Hershey Co. v. Urban Stash - Trademark Complaint PDF

Case 5:15-cv-02176-PSG-KK Document 1 Filed 10/22/15 Page 1 of 25 Page ID #:1
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ROBERT BARNES (State Bar No. 119515)

rbarnes@kayescholer.com
KAYE SCHOLER LLP
1999 Avenue of the Stars, Suite 1600
Los Angeles, California 90067
Telephone: (310) 788-1000
Facsimile: (310) 788-1200
PAUL C. LLEWELLYN
paul.llewellyn@kayescholer.com
KAYE SCHOLER LLP
250 West 55th Street
New York, New York 10019
Telephone: (212) 836-8000
Facsimile: (212) 836-8689
Attorneys for Plaintiffs
THE HERSHEY COMPANY AND
HERSHEY CHOCOLATE & CONFECTIONERY CORPORATION
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UNITED STATES DISTRICT COURT
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FOR THE CENTRAL DISTRICT OF CALIFORNIA
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THE HERSHEY COMPANY;

HERSHEY CHOCOLATE &
CONFECTIONERY CORPORATION,
Plaintiffs,
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v.
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URBAN STASH SPOT CLOTHING,

INC.; JERMARIO FIELDS,
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Defendants.
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Case No. 5:15-cv-2176

Complaint for:
(1) Trademark Infringement Under
15 U.S.C. 1114
(2) Trademark Infringement and
Unfair Competition Under
15 U.S.C. 1125(a)
(3) Trademark Dilution Under
15 U.S.C. 1125(c)
(4) Trademark Dilution Under
Cal. Bus. & Prof. Code 14247
(5) State Law Unfair Competition
and Trademark Infringement
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COMPLAINT
Plaintiffs The Hershey Company (Hershey Company) and Hershey
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Chocolate & Confectionery Corporation (Hershey Chocolate) (together,
Hershey), for their complaint against Urban Stash Spot Clothing, Inc. and
Jermario Fields (together, Urban Stash or defendants) for trademark and trade
dress infringement, trademark and trade dress dilution, false designation of origin
and unfair competition, plead and allege as follows:
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This is an action to stop Urban Stashs willful acts of infringement and
dilution of the famous, federally registered JOLLY RANCHER trademarks. Urban
Stash has brazenly misappropriated these trademarks (including both the JOLLY
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RANCHER word mark and logo), for use on clothing items that defendants market
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as Sponsor Shirts and Sponsor Joggers (thereby expressly stating that the
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products are sponsored or authorized by the JOLLY RANCHER brand). These same
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products also bear third party logos, some of which Urban Stash uses to glamorize
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illicit drug use and drug abuse. The products are sold alongside other products that
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bear references to illicit drug use and drug abuse. Urban Stash also markets clothing
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products intended for children. When Hershey objected to Urban Stashs
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unauthorized use of the JOLLY RANCHER trademarks, defendants attempted to
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conceal their ongoing wrongful conduct, assuring Hershey that it only had one
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sample of the infringing products, that they had removed the JOLLY RANCHER
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trademarks from their products, and that incorrect images bearing the JOLLY
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RANCHER trademarks had been put on their website. In fact, in direct contradiction
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of their representations to Hershey, defendants continue to sell so-called Sponsor
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clothing bearing the JOLLY RANCHER trademarks, demonstrating an ongoing
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pattern of willful trademark infringement and dilution.

NATURE AND BASIS OF THE ACTION
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2.
This action is brought by Hershey against defendants under the Lanham
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Act, 15 U.S.C. 1051 et seq., and parallel California statutory and common law,
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seeking preliminary and permanent injunctive relief, disgorgement of profits,

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compensatory damages, punitive damages and other relief relating to defendants
importation, distribution and sale of products that infringe and dilute the famous
JOLLY RANCHER trademarks.
3.
Hershey Company is a leading manufacturer of chocolate and
confectionery products in the United States and worldwide. Hershey Companys
subsidiary Hershey Chocolate is the exclusive worldwide licensee of the famous,
federally-registered JOLLY RANCHER trademarks, which have been in continuous
use in the United States since at least as early as 1950. Hershey Chocolate has
sublicensed Hershey Company to use the JOLLY RANCHER trademarks in the
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United States and abroad. Under the terms of its license agreement, Hershey
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Chocolate has the right, not subject to the approval of its licensor, to sue for
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infringement of the JOLLY RANCHER trademarks.
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4.
Notwithstanding Hersheys exclusive rights in the JOLLY RANCHER
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trademarks, Urban Stash has advertised, offered to sell, and sold (and continues to
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advertise, offer to sell, and sell) within the United States clothing products that bear
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exact copies of the JOLLY RANCHER trademarks. Urban Stash promotes these
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products as Sponsor apparel, expressly misrepresenting that the products are
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sponsored or authorized by the JOLLY RANCHER brand, when they are not.
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5.
On information and belief, Urban Stash offers its infringing and diluting
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products for sale to customers throughout the United States through its office located
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in this judicial district, as well as online through various websites and media.
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Unless such acts of trademark and trade dress infringement, trademark
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and trade dress dilution, false designation of origin, and unfair competition are
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enjoined, Hershey will suffer irreparable injury for which there is no adequate
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remedy at law.
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PARTIES
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7.
Hershey Chocolate is a corporation organized and existing under the
laws of the State of Delaware, with its principal place of business in Wheat Ridge,
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Colorado. Hershey Chocolate is a wholly owned subsidiary of Hershey Company
and is the exclusive worldwide licensee of the JOLLY RANCHER trademarks,
which are described more fully below.
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Hershey Company is a corporation organized and existing under the
laws of the State of Delaware, with its principal place of business in Hershey,
Pennsylvania. Hershey Company is a major manufacturer and seller of chocolate,
confectionery and snack products. Hershey Company is Hershey Chocolates
sublicensee of the JOLLY RANCHER trademarks.
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On information and belief, defendant Urban Stash Spot Clothing, Inc. is
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a corporation organized and existing under the laws of the State of California, with a
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place of business in Moreno Valley, California. On further information and belief,
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Urban Stash Spot Clothing, Inc. is engaged in the business of creating,
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manufacturing, advertising, and selling various apparel and other items, including the
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infringing items at issue in this lawsuit as well as a variety of other items that
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encourage and glamorize drug abuse and the use of illicit drugs.
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10.
On information and belief, defendant Jermario Fields is an individual
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residing in the State of California, and is the founder and Chief Executive Officer of
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Urban Stash Spot Clothing, Inc. On further information and belief, as alleged more
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fully below, defendant Fields is personally engaged in the willfully infringing and
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otherwise unlawful acts alleged herein.
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11.
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, there is complete diversity of citizenship under 28 U.S.C.
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1332.
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12.
The Court has personal jurisdiction over defendants because, upon
information and belief, they are present and doing business in the State of California
and this judicial district, and have distributed and offered infringing products for sale
in the State of California and in this judicial district.
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Venue is appropriate in this Court pursuant to 28 U.S.C. 1391 because
Urban Stash 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.
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ALLEGATIONS COMMON TO ALL CLAIMS

The Federally Registered and Famous JOLLY RANCHER Trademarks
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The inherently distinctive and famous JOLLY RANCHER trademarks
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have been used since at least 1950 in connection with candy and confectionery
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products. For the last nearly 20 years, JOLLY RANCHER-branded products have
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been manufactured and distributed by Hershey Company.
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Hershey Chocolate is the exclusive (even as to the licensor) worldwide
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licensee of the federally registered JOLLY RANCHER trademarks and its associated
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goodwill, which are owned by Huhtamaki Finance B.V. (Huhtamaki). Hershey
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Chocolate has sublicensed Hershey Company the right to use the JOLLY
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RANCHER trademarks. Huhtamaki has authorized Hershey Chocolate to enforce its
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rights to the licensed marks.
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16.
Huhtamaki owns a number of incontestable, valid, subsisting and
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existing United States trademark registrations for the mark JOLLY RANCHER and
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the distinctive JOLLY RANCHER logo, as set forth below:
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Goods & Services
First Use in
Commerce
Mark
Reg. No.
JOLLY RANCHER
1684586
Candy (Class 30)
6/1/1950
1923904
Candy (Class 30)
1/00/1993
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JOLLY RANCHER
3613727
Pet toys (Class 28)
10/31/2008
JOLLY RANCHER
3738162
Earphones (Class 9)
8/1/2009
JOLLY RANCHER
4220144
Cosmetics;
Fragrances (Class
3)
7/19/2006
JOLLY RANCHER
4240666
Frozen confections
(Class 30)
1/1/1998
JOLLY RANCHER
3310864
Soft drinks, namely

carbonated soft
drinks (Class 32)
1/6/2005
JOLLY RANCHER
4355550
Flavored and
sweetened gelatins
(Class 30)
10/30/2012
JOLLY RANCHER
3289124
Chewing gum;
bubble gum (Class
30)
4/25/2007
JOLLY RANCHER
3480388
Lip balm; lip gloss

(Class 3)
7/19/2006
JOLLY RANCHER
3480440
Nail polish (Class

3)
6/30/2007
JOLLY RANCHER
CRUNCH 'N CHEW
4010389
Candy (Class 30)
3/31/2011
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(The JOLLY RANCHER word mark, and the various iterations of the JOLLY
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RANCHER logo depicted herein, are referred to collectively as the JOLLY
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RANCHER trademarks.)
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Hersheys licensor, Huhtamaki, also enjoys valid and subsisting
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common law rights to the JOLLY RANCHER trademarks as a result of its licensees
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extensive, continuous, and exclusive use of the marks throughout the United States
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to identify JOLLY RANCHER products.
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18.
A picture of a Hersheys JOLLY RANCHER brand candy product
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featuring the JOLLY RANCHER mark and logo is set forth below:
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Hershey and its licensees also use and have used the JOLLY
RANCHER trademarks in connection with shirts and other apparel, such as the items
shown here:
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In addition, Hershey and its licenses also use and have used the JOLLY
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RANCHER trademarks in connection with various other non-candy products,
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including the goods set forth in the table of registrations above, examples of which
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are depicted here:
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pillows
nail polish
candles
headphones
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21.
Hersheys JOLLY RANCHER brand products have been widely
advertised and sold throughout the United States for many years, and have achieved
substantial sales. Indeed, Hersheys JOLLY RANCHER candies are one of the most
popular candy products in the country, with hundreds of millions of dollars of sales
annually in the United States alone in packaging bearing the JOLLY RANCHER
mark and logo.
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By virtue of Hersheys substantial sales, marketing, and use of the
JOLLY RANCHER trademarks throughout the United States in connection with the
JOLLY RANCHER candy products, apparel, and other products, and by virtue of the
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inherently distinctive nature of the marks, the JOLLY RANCHER trademarks have
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become famous and well known, have become distinctive of Hersheys products, and
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have come to identify and indicate the source of Hersheys products to consumers
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and the trade. The JOLLY RANCHER trademarks have developed substantial
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goodwill and an excellent reputation among actual and potential purchasers and users
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of the products.
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Urban Stashs Willful Infringement and Dilution of the JOLLY RANCHER

Trademarks
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Well after Hersheys predecessors in interest first began using the
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JOLLY RANCHER trademarks for candy and other products, and after those marks
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had become famous, Urban Stash commenced advertising and selling, in the United
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States, clothing items that bear imitations of the JOLLY RANCHER word mark and
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JOLLY RANCHER logo. These products are not authorized by Hershey.
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As can be seen in the images below of Urban Stashs products, the
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products sold by defendants use precise copies of the JOLLY RANCHER
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trademarks. As is also apparent from the photos below of the various products
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offered on its website at ussclothing.com, Urban Stash is using not only the JOLLY
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RANCHER trademarks without authorization, but also appears to be infringing a
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number of other well-known marks, including BIC, SPRITE, FANTA, XANAX and
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others.
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Immediately below is an image of Urban Stashs website advertising the
Sponsor Shirt depicting the JOLLY RANCHER trademarks:
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Immediately below is a detailed image of Urban Stashs Sponsor
Shirt, showing Urban Stashs copying of the JOLLY RANCHER trademarks:
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Immediately below is an image of Urban Stashs website advertising
Urban Stashs Sponsor Joggers depicting the JOLLY RANCHER trademarks:
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Immediately below is a detailed image of Urban Stashs Sponsor
Joggers, showing Urban Stashs copying of the JOLLY RANCHER trademarks:
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not manufactured or authorized by Hershey. Defendants have never been authorized

by Hershey or its affiliates to use the JOLLY RANCHER word mark or logo, or any
variants thereof, in connection with any products.
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Given that defendants have copied the precise JOLLY RANCHER
trademarks for their clothing items, these products inevitably will cause confusion
among consumers as to the origin, source, or sponsorship of defendants products.
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The JOLLY RANCHER-branded products that Urban Stash sells are
Not only do Urban Stashs products bear exact copies of the JOLLY
RANCHER trademarks, but Urban Stash expressly advertised the products as

Sponsor Shirts and Sponsor Joggers, thereby expressly stating that the products
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are sponsored products and that the JOLLY RANCHER trademarks (and other
brands on the products) are used with the authorization and under the sponsorship of
the brand owners.
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Defendants use of the JOLLY RANCHER trademarks also is likely to
dilute the distinctive quality of the JOLLY RANCHER trademarks, by lessening
their capacity to identify and distinguish Hersheys products.
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In addition, defendants use of the JOLLY RANCHER trademarks is
likely to dilute the distinctive quality of the JOLLY RANCHER trademarks, by
tarnishing those marks. Such tarnishment will occur because Urban Stash is selling
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not only infringing JOLLY RANCHER-branded items, but also various items
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promoting and glamorizing illicit drug use and drug abuse, as shown in the Drugs
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and Yen Hoodie item and the The American Way t-shirt depicting a flag
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composed of marijuana, both on Urban Stashs website:
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On the same website that they have used to sell infringing JOLLY
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RANCHER products and the above products, defendants also sell products intended
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for children, such as the below-depicted (and presumably unauthorized) Urban
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Muppets shirt:
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On information and belief, defendant Jermario Fields is an active
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participant in the infringing and unlawful acts of defendant Urban Stash Spot
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Clothing, Inc. By way of example, after an agent of plaintiffs placed an order on
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Urban Stashs website, the merchandise was received in a package bearing the return
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address Jermario Fields, 24040 Postal Ave # 439, Moreno Valley CA 92553-3014.
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Furthermore, when counsel for plaintiffs objected to Urban Stashs sale of its
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infringing products, as set forth below, Mr. Fields responded in furtherance of Urban
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Stashs unlawful conduct, falsely stating, inter alia, that the JOLLY RANCHER
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trademarks were not being used on any items. In addition, Mr. Fields asserts on his
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Facebook page that Urban Stashs products are my clothing line.
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Plaintiffs Objections and Urban Stashs False Assurances to Conceal Their

Continued Unlawful Activities
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36.
On August 7, 2015, shortly after first learning of Urban Stashs
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unlawful conduct, in-house counsel for Hershey sent a message to Urban Stash via
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the contact form on Urban Stashs website, objecting to Urban Stashs unauthorized
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use of the JOLLY RANCHER trademarks and demanding that Urban Stash promptly
agree to cease all use of those marks and any other marks connected to Hershey.
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When Urban Stash failed to acknowledge or respond to Hersheys
August 7 message, on August 11, 2015, outside counsel for Hershey sent a letter to
Urban Stash (by certified mail and by email), addressed to defendant Fields. The
August 11 letter reiterated Hersheys objections to the use of the JOLLY RANCHER
trademarks, and again requested that Urban Stash cease its unlawful conduct.
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On August 12, 2015, defendant Fields sent an email responding to the
August 11, 2015 letter from Hersheys outside counsel, which stated in its entirety,
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We only made one sample pair your logo is now took off. A review of the website
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at that time showed that the JOLLY RANCHER trademarks had been removed from
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that site.
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Two weeks later, however, Hershey discovered that Urban Stashs
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JOLLY RANCHER-branded clothing was still being sold by Urban Stash on eBay,
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and that Urban Stash was advertising and selling a Mystery Stash Bag on its
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website and Facebook page that included the infringing Sponsor Joggers. Urban
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Stashs website stated that a total of 50 Mystery Stash Bags were available, despite
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Mr. Fieldss prior assertion that Urban Stash had made only one pair of infringing
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joggers.
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On September 3, 2015, outside counsel for Hershey sent Urban Stash an
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email objecting to its continued sale of infringing JOLLY RANCHER-branded
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products, and demanding that Urban Stash immediately cease all such conduct,
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confirm that it had done so, deliver over to counsel for Hershey all remaining
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inventory of infringing products, and provide an accounting of sales and profits.
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On September 3, 2015, at 3:31 pm, outside counsel for Hershey
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received an email response from Mr. Fields that stated, in its entirety, The wrong
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pic was put up on that flyer & don't none of the sponsor joggers are shirts have jolly
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ranchers on it the shirt was demo & pants was a sample.

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42.
Also on September 3, 2015, at 3:36 pm, outside counsel for Hershey
received a second email response from Mr. Fields that stated, in its entirety, & the
mystery box just got put up there & sponsor joggers don't come in them & when our
website gets back I will have him take those pic down.
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A review of the ussclothing.com website and eBay the next day showed
that the JOLLY RANCHER trademarks had been removed from the website and
from Urban Stashs eBay listings.
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During the week of September 21, 2015, however, Hershey discovered
that Urban Stash continued to advertise and sell infringing products bearing the
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JOLLY RANCHER trademarks, via Urban Stashs Instagram account, as shown in
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the Instagram posts immediately below, including a post apparently by Urban Stash
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which shows the infringing joggers and a JOLLY RANCHER candy package:
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45.
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issue on Instagram, Hershey arranged for outside counsel to plan an order from
Urban Stash. On October 8, 2015, counsel for plaintiffs received that order,
including a pair of Sponsor Joggers bearing the JOLLY RANCHER trademarks
and a Sponsor Shirt bearing the JOLLY RANCHER trademarks. The order was
shipped by Urban Stash in a package bearing the return address Jermario Fields,
24040 Postal Ave # 439, Moreno Valley CA 92553-3014.
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To plaintiffs knowledge, Urban Stash continues to this day to advertise,
distribute, and sell infringing and unlawful products bearing the JOLLY RANCHER
trademarks.
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After seeing that Urban Stash continued to advertise the products at
Urban Stashs acts are causing and will continue to cause damage and
irreparable harm to Hershey and the valuable reputation and goodwill of its licensed
marks with purchasers and consumers.
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FIRST CLAIM FOR RELIEF
Infringement of Federally Registered Marks
Under Section 32 of the Lanham Act, 15 U.S.C. 1114
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48.
Plaintiffs repeat and reallege paragraphs 1 through 47 of this Complaint,
as if fully set forth herein.
49.
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.
50.
The marks used by defendants, as described above, are confusingly
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similar to, and are colorable imitations of, the federally registered JOLLY
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RANCHER trademarks (Reg. Nos. 1684586, 1923904, 3613727, 3738162, 4220144,
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4240666, 3310864, 4355550, 3289124, 3480388, 3480440 and 4010389), and
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infringe those respective federally registered trademarks.
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51.
Defendants unauthorized use of the aforementioned marks is likely to
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cause confusion and mistake and to deceive the public as to the approval,
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sponsorship, license, source, or origin of defendants products.
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52.
On information and belief, defendants acts of trademark infringement
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have been done willfully and deliberately, and defendants have profited and been
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unjustly enriched by sales that defendants would not otherwise have made but for
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their unlawful conduct.
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53.
Defendants willful and deliberate acts described above have caused
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injury and damages to plaintiffs, and have caused irreparable injury to plaintiffs
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goodwill and reputation, and, unless enjoined, will cause further irreparable injury,
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whereby plaintiffs have no adequate remedy at law.
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SECOND CLAIM FOR RELIEF
Trademark and Trade Dress Infringement, False Endorsement,
False Designation of Origin and Unfair Competition
Under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)
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54.
Plaintiffs repeat and reallege paragraphs 1 through 53 of this Complaint
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This claim is for trademark and trade dress infringement, false
endorsement, false designation of origin, and unfair competition in violation of
Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
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56.
By their unauthorized use of the marks and trade dress described above,
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and by their advertisement and promotion of their unauthorized JOLLY RANCHER-
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branded products as Sponsor Shirts and Sponsor Joggers, defendants have (i)
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infringed the JOLLY RANCHER mark and the JOLLY RANCHER logo; (ii)
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engaged in false endorsement; (iii) falsely designated the origin of their products,
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and (iv) competed unfairly with plaintiffs; all in violation of Section 43(a) of the
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Lanham Act, 15 U.S.C. 1125(a).
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57.
On information and belief, defendants acts of trademark infringement,
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trade dress infringement, false endorsement, false designation of origin and unfair
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competition have been done willfully and deliberately, and defendants have profited
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and been unjustly enriched by sales that would not otherwise have been made but for
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58.
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injury and damages to plaintiffs, have caused irreparable injury to plaintiffs
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THIRD CLAIM FOR RELIEF
Trademark and Trade Dress Dilution
Under Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c)
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60.
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).
61.
The JOLLY RANCHER mark and JOLLY RANCHER logo are each
distinctive and famous within the meaning of Section 43(c) of the Lanham Act, 15
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U.S.C. 1125(c), and were distinctive and famous prior to the date of defendants
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conduct challenged herein.
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62.
Defendants conduct, as described above, is likely to dilute and is
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diluting the distinctive quality of the famous JOLLY RANCHER mark and JOLLY
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RANCHER logo, in that defendants conduct is likely to create and has created an
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association between defendants marks and the famous JOLLY RANCHER mark
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and JOLLY RANCHER logo, which impairs the distinctiveness of those famous
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marks and lessens the capacity of those famous marks to identify and distinguish
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products marketed and sold by plaintiffs under those marks.
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63.
Defendants conduct, as described above, is likely to dilute and is
20
diluting the distinctive quality of the famous JOLLY RANCHER mark and JOLLY
21
RANCHER logo, for the additional reason that defendants challenged marks are
22
likely to cause tarnishment of the famous JOLLY RANCHER mark and JOLLY
23
RANCHER logo, as a result of defendants use of those marks in association with
24
products and advertising that encourages and glamorizes drug abuse and the use of
25
illicit drugs.
26
64.
On information and belief, defendants acts of trademark dilution have
27
been done willfully and deliberately, and defendants have profited and have been
28
unjustly enriched by sales that defendants would not otherwise have made but for
19
63072616
COMPLAINT
65.
injury and damages to plaintiffs, and have caused irreparable injury to plaintiffs
FOURTH CLAIM FOR RELIEF
Trademark and Trade Dress Dilution
Under Cal. Bus. & Prof. Code 14247
9
10
66.
11
12
67.
This claim is for dilution of trademarks and injury to business or
reputation under Section 14247 of the California Business and Professions Code.
13
68.
The JOLLY RANCHER mark and JOLLY RANCHER logo are famous
14
in the State of California within the meaning of Section 14247 of the California
15
Business and Professions Code, and were famous prior to the date of defendants
16
adoption and use of similar designs on packages and in advertising for their products.
17
69.
Defendants conduct, as described above, is likely to diminish the public
18
association of the JOLLY RANCHER mark and JOLLY RANCHER logo with
19
Hershey.
20
70.
Defendants conduct, as described above, is likely to dilute and will
21
dilute the distinctive quality of the famous JOLLY RANCHER mark and JOLLY
22
RANCHER logo by lessening the capacity of those marks to identify and distinguish
23
products marketed and sold by plaintiffs under those marks and by causing
24
tarnishment of those marks.
25
71.
On information and belief, defendants acts of trademark dilution have
26
been done willfully and deliberately and defendants have profited and been unjustly
27
enriched by sales that defendants would not otherwise have made but for their
28
unlawful conduct.
20
63072616
COMPLAINT
72.
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, for which plaintiffs have
no adequate remedy at law.
FIFTH CLAIM FOR RELIEF
Common Law Trademark Infringement and Unfair Competition
7
8
73.
9
10
74.
This claim is for trademark infringement and unfair competition in
violation of the common law of the State of California.
11
75.
Defendants use of their infringing marks and trade dress, as described
12
above, constitutes common law trademark infringement, passing off, and unfair
13
competition in violation of common law.
14
76.
On information and belief, defendants acts of common law trademark
15
infringement, passing off, and unfair competition have been done willfully and
16
deliberately, and defendants have profited and have been unjustly enriched by sales
17
that defendants would not otherwise have made but for their unlawful conduct.
18
77.
19
injury and damages to plaintiffs and have caused irreparable injury to plaintiffs
20
21
22
PRAYER FOR RELIEF
23
24
WHEREFORE, plaintiffs pray that this Court enter judgment against

defendants as follows:
25
A.
Granting preliminary and permanent injunctive relief restraining
26
defendants, their officers, directors, agents, employees, servants, attorneys,
27
successors, assigns and others controlling, controlled by or affiliated with defendants
28
and all those in privity or active concert or participation with any of the foregoing
21
63072616
COMPLAINT
(including without limitation each manufacturer, distributor or reseller of defendants
products), and all those who receive actual notice by personal service or otherwise:
i.
from using on or in connection with any products or in any other
medium, for any purpose, (a) the JOLLY RANCHER mark, or
any other mark confusingly similar thereto or dilutive thereof;
and (b) any version of the JOLLY RANCHER logo, or any other
mark or trade dress confusingly similar thereto or dilutive thereof;
ii.
from stating, implying, or suggesting in any way that plaintiffs or

the JOLLY RANCHER brand or any other of plaintiffs brands
9
10
have sponsored, endorsed, or authorized any product made,
11
advertised, or sold by defendants; and
12
iii.
13
B.
from otherwise competing unfairly with plaintiffs.
Ordering that defendants be adjudged to have violated Sections 32,
14
43(a), and 43(c) of the Lanham Act, 15 U.S.C. 1114, 1125(a), and 1125(c), to
15
have caused trademark and trade dress dilution in violation of California Business
16
and Professions Code 14247, and to have committed acts of common-law
17
trademark and trade dress infringement and unfair competition;
18
C.
Ordering defendants to recall from all chains of distribution and to
19
disable all internet access to all goods, product packaging, product displays,
20
promotional materials, advertisements, commercials, infomercials and other items,
21
the dissemination by defendants of which would violate the injunction herein
22
requested;
23
D.
Ordering defendants to deliver up for destruction any and all goods,
24
product packaging, product displays, promotional materials, advertisements,
25
commercials and other items in the possession, custody, or control of defendants
26
which, if sold, displayed, or used, would violate the injunction herein granted;
27
28
E.
Ordering defendants to disable all web sites to the extent they contain
any content, the display or use of which would violate the injunction herein
22
63072616
COMPLAINT
requested;
F.
Ordering an accounting of all gains, profits, savings and advantages
realized by defendants from their aforesaid acts of trademark and trade dress
infringement, trademark and trade dress dilution, false endorsement, false
designation of origin, and unfair competition, and awarding treble profits pursuant to
15 U.S.C. 1117(a) on the ground that defendants engaged in its wrongful acts with
knowledge or bad faith or under other circumstances warranting treble profits;
8
9
G.
Awarding such damages as plaintiffs shall establish in consequence of
defendants acts of trademark and trade dress infringement, trademark and trade
10
dress dilution, false endorsement, false designation of origin, and unfair competition,
11
together with appropriate interest thereon, including three times the amount found as
12
actual damages by the trier of fact to properly compensate plaintiffs for their
13
damages, pursuant to 15 U.S.C. 1117(a), and California Business and Professions
14
Code 14247 and 14250.
15
H.
Ordering defendants to pay for and cause to be disseminated corrective
16
advertising to ameliorate the adverse consequences of defendants acts of trademark
17
and trade dress infringement, trademark and trade dress dilution, false endorsement,
18
false designation of origin and unfair competition, the content, nature, form and
19
extent of which is to be approved by plaintiffs and this Court;
20
I.
Ordering defendants to pay for and cause to be disseminated to each
21
distributor and reseller of defendants products a notice advising said persons of
22
defendants acts of trademark and trade dress infringement and dilution, false
23
endorsement, false designation of origin, and unfair competition and advising of the
24
issuance and content of the injunction herein requested;
25
J.
Ordering that, pursuant to Section 34(a) of the Lanham Act, 15 U.S.C.
26
1116(a), defendants shall serve upon plaintiffs within thirty (30) days after service
27
on defendants of an order granting an injunction, or such extended period as the
28
Court may direct, a report in writing under oath setting forth in detail the manner and
23
63072616
COMPLAINT
form in which defendants have complied with the injunction;
K.
Awarding plaintiffs their costs and expenses of this action;
L.
Declaring that this is an exceptional case pursuant to 15 U.S.C. 1117,
because of the willful and deliberate nature of defendants acts of trademark and
trade dress infringement, trademark and trade dress dilution, false endorsement, false
designation of origin, and unfair competition, and awarding plaintiffs their
reasonable attorneys fees;
8
9
10
M.
the trier of fact for defendants willful and knowing trademark infringement and
unfair competition, pursuant to the common law; and
11
12
Awarding plaintiffs punitive damages in an amount to be determined by
N.
Granting such other and further relief as this Court may deem just and
proper.
13
JURY DEMAND
14
Pursuant to the Seventh Amendment, Plaintiffs hereby demand a trial by jury.
15
16
Dated: October 22, 2015
17
Respectfully submitted,
KAYE SCHOLER LLP
18
By: _/s/ Robert Barnes___________
Robert Barnes
19
20
Attorneys for Plaintiffs

THE HERSHEY COMPANY AND
HERSHEY CHOCOLATE &
CONFECTIONERY CORPORATION
21
22
23
24
25
26
27
28
24
63072616
COMPLAINT

Hershey Co. v. Urban Stash - Trademark Complaint PDF

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Case 5:15-cv-02176-PSG-KK Document 1 Filed 10/22/15 Page 1 of 25 Page ID #:1

ROBERT BARNES (State Bar No. 119515)

UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

THE HERSHEY COMPANY;

URBAN STASH SPOT CLOTHING,

Case No. 5:15-cv-2176

Case 5:15-cv-02176-PSG-KK Document 1 Filed 10/22/15 Page 2 of 25 Page ID #:2

Plaintiffs The Hershey Company (Hershey Company) and Hershey

Chocolate & Confectionery Corporation (Hershey Chocolate) (together,

and unfair competition, plead and allege as follows:

This is an action to stop Urban Stashs willful acts of infringement and

dilution of the famous, federally registered JOLLY RANCHER trademarks. Urban

products intended for children. When Hershey objected to Urban Stashs

unauthorized use of the JOLLY RANCHER trademarks, defendants attempted to

of their representations to Hershey, defendants continue to sell so-called Sponsor

clothing bearing the JOLLY RANCHER trademarks, demonstrating an ongoing

pattern of willful trademark infringement and dilution.

This action is brought by Hershey against defendants under the Lanham

seeking preliminary and permanent injunctive relief, disgorgement of profits,

Case 5:15-cv-02176-PSG-KK Document 1 Filed 10/22/15 Page 3 of 25 Page ID #:3

compensatory damages, punitive damages and other relief relating to defendants

JOLLY RANCHER trademarks.

Hershey Company is a leading manufacturer of chocolate and

confectionery products in the United States and worldwide. Hershey Companys

subsidiary Hershey Chocolate is the exclusive worldwide licensee of the famous,

federally-registered JOLLY RANCHER trademarks, which have been in continuous

sublicensed Hershey Company to use the JOLLY RANCHER trademarks in the

infringement of the JOLLY RANCHER trademarks.

Notwithstanding Hersheys exclusive rights in the JOLLY RANCHER

products as Sponsor apparel, expressly misrepresenting that the products are

Unless such acts of trademark and trade dress infringement, trademark

Hershey Chocolate is a corporation organized and existing under the

Case 5:15-cv-02176-PSG-KK Document 1 Filed 10/22/15 Page 4 of 25 Page ID #:4

Colorado. Hershey Chocolate is a wholly owned subsidiary of Hershey Company

and is the exclusive worldwide licensee of the JOLLY RANCHER trademarks,

which are described more fully below.

Hershey Company is a corporation organized and existing under the

Pennsylvania. Hershey Company is a major manufacturer and seller of chocolate,

confectionery and snack products. Hershey Company is Hershey Chocolates

sublicensee of the JOLLY RANCHER trademarks.

On information and belief, defendant Urban Stash Spot Clothing, Inc. is

place of business in Moreno Valley, California. On further information and belief,

Urban Stash Spot Clothing, Inc. is engaged in the business of creating,

On information and belief, defendant Jermario Fields is an individual

otherwise unlawful acts alleged herein.

of interest and costs, there is complete diversity of citizenship under 28 U.S.C.

Case 5:15-cv-02176-PSG-KK Document 1 Filed 10/22/15 Page 5 of 25 Page ID #:5

The Court has personal jurisdiction over defendants because, upon

in the State of California and in this judicial district.

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

ALLEGATIONS COMMON TO ALL CLAIMS

The inherently distinctive and famous JOLLY RANCHER trademarks

been manufactured and distributed by Hershey Company.

Hershey Chocolate is the exclusive (even as to the licensor) worldwide

goodwill, which are owned by Huhtamaki Finance B.V. (Huhtamaki). Hershey

RANCHER trademarks. Huhtamaki has authorized Hershey Chocolate to enforce its

rights to the licensed marks.

Huhtamaki owns a number of incontestable, valid, subsisting and

the distinctive JOLLY RANCHER logo, as set forth below:

Goods & Services

Candy (Class 30)