United States District Court, D. Maryland, Northern Division
WILLIAM D. QUARLES, Jr., District Judge.
The Hershey Company and Hershey Chocolate & Confectionery Corporation (collectively "Hershey" or "the Plaintiffs"), sued the Friends of Steve Hershey ("Friends") and Maryland Senator Steve Hershey (collectively "the Defendants") for trademark infringement and other claims. Pending is the Defendants' motion to dismiss, or in the alternative, for summary judgment. No hearing is necessary. See Local Rule 105.6 (D. Md. 2011). For the following reasons, the Defendants' motion, construed as a motion to dismiss, will be denied.
A. The Hershey Trade Dress
Hershey is a manufacturer of candy and chocolate products sold under the HERSHEY'S trademark. See ECF No. 1 (hereinafter, "Compl.") at 2-3. The Hershey Trade Dress is a design mark "comprising a dark brown or maroon background color - commonly referred to as Hershey maroon' - and a silver or other light-colored block text for the word mark HERSHEY'S (as well as other designations that play on the word mark HERSHEY'S), often with smaller text below the word mark HERSHEY'S." Id. at 3. Hershey Chocolate & Confectionery Corporation ("HC&CC") owns a number of federal trademark registrations for the Hershey Trade Dress. See id. at 4.
Hershey's products are advertised and sold worldwide. Compl. at 9. The Hershey Trade Dress has been used for over a century on Hershey's products. Id. at 3. Hershey "expend[s] substantial efforts and sums of money to advertise and promote its products and business under this trade dress." Id. at 10.
B. The Defendants' Campaign
In 2002, Steve Hershey ran for county commissioner of Queen Anne's County. Compl. at 13. During that campaign, he used designs with a dark brown background with HERSHEY printed in a bold white font. See id. ; ECF No. 18 at 7 (Defendants' motion to dismiss). Hershey wrote to Mr. Hershey asking him to stop his use of the Hershey Trade Dress in his campaign signage. Compl. at 13; ECF No. 18 at 8. Mr. Hershey stopped using the campaign materials after the election. Id.
In 2010, Steve Hershey ran for state delegate using a campaign logo and signs featuring a similar brown background, bold white font, and a white border. Compl. at 13; ECF No. 18 at 8. Hershey contacted Mr. Hershey about the use of the design, and accommodated him by allowing Mr. Hershey to use his existing materials for the primary election. Compl. at 13. However, Hershey "demanded, and Senator Hershey agreed, that he would cease all use thereafter and would change the design of [the] Defendants' campaign materials, particularly the font and color, ' so as to be materially different from' the Hershey Trade Dress." Id. On August 16, 2010, Hershey sent a letter to Mr. Hershey "memorializing the terms of the Agreement." Id. "In reliance on the Agreement, [Hershey] did not take further action against [the] Defendants...." Id.
In 2013, Steve Hershey was appointed to a vacant state senate seat. ECF No. 18 at 8. In April 2014, Senator Hershey began campaigning for the state senate using a campaign logo with a Maryland flag in dual tone brown as the background, the word HERSHEY in white Impact or Helvetica Nueue font, and STATE SENATE in smaller font below. ECF No. 18 at 9. Hershey's counsel wrote to the campaign "objecting to their use of a logo and design that mimicked the Hershey Trade Dress...." Compl. at 15. The parties attempted to resolve the dispute about Senator Hershey's design. See id. at 15-17. During this time, publications and members of the public noted the similarity between the Hershey Trade Dress and Senator Hershey's campaign materials. See id. at 17.
C. Procedural History
On June 6, 2014, the Plaintiffs sued the Defendants for federal trademark infringement, breach of contract, and related claims. ECF No. 1. On June 16, 2014, the Plaintiffs moved for a preliminary injunction. ECF No. 7. On July 3, 2014, the Defendants filed a motion to dismiss for failure to state a claim, or in the alternative, summary judgment and opposition to the Plaintiffs' motion for a preliminary injunction. ECF No. 18.
On July 16, 2014, the Court held a preliminary injunction hearing. ECF No. 28. On July 17, 2014, the Court granted Hershey's motion for a preliminary injunction. ECF No. 29, 30. The Court determined that Hershey's trademark infringement claim under Section 32 of the Lanham Act was likely to succeed on the merits because the Defendants' campaign symbol was substantially similar to Hershey's trade dress and was likely to cause confusion with respect to sponsorship or affiliation. Id. at 6-10. On July 21, 2014, Hershey opposed the motion to dismiss. ECF No. 31. On August 7, 2014, the Defendants replied.
A. Legal Standard
Under Fed.R.Civ.P. 12(b)(6), an action may be dismissed for failure to state a claim upon which relief can be granted. Rule 12(b)(6) tests the legal sufficiency of a complaint, but does not "resolve contests surrounding the facts, the merits of a claim, or the applicability of ...