
13
objecting to the sales of the Infringing Products and demanding that defendant cease
14
and desist from infringing or diluting Hersheys valuable trademark rights in the
15
Hershey Marks. Hershey requested a response from defendant by January 9, 2013.
16
Hersheys letter was addressed to Mr. Nathan Dulley, who, on information and
17
belief, was (and remains) the President of LBB. A copy of this letter (without the
18
voluminous exhibits thereto), along with the other written correspondence between
19
the parties described below, is attached as Exhibit L.
20
109.
On or about January 14, 2013, Mr. Dulley left a voicemail for
21
Hersheys counsel, requesting additional time to respond to Hersheys letter in light
22
of Mr. Dulleys travel schedule.
23
110.
On February 14, 2013, having not heard further from Mr. Dulley,
24
Hersheys counsel emailed Mr. Dulley, requesting a response as soon as possible
25
in order to resolve the situation. Still, Hershey received no response.
26
111.
Hersheys counsel wrote to defendant on June 28, 2013, reiterating
27
objecting to defendants important and sale of the Infringing Products. Hershey
28
requested a response by July 15, 2013.

24
COMPLAINT
112.
On July 12, 2013, Mr. Dulley sent an email response to Hersheys
counsel, requesting an extension of time to respond to Hersheys letter until August
2, 2013. Hersheys counsel agreed to the extra time, but requested that defendant
confirm before then that [LBB was] agreeable in principle to stopping the
objectionable sales.
113.
In a reply dated August 2, 2013, Mr. Dulley responded that LBB does
agree in principle to stopping the objectionable sales. Mr. Dully also promised to
provide more detailed response later that day.
114.
On August 7, 2013, Mr. Dulley sent another email to Hersheys
10
counsel. Mr. Dulley not only reiterated defendants agreement to stop selling the
11
Infringing Products, but admitted that the sale of those products infringed Hersheys
12
rights:
13
As previously stated in my email from Friday 8/02/2013, I
14
agree in principle to stop what Hershey considers to be
15
objectionable sales, and agree there is indeed an element
16
of infringement to the majority of what was brought forth
17
in your letter.
18
(Emphasis added). In his email, Mr. Dulley went on to state that there was a large
19
demand for imported CADBURY products and proposed that LBB be permitted to
20
import CADBURY products from outside the United States in exchange for paying a
21
royalty to Hershey.
22
115.
After receiving Mr. Dulleys August 7, 2013 email, Hershey obtained
23
an electronic copy of defendants Christmas 2013 catalog. The catalog contained
24
dozens of pages with advertisements for imported CADBURY, MALTESERS,
25
YORKIE and ROLO products. The metadata for the document suggests that it was
26
created on or about June 21, 2013well after Hershey first objected to the sale of
27
the Infringing Products. On information and belief, defendant continued to
28
distribute its Christmas 2013 catalog during the month of August 2013, even after
25
COMPLAINT
agreeing to stop selling the Infringing Products. A copy of excerpts from
defendants Christmas 2013 catalog is attached as Exhibit M.
116.
Hersheys counsel responded by email on August 27, 2013, rejecting
defendants proposal to import CADBURY products under a royalty agreement.
Hersheys counsel stated that Hershey appreciated [LBBs] agreement in principle
to stop importing to products to which Hershey previously objected. Hershey also
expressed concerns that defendants distribution of the Christmas 2013 catalog
raise[d] serious questions as to whether [LBB was] giving this matter the serious
attention that it deserves.
10
117.
On September 9, 2013, Mr. Dulley emailed Hersheys counsel, stating
11
that he would provide a more fulsome response the following day. He reiterated
12
defendants agreement to stop its infringing sales: Bottom line well stop
13
Cadbury sales that infringe on Hershey business.
14
118.
On Septembers 11, 2013, Mr. Dulley sent another email to Hersheys
15
counsel, again confirming defendants agreement to stop selling the Infringing
16
Products: This email confirms that LBB will stop all distribution and sales in the
17
US of the CADBURY, KIT KAT, ROLO, MALTESERS, YORKIE and TOFFEE
18
CRISP products to which Hershey objects.
19
20
21
119.
On September 13, 2013, Hersheys counsel responded by thanking
defendant for its agreement to stop importing the Infringing Products.

120.
On October 10, 2013, Mr. Dulley emailed Hersheys counsel, again
22
requesting a licensing arrangement where defendant would be permitted to import
23
the Infringing Products if it paid a royalty to Hershey.
24
121.
On October 23, 2013, Hersheys counsel responded that Hershey was
25
not interested in any such arrangement, enclosing a proposed letter agreement to
26
memorialize the agreement reached by the parties:
27
While I appreciate your effort to find some other solution
28
to this matter, we trust that LBB will abide by its prior

26
COMPLAINT
agreement to cease sale in the United States of these
products (and the other imported products that I have
identified as violating Hersheys rights in the U.S.). To
that end, while I understand we have an agreement that
LBB Imports is stopping these sales in exchange for
Hershey not pursuing further action, I enclose a more
formal letter to memorialize that agreement.
8
9
10
122.
Neither Mr. Dulley nor anyone else at LBB responded to the October
23, 2013 email from Hersheys counsel.

123.
In consideration for defendants unambiguous promise to stop
11
importing and selling within the United States the Infringing Products, Hershey
12
refrained from taking additional steps to protect its valuable trademark rights, such
13
as filing a lawsuit against defendant for trademark and trade dress infringement,
14
trademark and trade dress dilution, false designation of origin and unfair
15
competition.
16
N.
Its Continued Bad-Faith Infringement of Hersheys Trademark Rights
17
18
Defendants Breach of Its Agreement With Hershey and
124.
It has come to Hersheys attention that defendant either never stopped
19
or has resumed its infringing activity, in violation of its promises to Hershey to stop
20
such activity. Defendants actions, as described below, indicate that it pursued such
21
infringing activity in bad faith and in willful disregard of Hersheys trademark
22
rights.
23
125.
Prior to January 2013, defendants seasonal catalogs were available on
24
its website (www.lbbimports.com) for download by the general public. Indeed,
25
Hershey attached pages from defendants Spring & Summer 2013 catalog in its
26
initial letter to defendant dated December 19, 2012.
27
28
27
COMPLAINT
126.
Sometime between January 2013 and August 2013, after receiving
Hersheys December 19, 2012 letter, defendant made changes to its website so that
only users with login credentials are able to download defendants seasonal catalogs.
127.
On information and belief, defendant modified its website specifically
to prevent Hershey from monitoring defendants compliance with its agreement to
stop selling the Infringing Products in the United States.
128.
After defendant agreed to stop selling the Infringing Products in the
United States, it posted an Easter 2014 catalog to its website. However, because
Hersheys counsel lacked login credentials, Hershey was unable to monitor
10
11
defendants compliance with the parties agreement.

129.
Hershey recently obtained an electronic copy of defendants Holiday
12
Catalog 2014. The metadata for the document suggests that it was created on or
13
about June 18, 2014approximately 18 months after Hershey first objected to the
14
sale of the Infringing Products and more than 10 months after defendant agreed to
15
stop such sales.
16
130.
In clear breach of its agreement with Hershey, defendants Holiday
17
Catalog 2014 contains page after page of advertisements for imported CADBURY,
18
MALTESERS, KIT KAT and ROLO productsthe same products that defendant
19
promised to stop importing and selling in the United States. Copies of excerpts from
20
the catalog are attached as Exhibit N.
21
131.
In addition, defendants website continues to advertise imported
22
TOFFEE CRISP, YORKIE, KIT KAT and ROLO products, despite defendants
23
agreement more than a year ago to stop selling such products. A copy of the
24
Confectionary page from defendants website is attached as Exhibit O.
25
26
27
28
28
COMPLAINT
FIRST CLAIM FOR RELIEF
Infringement of Federally Registered Marks
Under Section 32 of the Lanham Act, 15 U.S.C. 1114
4
5
6
132.
Plaintiffs repeat and reallege paragraphs 1 through 131 of this
complaint as if fully set forth herein.

133.
This claim is for the infringement of trademarks registered in the United
States Patent and Trademark Office, pursuant to Section 32 of the Lanham Act, 15
U.S.C. 1114, as amended.
134.
The marks used by defendant, as described above, are confusingly
10
similar to, and are colorable imitations of, the federally registered REESES Orange
11
Mark (Reg. No. 2,256,226), the federally registered elements of the REESES Trade
12
Dress (Reg. No. 925,609; 3,631,320; 4,082,204; 4,082,215; 4,082,217; 4,093,052;
13
4,101,179; 4,120,422; 4,152,566; 4,155,499; 4,256, 316; and 4,330,229); the
14
federally registered YORK mark (Reg. Nos. 564,557 and 1,644,557), the federally
15
registered MALTESER mark (Reg. Nos. 761,679 and 1,923,905), the federally
16
registered CADBURY mark; (Reg. Nos. 65,081; 230,468; 977,811; and 1,107,458);
17
the federally registered CARAMELLO mark (Reg. Nos. 771,569 and 2,962,010);
18
the federally registered DAIRY MILK mark (Reg. Nos. 1,403,327; 2,942,301; and
19
4,224,494); the federally registered glass and a half design mark (Reg. No.
20
1,460,259); the federally registered KIT KAT mark (Reg. Nos. 1,022,181 and
21
1,535,582); and the federally registered ROLO mark (Reg. Nos. 3,365,435 and
22
363,472), and infringe those respective federally registered trademarks.
23
135.
Defendants unauthorized use of the aforementioned marks is likely to
24
cause confusion and mistake and to deceive the public as to the approval,
25
sponsorship, license, source or origin of defendants products.
26
27
136.
On information and belief, defendants acts of trademark infringement
have been done willfully and deliberately, and defendant has profited and been
28
29
COMPLAINT
unjustly enriched by sales that defendant would not otherwise have made but for its
unlawful conduct.
137.
Defendants willful and deliberate acts described above have caused
injury and damages to plaintiffs, and have caused irreparable injury to plaintiffs
goodwill and reputation, and, unless enjoined, will cause further irreparable injury,
whereby plaintiffs have no adequate remedy at law.
SECOND CLAIM FOR RELIEF
Trademark and Trade Dress Infringement,
False Designation of Origin and Unfair Competition
10
Under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)
11
12
13
138.

139.
This claim is for trademark and trade dress infringement, false
14
designation of origin, and unfair competition in violation of Section 43(a) of the
15
Lanham Act, 15 U.S.C. 1125(a).
16
140.
By its unauthorized use of the marks and trade dresses described above,
17
defendant has (i) infringed the REESES Orange Mark, the REESES Trade Dress,
18
the YORK mark, the MALTESER mark, the CADBURY mark, the CADBURY
19
Trade Dress, the KIT KAT mark, the KIT KAT Trade Dress, the ROLO mark and
20
the ROLO Trade Dress; (ii) falsely designated the origin of its products; and
21
(iii) competed unfairly with plaintiffs, all in violation of Section 43(a) of the Lanham
22
Act, 15 U.S.C. 1125(a).
23
141.
On information and belief, defendants acts of trademark infringement,
24
trade dress infringement, false designation of origin and unfair competition have
25
been done willfully and deliberately, and defendant has profited and been unjustly
26
enriched by sales that it would not otherwise have made but for its unlawful conduct.
27
28
142.
30
COMPLAINT
THIRD CLAIM FOR RELIEF
Trademark and Trade Dress Dilution
Under Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c)
6
7
8
9
10
143.

144.
This claim is for the dilution of trademarks and trade dress, pursuant to
Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c).

145.
The REESES Orange Mark, the REESES Trade Dress, the YORK
11
mark, the CADBURY mark, the CADBURY Trade Dress, the KIT KAT mark, the
12
KIT KAT Trade Dress, the ROLO mark and the ROLO Trade Dress are each
13
distinctive and famous within the meaning of Section 43(c) of the Lanham Act, 15
14
U.S.C. 1125(c), and were distinctive and famous prior to the date of defendants
15
conduct challenged herein.
16
146.
Defendants conduct, as described above, is likely to dilute and is
17
diluting the distinctive quality of the famous REESES Orange Mark, REESES
18
Trade Dress, YORK mark, CADBURY mark, CADBURY Trade Dress, KIT KAT
19
mark, KIT KAT Trade Dress, ROLO mark and ROLO Trade Dress, in that
20
defendants challenged marks are likely to create and have created an association
21
between defendants marks and the famous REESES Orange Mark, REESES
22
Trade Dress, YORK mark, CADBURY mark, CADBURY Trade Dress, KIT KAT
23
mark, KIT KAT Trade Dress, ROLO mark and ROLO Trade Dress, which impairs
24
the distinctiveness of those famous marks and lessens the capacity of those famous
25
marks to identify and distinguish products marketed and sold by plaintiffs under
26
those marks.
27
28
147.
On information and belief, defendants acts of trademark dilution have
been done willfully and deliberately and defendant has profited and been unjustly
31
COMPLAINT
enriched by sales that defendant would not otherwise have made but for its unlawful
conduct.
148.
FOURTH CLAIM FOR RELIEF
Trademark and Trade Dress Dilution
Under Cal. Bus. & Prof. Code 14247
10
11
12
13
14
149.

150.
This claim is for dilution of trademarks and injury to business or
reputation under section 14247 of the California Business and Professions Code.
151.
The REESES Orange Mark, the REESES Trade Dress, the YORK
15
mark, the CADBURY mark, the CADBURY Trade Dress, the KIT KAT mark, the
16
KIT KAT Trade Dress, the ROLO mark and the ROLO Trade Dress are each famous
17
marks in the State of California within the meaning of section 14247 of the
18
California Business and Professions Code, and were famous prior to the date of
19
defendants adoption and use of similar designs on packages and in advertising for
20
its candy products.
21
152.
Defendants conduct, as described above, is diluting and will dilute the
22
distinctive quality of Hersheys famous REESES Orange Mark, REESES Trade
23
Dress, YORK mark, CADBURY mark, CADBURY Trade Dress, KIT KAT mark,
24
KIT KAT Trade Dress, ROLO mark and ROLO Trade Dress, thereby lessening the
25
capacity of those marks to identify and distinguish products marketed and sold by
26
plaintiffs under those marks.
27
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153.
On information and belief, defendants acts of trademark dilution have
been done willfully and deliberately and defendant has profited and been unjustly
32
COMPLAINT
enriched by sales that defendant would not otherwise have made but for its unlawful
conduct.
154.
Defendants acts described above have caused injury and damages to
plaintiffs, and have caused irreparable injury to plaintiffs goodwill and reputation
and, unless enjoined, will cause further irreparable injury, whereby plaintiffs have no
adequate remedy at law.
FIFTH CLAIM FOR RELIEF
Common Law Trademark Infringement and Unfair Competition
9
10
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12
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155.

156.
This claim is for trademark infringement and unfair competition in
violation of the common law of the State of California.

157.
Defendants use of its infringing marks and trade dress, as described
14
above, constitutes common law trademark infringement, passing off, and unfair
15
competition in violation of common law.
16
158.
On information and belief, defendants acts of common law trademark
17
infringement, passing off, and unfair competition have been done willfully and
18
deliberately, and defendant has profited and been unjustly enriched by sales that
19
defendant would not otherwise have made but for its unlawful conduct.
20
159.
21
injury and damages to plaintiffs and have caused irreparable injury to plaintiffs
22
23
24
SIXTH CLAIM FOR RELIEF
25
Breach of Contract and Promissory Estoppel
26
27
160.
28
33
COMPLAINT
1
2
3
161.
This claim is for breach of contract and promissory estoppel in violation
of the common law of the State of California.

162.
As set forth above, defendant agreed in writing with Hershey to cease
its importation and sale in the United States of TOFFEE CRISP, YORKIE,
MALTESERS, CADBURY, KIT KAT and ROLO products that are manufactured
outside of the United States by entities other than Hershey and that are not
authorized by Hershey for sale within the United States. In consideration for
defendants promise, Hershey did not pursue its prior claims against defendant for
trademark and trade dress infringement, trademark and trade dress dilution, unfair
10
11
competition and other violations of Hersheys rights.

163.
Pursuant to defendants written promises in August 2013, defendant
12
was legally and contractually bound to refrain from importing and selling in the
13
United States of TOFFEE CRISP, YORKIE, MALTESERS, CADBURY, KIT KAT
14
and ROLO products that are manufactured outside of the United States by entities
15
other than Hershey.
16
164.
Defendant breached its obligations under the parties agreement by
17
continuing or resuming its importation and sale in the United States of TOFFEE
18
CRISP, YORKIE, MALTESERS, CADBURY, KIT KAT and ROLO products that
19
are manufactured outside of the United States by entities other than Hershey.
20
21
22
165.
Plaintiffs have fully performed all of their obligations under the parties
agreement.
166.
Defendants acts described above have caused injury and damages to
23
plaintiffs, and have caused irreparable injury to plaintiffs goodwill and reputation
24
and, unless enjoined, will cause further irreparable injury, whereby plaintiffs have no
25
adequate remedy at law
26
PRAYER FOR RELIEF

WHEREFORE, Hershey prays that this Court enter judgment against defendant as
follows:
27
28
A.
Granting preliminary and permanent injunctive relief restraining

34
COMPLAINT
defendant, its officers, directors, agents, employees, servants, attorneys, successors,
assigns and others controlling, controlled by or affiliated with defendant and all
those in privity or active concert or participation with any of the foregoing
(including without limitation each importer, distributor or reseller of defendants
products), and all those who receive actual notice by personal service or otherwise:
i.
from using in any media, for any purpose (including, without
limitation, importing, distributing, advertising or selling), (a) the
REESES Trade Dress, the REESES Orange Mark, the
TOFFEE CRISP trade dress, or any other mark or trade dress
10
confusingly similar to or dilutive of the REESES Trade Dress
11
or the REESES Orange Mark; (b) the YORK mark, the
12
YORKIE mark, or any other mark confusingly similar to or
13
dilutive of the YORK mark; (c) the MALTESER mark, the
14
MALTESERS mark or any other mark confusingly similar to
15
the MALTESER mark; (d) the CADBURY mark, the
16
CADBURY Trade Dress, the CARAMELLO mark, the DAIRY
17
MILK mark or any other mark or trade dress confusingly similar
18
to or dilutive of the CADBURY mark, the CADBURY Trade
19
Dress, the CARAMELLO mark or the DAIRY MILK mark; (e)
20
the KIT KAT mark, the KIT KAT Trade Dress, or any other
21
mark or trade dress confusingly similar to or dilutive of the KIT
22
KAT mark or the KIT KAT Trade Dress; or (f) the ROLO mark,
23
the ROLO Trade Dress, or any other mark or trade dress
24
confusingly similar to or dilutive of the ROLO mark or the
25
ROLO Trade Dress; except in connection with genuine
26
REESES, YORK, MALTESER, CADBURY, KIT KAT or
27
ROLO products manufactured or authorized by Hershey for sale
28
in the United States; and

35
COMPLAINT
ii.
B.
from otherwise competing unfairly with plaintiffs;
Ordering that defendant be adjudged to have violated Sections 32,
43(a), and 43(c) of the Lanham Act, 15 U.S.C. 1114, 1125(a), and 1125(c), to
have caused trademark dilution and business injury in violation of Section 14257 of
the California Business and Professions Code, to have committed acts of common-
law trademark infringement and unfair competition, and to have breached its
contract with plaintiffs;
8
9
C.
Ordering an accounting of all gains, profits, savings and advantages
realized by defendant from its aforesaid acts of trademark and trade dress
10
infringement, trademark and trade dress dilution, false designation of origin, and
11
unfair competition, and awarding treble profits pursuant to Section 35(a) of the
12
Lanham Act, 15 U.S.C. 1117(a), on the ground that defendant engaged in its
13
wrongful acts with knowledge or bad faith or under other circumstances warranting
14
treble profits;
15
D.
Awarding such damages as plaintiff shall establish in consequence of
16
defendants aforesaid acts of trademark and trade dress infringement, trademark and
17
trade dress dilution, false designation of origin, and unfair competition, together
18
with appropriate interest thereon, including three times the amount found as actual
19
damages by the trier of fact to properly compensate plaintiff for its damages,
20
pursuant to Section 35(a) of the Lanham Act, 15 U.S.C. 1117(a), and Section
21
14247 and 14250 of the California Business and Professions Code.
22
E.
Ordering defendant to pay for and cause to be disseminated corrective
23
advertising to ameliorate the adverse consequences of defendants acts of trademark
24
infringement and dilution, false designation of origin and unfair competition, the
25
content, nature, form and extent of which is to be approved by plaintiff and this
26
Court;
27
28
F.
Ordering defendant to recall from all chains of distribution all goods,
product packaging, product displays, promotional materials, advertisements,

36
COMPLAINT
commercials, infomercials and other items, the dissemination by defendant of
which would violate the injunction herein requested;
G.
Ordering defendant to deliver up for destruction any and all goods,
product packaging, product displays, promotional materials, advertisements,
commercials and other items in the possession, custody or control of defendant
which, if sold, displayed, or used, would violate the injunction herein granted, and
to disable all websites to the extent they contain any content, the display or use of
which would violate the injunction herein requested;
H.
Ordering defendant to pay for and cause to be disseminated to each
10
distributor and reseller of defendants candy products a notice advising said persons
11
of defendants acts of trademark infringement and dilution, false designation of
12
origin, unfair competition and breach of contract, and advising of the issuance and
13
content of the injunction herein requested;
14
I.
Ordering that, pursuant to Section 34(a) of the Lanham Act, 15 U.S.C.
15
1116(a), defendant shall serve upon plaintiff within thirty (30) days after service
16
on defendant of an order granting an injunction, or such extended period as the
17
Court may direct, a report in writing under oath setting forth in detail the manner
18
and form in which defendant has complied with the injunction;
19
J.
Awarding plaintiff its costs and expenses of this action;
20
K.
Declaring that this is an exceptional case pursuant to Section 35 of the
21
Lanham Act, 15 U.S.C. 1117, because of the willful and deliberate nature of
22
defendants acts of trademark and trade dress infringement, trademark and trade
23
dress dilution, false designation of origin, and unfair competition, and awarding
24
plaintiff its reasonable attorneys fees;
25
L.
Awarding plaintiff punitive damages in an amount to be determined by
26
the trier of fact for defendants willful and knowing trademark infringement and
27
unfair competition, pursuant to the common law; and
28
M.
Granting such other and further relief as this Court may deem just and
37
COMPLAINT
proper.
DEMAND FOR JURY TRIAL
2
3
4
Plaintiffs hereby demand a trial by jury on all triable issues.

Dated: February 2, 2015
KAYE SCHOLER, LLP
5
6
7
8
9
10
By: /s/ Robert Barnes

Robert Barnes (State Bar No. 119515)
robert.barnes@kayescholer.com
1999 Avenue of the Stars, Suite 1600
Los Angeles, California 90067-6048
Telephone: (310) 788-1000
Facsimile: (310) 788-1200
11
12
13
Attorneys for Plaintiffs The Hershey

Company and Hershey Chocolate &
Confectionery Corporation
14
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22
23
24
25
26
27
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38
COMPLAINT

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Case 2:15-cv-00734-CAS-JEM Document 1 Filed 02/02/15 Page 1 of 38 Page ID #:1

Robert Barnes (State Bar No. 119515)

Case No. 2:15-cv-00734

THE HERSHEY COMPANY and

(2) Trademark Dilution

(3) Unfair Competition

LBB IMPORTS, LLC,

(4) Breach of Contract

Plaintiffs The Hershey Company (Hershey Company) and Hershey

Chocolate & Confectionery Corporation (Hershey Chocolate) (together,

LBB imports candy products that are manufactured outside of the

United States, including TOFFEE CRISP, YORKIE, MALTESERS, CADBURY,

Case 2:15-cv-00734-CAS-JEM Document 1 Filed 02/02/15 Page 2 of 38 Page ID #:2

trade dress that is protected by a number of federal trademark registrations: among

violate Hersheys rights in the United States in the YORK, MALTESER,

breach its agreements and to violate Hersheys acknowledged trademark rights.

injunctive relief, disgorgement of profits, compensatory damages, punitive damages

that infringe and dilute certain well-known trademarks owned or licensed by

Hershey is a leading manufacturer of chocolate and confectionery

ROLO branded candies and confections, among other products.

confectionery products in the United States. Notwithstanding those exclusive rights,

Case 2:15-cv-00734-CAS-JEM Document 1 Filed 02/02/15 Page 3 of 38 Page ID #:3

infringes and dilutes the famous REESES trade dress;

CADBURY trademark and trade dress;

trademark and trade dress; and

trademark and trade dress.

On information and belief, defendant offers its Infringing Products for

sells the Infringing Products through its website (www.lbbimports.com).

Unless such acts of trademark and trade dress infringement, trademark

adequate remedy at law.

Hershey Company is a corporation organized and existing under the

Drive, Hershey, Pennsylvania 17033. Hershey Company is a major manufacturer

Case 2:15-cv-00734-CAS-JEM Document 1 Filed 02/02/15 Page 4 of 38 Page ID #:4

Hershey Chocolate is a corporation organized and existing under the

Street, Wheat Ridge, Colorado 80033. Hershey Chocolate is a wholly owned

the MALTESER trademark.

On information and belief, defendant LBB is a limited liability

engaged in the business of importing, distributing and selling a wide range of

The Court has subject matter jurisdiction over Hersheys federal-law

The Court has personal jurisdiction over defendant because, upon

Case 2:15-cv-00734-CAS-JEM Document 1 Filed 02/02/15 Page 5 of 38 Page ID #:5

Venue is appropriate in this Court pursuant to 28 U.S.C. 1391 because

defendant is subject to personal jurisdiction in this judicial district and because a

Hersheys Federally Registered and Famous

Among Hersheys most successful product lines is the REESES family

features a distinctive orange background color and a distinctive combination of

orange, yellow and brown elements.

Hershey Chocolate owns an incontestable, valid, subsisting and existing

federal trademark registration (No. 2,256,226) consisting of an orange-colored

of various characterizing flavors (the REESES Orange Mark). A copy of the

certificate of registration for the REESES Orange Mark is attached as Exhibit A.

Hersheys REESES brand candy products have also been widely

and existing federal trademark registration (No. 925,609) owned by Hershey

for the REESES Trade Dress is attached as Exhibit B.

Case 2:15-cv-00734-CAS-JEM Document 1 Filed 02/02/15 Page 6 of 38 Page ID #:6

The REESES family of products includes the famous REESES Peanut

REESES WHIPPS, REESES Crispy Crunchy, REESES FAST BREAK,

REESES family of products. Representative images of product packaging

Hershey Chocolate also owns a number of valid, subsisting and existing

designs are attached as Exhibit D.

The distinctive REESES orange background color that comprises the

REESES Orange Mark is an arbitrary design element that is nonfunctional and