Bittersweet: Hershey bars all comers

Milton S. Hershey
Not known for hotels

As if on cue (they read this blog, right?), long-time trademark bully Hershey continues its aggressive brand — and whatever — protection efforts:

Hershey Entertainment & Resorts Company has just won another of its semi-frequent federal trademark infringement battles.

This time, the victory has purged the name “Milton” from a Hershey-area hotel.

And it came rather swiftly.

The fight began in June when Hershey Entertainment filed suit in U.S. Middle District Court against Milestone Hotel Partners LLC, owners of what was then called The Milton Hotel at Route 422 and Sipe Avenue.

Hershey Entertainment claimed Milestone had violated its trademarks by using the name of chocolate magnate Milton S. Hershey, who put Hershey on the map as a world-renowned tourist destination.

Yeah.  “The Milton Hotel.”  Here’s the complaint.  More, from an earlier story:

In its latest suit, Hershey Entertainment cites the array of Milton S. Hershey-related trademarks it has held in some cases for more than a century. Those include “Hershey,” “The Hotel Hershey,” “Hersheypark,” “The Sweetest Place on Earth” and “Milton Hershey.”

“The Hershey marks and Milton S. Hershey’s name have tremendous drawing power, goodwill and value that (Hershey Entertainment) must protect,” the suit states.

The trademark claims are, in and of themselves, probably amenable to defense.  One of the claimed mark is none other than MILTON HERSHEY his late bad self!  Says the Complaint:

20. The MILTON HERSHEY mark was first used by [Hershey], as the name of its largest suite at THE HOTEL HERSHEY, at least as early as September 1998, and has been in continuous use by [Hershey] since that date.

Wow.  What rum balls.

Even if Milton were a mark, which he’s not, could Hershey prove either LIKELIHOOD OF CONFUSION or likelihood of dilution here?  Well, MILTON HERSHEY — at best a common-law mark known across the nation as the name of a bed and a table — is not a candidate for dilution, lacking fame.  And, well, MILTON HOTEL and MILTON HERSHEY both have “MILTON H___” plus room service.  I don’t know.  Maybe, maybe.

How about that HOTEL HERSHEY mark? That doesn’t look or sound anything like “Hotel Milton.”  The only way that works is if you follow the “Dead Hand of the Babe” logic of the TTAB.  That’s the process by which the fame of one trademark, for dilution purposes, will be attributed to and permitted to enrich, inhabit and empower all related trademarks owned by the same (institutional) claimant.  By virtue of the fame of HERSHEY, the association between that famous mark and old Uncle Milt would — whatever.

That’s pretty much what the complaint is saying, after all.  We’re Hershey, and anything that even smells like chocolate around here is ours.

As in most cases, it isn’t likely to be worth the defendant’s time or money to find out.  Not too many defendants have the mint necessary to do so.  At the end of the day, however, as a trademark claim this probably isn’t even Hershey’s, much less Godiva.  (More like Cadbury’s probably.)

At best, what Hershey is really claiming here, in fact, is that the very personality of Milton Hershey, i.e. his right of publicity, is its property. Can such a claim be made after the death of the person whose “publicity right” is at issue, considering that the right’s genesis is in privacy, not brand monetization?  It’s complicated.  In Pennsylvania, actually, you pretty much can make such a claim

§ 8316. Unauthorized use of name or likeness

(a) Cause of action established.–Any natural person whose name or likeness has commercial value and is used for any commercial or advertising purpose without the written consent of such natural person or the written consent of any of the parties authorized in subsection (b) may bring an action to enjoin such unauthorized use and to recover damages for any loss or injury sustained by such use.

(b) Parties authorized to bring action.–Such action may be brought by:

(1) The natural person.

(2) A parent or guardian of a natural person, if the natural person is a minor.

(3) If such natural person is deceased, any person, firm or corporation authorized in writing to license the commercial or advertising use of the natural person’s name or likeness by the natural person during the natural person’s lifetime or by will or other testamentary device; an executor named in a will or designated by a court of competent jurisdiction; or where there is no such authorization, then by the deceased person’s surviving spouse at the time of death until the surviving spouse’s death or, in a case where there is no surviving spouse, then any other heir or group of heirs having at least a 50% interest in the deceased person’s estate as provided for under law.

(4) Any other person, firm or corporation authorized in writing by such natural person to license the commercial or advertising purposes of the person’s name or likeness.

— except not forever:

(c) Repose.–No action shall be commenced under this section more than 30 years after the death of such natural person.

Milton Hershey died in 1945.  So there’s no right of publicity claim in this right of publicity lawsuit posing as trademark infringement.

Oh, and by the way, that HOTEL HERSHEY “trademark”?  The one filed for registration in, um, May?  This May — May of 2017?  Not so fast:

Hotel Hershey Office Action August 2017

Registration was preliminary refused, in fact,

because the applied-for mark is primarily geographically descriptive of the origin of applicant’s services . . .

In this case, Hershey, Pennsylvania is a generally known geographic location.  The addition of the descriptive or generic term HOTEL does not diminish the geographic significance of HERSHEY.  Since the applicant (and the listed services) in fact originate in Hershey, Pennsylvania, a public association of those services with Hershey, PA is presumed.  As such, the mark THE HOTEL HERSHEY is considered geographically descriptive in its entirety.

But hey, not a problem, right?  After all, a quick scan of the application shows us that this mark — HOTEL HERSHEY — has been in use since 1933!  That’s quite a surprise.  Thus:

The application record indicates that applicant has used its mark for a long time; therefore, applicant has the option to amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) in part with respect to the term “HERSHEY.”  See 15 U.S.C. §1052(f); TMEP §1212.05.

Piece o’ chocolate!  Though I must admit I was intrigued by this “1933” claim.  Is Hershey’s really so farsighted — even Hershey’s?  They opened up a branded resort hotel in western Pennsylvania in 1933?  During the Depression?

Well, look, it’s right here:

Just one minute!

Trademark lawyer Ron ColemanI know what you’re thinking — what are they doing using that big old ®?  They didn’t get that registration yet!

Silly.  The Circle-R is for HERSHEY®!  Were you confused?

Old trademark lawyer trick.  Sorry.

Anyway yeah.  And you know what?  Milton did open that hotel and name it after his bad self in 1933!

Having perfected his formula for milk chocolate and constructed the factory three decades earlier, Milton S. Hershey was presented with a dilemma during the Depression. Hershey was faced with the prospect of either employing his town’s construction workers or providing for their welfare. Strongly objected by his close friends and associates, who urged him to conserve his resources, and his mother, who said the idea was hopelessly extravagant, Hershey ultimately decided to fulfill a longtime dream of his and his wife, and build a hotel overlooking the town and his factory.

Inspired by their travels, the Hershey’s originally dreamed of recreating the elaborate Heliopolis Hotel in Cairo, Egypt which boasts an extravagant red-tiled estate affording royal suites, marble stairways, and vibrant gardens and fountains. Hershey’s plan to build the grand Egyptian hotel was deterred when constrution costs were estimated to be over $5 million dollars.

Hershey began developing a new vision for his hotel, giving his architect and chief engineer D. Paul Witmer a postcard of a hotel the Hersheys had enjoyed on the Mediterranean. In addition to the postcard, the Hershey’s used various notes of their travels to incorporate into the design of the new hotel, including Spanish patios, tiled floors, foundtains, and a dining room with stunning views from every table.

Beginning in 1931, Witmer along with 800 steelworkers, masons, carpenters, and other craftsmen and laborers were instructed to create a 170-room hotel. The hotel was completed on May 23, 1933, which Hershey celebrated with a formal opening on May 26, 1933 with a dinner and dance for 400 guests.

He put it to good use, too.  So his corporate heirs will get their registration — for HOTEL HERSHEY.

But not “Milton Hotel.”  Because that ain’t Hershey’s trademark.

Ron Coleman

I write this blog.

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