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Tough Cookie case shows the complications of similarity in trademark litigation

On Behalf of | Oct 7, 2021 | Trademark Infringement |

Trademark is one of the more complicated aspects of intellectual property law. With so many factors that go into a trademark, and so many nuances with establishing a violation in court, it no easy feat to obtain a basic understanding of trademark protection.

Cookie Department vs. Hershey Co.

A recent case shed some light on one of the more complicated aspect of trademark litigation. As reported in moondaq online, Cookie Department, a California company that makes cookies, brought a claim against Hershey Co. for use of its “TOUGH COOKIE” trademark. (Then Hershey brought a different trademark claim against Cookie Department, which then Cookie Department claims was merely retaliatory. But we’ll focus on the initial case).

One of the deciding factors in any trademark litigation claim, including the Cookie Department claim, is the likelihood of confusion for the public.

The critical factors of likelihood of confusion

For a successful trademark infringement lawsuit, the plaintiff needs to show that the defendant’s symbol is likely to create confusion. This likelihood is based on

  • Similarity in sound or appearance of marks
  • Similarity in products or services represented by the marks
  • Strength or distinctiveness of the mark

These are just three factors the courts look at, but there are numerous others, as well. It is important to note that each of these factors comes with nuance and a whole history of precedent to complicate what would seem simple on the surface.

Determining the similarity of products

For example, one of the arguments in our Tough Cookie case involves whether the two companies involved are providing similar products, since one company is making cookies and the other is making small chocolate candies. But the similarity between the two products does not have to be an exact match, but merely a similarity that has a likelihood of causing confusion.

There are differences between cookies and confectioneries, to be sure, but there are also significant similarities. At any rate, whether the similarity between the products is significant enough to present a likelihood of confusion on the part of the consumer is certainly debatable.


As a business owner, you might feel safe using a variation of another company’s trademark if your product or service is different from theirs. However, the issue of product similarity, like most issues in intellectual property, is not a simple matter.

Conversely, if you think another company might be violated your protected trademark rights, the fact that the products or services are different is not necessarily determinative on the face of it. There is still a chance that you have a viable claim.

Make sure you seek sound legal counsel from a trusted IP lawyer before proceeding.