Kissing trademark rights goodbye?

Eric Johnson‘s Pixelization blog has a sweet insight into a sticky trademark mess that Hershey’s could be, theoretically, getting itself into:

It’s a Hershey’s-brand three-compartment silicone muffin pan. When you bake muffins in this pan, they come out – adorably, of course – in the shape of oversized Hershey’s chocolate bars – complete with the Hershey’s name and logo intaglioed in the shape of the finished muffin. The imprint of the Hershey’s name and logo is substantially the same as what one finds on a Hershey’s milk chocolate bar, after the foil is unwrapped.

Clearly, if you buy this muffin pan, there is an implied license to use it to make muffins with the Hershey’s logo. That is, there is an implied trademark license. But, as you might expect, Hershey’s exercises no control over the muffins you make with their logo in the pan you purchased.

Thus, this looks like a case of “naked licensing” – a fast way for a trademark owner to be involuntarily stripped of trademark rights.

Whoops.

“Intaglioed” — nice! But, get it? You’re making stuff that officially, permissively, persuasively says HERSHEY’S on it in official lettering and the usually IP-crazy nuts over Hershey’s have no idea what on God’s green earth you’re putting out there with their name on it! Eric elaborates:

The packaging for the muffin pan – identified as a “Hershey’s Licensed Product” – contains this legend: “THE HERSHEY’S TRADEMARKS AND TRADE DRESS ARE USED UNDER LICENSE.” This prophylactic spray of legalese is steeped in irony. How could Hershey’s put such care into making sure the muffin pan manufacturer had a license and would declare the same, yet witlessly end up issuing a license to all muffin-pan buyers to start churning out food items under the Hershey’s brand?

Ironic, indeed. My first inclination is to say, “Aw, come on!” But he’s right, isn’t he? There’s no limit on how much stuff you can put out with your official Hershey’s trademark-imprinter-on-food-thingy; indeed, how could they place a limit on the consumer’s use? And nowadays, corporations and “IP equity owners” don’t ever just have a little fun with trademarks, or let anyone else do so, either — precisely because doing so just might be construed as abandoning one’s rights!

As Eric points out, the irony, again, is that this device is meant to act as an affirmative brand-building device. Of course, in the scheme of things, it just may be shown to be a whimsical, fun kitchen toy that “no reasonable person” would think was a license to manufacture competing products with the HERSHEY’S mark.

Maybe. But Hershey’s would certainly have it coming to them if someone asserted this this as proof of abandonment [UPDATE:  or, as Rebecca Tushnet suggests, “self-dilution”] as a defense to some kind of infringement action. One can imagine such a defense at least raising a fact issue for purposes of avoiding a summary judgment or defeating an easy likelihood of success showing on an application for preliminary injunction. It would be interesting indeed to demonstrate too that Eric’s example is not the only one of Hershey doing more or less the same thing with its (great) food-borne trademarks. So, you never know.

The chocolate’s too darned sweet, too.

Originally posted 2008-05-25 19:50:54. Republished by Blog Post Promoter