Hershey Chocolate & Confectionery Corporation and The Hershey Companyv.Kenneth B. Wiesen

Trademark Trial and Appeal Board

Dec 27, 2013

No. 91200575 (T.T.A.B. Dec. 27, 2013)

RK

Mailed: December 27, 2013

Opposition No. 91200575

Hershey Chocolate &
Confectionery Corporation and
The Hershey Company

v.

Kenneth B. Wiesen

Before Quinn, Wolfson and Masiello,
Administrative Trademark Judges

By the Board:
This case now comes up for consideration of opposers’
motion for partial summary judgment (filed July 22, 2013) on
the ground of priority and likelihood of confusion.1 The
motion is fully briefed.2

1 As last reset, the first testimony period was due to
commence on July 25, 2013. As the motion for summary judgment
was filed on July 22, 2013, the motion is timely. Trademark Rule
2.127(e)(1).

2 As opposers’ motion was served on July 22, 2013, via first-
class mail, applicant was allowed until August 26, 2013, to serve
and file his response. See Trademark Rules 2.119(c) and
2.127(e)(1). However, applicant served and filed his response on
August 27, 2013. On September 10, 2013, applicant filed a motion
asking the Board to consider his late filing. As opposers have
not objected to the filing on timeliness grounds, we have
considered applicant’s brief on the merits. Cf. Wellcome
Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB
1998)(timeliness requirement waived by plaintiff’s failure to
object to motion on timeliness grounds).

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91200575

2
Background
A notice of opposition was filed on July 7, 2011,
against application Serial Nos. 852109423 and 852215854 on
grounds of priority and likelihood of confusion under
Section 2(d) and false suggestion of a connection under
Section 2(a) of the Trademark Act. Opposers have pled
common law use of the mark MILKSHAKE in connection with
“various candy products” as well as ownership of application
Serial No. 852579805 and “continuous use throughout the
United States since 2005.” Notice of Opposition, ¶¶ 2 and
5.
Applicant filed his answer on July 14, 2011, denying
the salient allegations in the notice of opposition.
Summary Judgment Standard
A motion for summary judgment is a pretrial device
intended to save the time and expense of a full trial when
the moving party is able to demonstrate, prior to trial,

3 For MILK SHAKE in standard characters for “candy; candy
bars” in International Class 30, filed January 5, 2011, under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), and
published for opposition on June 14, 2011. MILK has been
disclaimed.

4 For MILKSHAKE in standard characters for “candy; candy bars;
candy with caramel; candy with cocoa; chocolate candies” in
International Class 30, filed January 19, 2011, under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), and published for
opposition on June 14, 2011.

5 For MILKSHAKE in standard characters for “candy” in
International Class 30, filed March 4, 2011, under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), alleging a date of
first use anywhere and in commerce of December 21, 2005.
Opposition No. 91200575

3
that there is no genuine dispute of material fact, and that
it is entitled to judgment as a matter of law. See Fed. R.
Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317
(1986); Opryland USA Inc. v. Great American Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). If the moving party is able
to meet this initial burden, the burden shifts to the
nonmoving party to demonstrate the existence of specific
genuinely disputed facts that must be resolved at trial.
The nonmoving party may not rest on mere allegations or
assertions but must designate specific portions of the
record or produce additional evidence showing the existence
of a genuine dispute of material fact for trial. Should the
nonmoving party fail to raise a genuine dispute of material
fact as to an essential element of the moving party’s case,
judgment as a matter of law may be entered in the moving
party’s favor.
A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992). The evidence must be viewed in a light most
favorable to the non-moving party, and all reasonable
inferences are to be drawn in the non-movant’s favor.
Opposition No. 91200575

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Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
The Board does not resolve disputes of material fact but
rather only ascertains whether disputes of material fact
exist. See Lloyd’s Food Products, 987 F.2d at 766, 25
USPQ2d at 2029; Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d
at 1542.
Decision
A plaintiff moving for summary judgment on a likelihood
of confusion claim must establish that there is no genuine
dispute that it has standing to maintain the proceeding,
that it has prior proprietary rights in its pleaded mark,
and that contemporaneous use of the parties’ respective
marks on their respective goods and/or services would be
likely to cause confusion or mistake or to deceive
consumers. See Hornblower & Weeks, Inc. v. Hornblower &
Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
Turning first to the question of standing, there is no
genuine dispute that opposers have established their
standing in this matter: opposer Hershey Chocolate &
Confectionery Corporation has standing by virtue of its
application Serial No. 85257980 being suspended pending
disposition of the involved applications, which applicant
has admitted in his answer (Answer, ¶ 5, and Declaration of
Opposition No. 91200575

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Paul C. Llewellyn, Exh. A), and opposer The Hershey Company6
has standing by virtue of establishing its common-law use of
MILKSHAKE for candy products (Declaration of Craig
Kinderwater (hereinafter “Kinderwater Declaration”), ¶¶ 2-4
and Exh. A). See Syngenta Crop Protection Inc. v. Bio-Chek
LLC, 90 USPQ2d 1112, 1118 (TTAB 2009).
As to priority, since applicant has yet to use the mark
in commerce (see Deposition of Kenneth B. Wiesen, p. 61 and
Applicant’s Response to Opposer’s First Set of
Interrogatories, Response No. 5), the earliest date upon
which applicant can rely is the filing date of each
application, i.e., January 5, 2011 (application Serial No.
85210942), and January 19, 2011 (application Serial No.
85221585). See Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991). Opposers
have pled first use of their mark in connection with candy
products since 2005 and have provided evidence in support
thereof. See Kinderwater Declaration, ¶¶ 2-4 and Exh. A.
As applicant has failed to provide any evidence to raise a
genuine dispute of material fact about opposers’ prior use,
we find no genuine dispute as to opposers’ priority of use.
Nor do we find a genuine dispute as to the similarity
of the parties’ marks and goods in question. The marks are

6 Opposers, in their notice of opposition, identify The
Hershey Company as the licensee of Hershey Chocolate &
Confectionery Corporation. Notice of Opposition, ¶ 1.
Opposition No. 91200575

6
essentially identical in sound, appearance and connotation
and the goods are the same. Applicant does not contend
otherwise. Rather, and notwithstanding applicant’s own
applications that are the subject of this proceeding, the
basis of applicant’s opposition to opposers’ motion appears
to be either that the mark is not inherently distinctive but
is instead merely descriptive of a flavor or characteristic
of opposers’ candy, or that opposers have abandoned the
mark.
In support of applicant’s contention that the mark is
merely descriptive, applicant argues that “hundreds of
nontraditional terms are being used to identify flavors and
tastes of products” and attaches to his brief photocopies of
various candy packaging, none of which relate or speak to
the allegedly descriptive nature of MILKSHAKE. See
Applicant’s Opposition, p. 9 and Exh. 1. The only evidence
submitted by applicant relating to the mark in question are
copies of opposers’ own packaging bearing the term
MILKSHAKE. Id., Exh. 3. This evidence is insufficient to
raise a genuine dispute as to the inherent distinctiveness
of MILKSHAKE as it relates to candy. While it is apparent
from opposers’ submissions that “milkshake” describes a type
of beverage, applicant has failed to submit any evidence to
support his contention that “milkshake” describes a flavor
or a characteristic of candy. As such, we do not find a
Opposition No. 91200575

7
genuine dispute as to the inherent distinctiveness of
MILKSHAKE as used in connection with candy.
Finally, to the extent that applicant argues in his
brief that opposers “had abandoned the mark as far back as
1996 when they took over the predecessor companies who owned
the marks and actually produced the Milkshake candy bar,”
such abandonment in 1996, even if true, is not a material
fact in view of the record before us wherein opposers have
submitted evidence of use since 2005, which is not disputed
by applicant: “There is no contention that Opposers have not
used the term Milkshake periodically between 2005 and
present on a number of its Whoppers and Kit Kat branded
candy wrappers.” Applicant’s Opposition, pp. 2-3. In other
words, even if opposers had abandoned the mark, opposers’
subsequent use since 2005 represents a new and separate use
of the mark sufficient to establish a new priority date.7
See Cerveceria Centroamericana S.A. v. Cerveceria India,
Inc., 892 F.2d 1021, 1027, 13 USPQ2d 1307, 1312-13 (Fed.
Cir. 1989), aff’g, 10 USPQ2d 1064, 1068-69 (TTAB 1989).
In view thereof, as there is no genuine dispute as to
any material fact concerning opposers’ standing, and claim

7 In view of the evidence of use put forward by opposers,
applicant’s concession of opposers’ use of the mark “between 2005
and present” and the lack of any evidence corroborating
applicant’s claim of abandonment, we find applicant’s contention
of abandonment based on opposer Hershey Chocolate & Confectionery
Corporation’s surrender of Registration Nos. 1273766 and 1669640
Opposition No. 91200575

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of priority and likelihood of confusion, we hereby GRANT
opposers’ motion for summary judgment.8 The opposition is
sustained and registration to applicant is hereby refused.
* * *

speculative and unsupported by the record and, therefore,
insufficient to raise a genuine dispute of material fact.

8 In view thereof, we need not reach opposers’ Section 2(a)
claim.