If you saw a brown rectangular baking pan divided into 12 smaller rectangles, would you immediately think of a Hershey chocolate bar? What if the pan was marketed as a “Chocolate Bar Brownie Pan” and each small rectangle had the word “chocolate” printed on it?
Williams-Sonoma, a retail store known for its gourmet cookware, has been sued by the Hershey Company seeking to block sales of Williams-Sonoma’s “Chocolate Bar Brownie Pan.” The Hershey Company believes that the pan will both cause confusion among consumers regarding its sponsorship or marketing of the pan and also “dilute” its famous mark. The suit claims that the brownie pan sold by Williams-Sonoma “unlawfully trades on the goodwill and reputation Hershey has established through its use and promotion of that product configuration trademark.”
I have to admit that I thought of the famous Hershey bar of chocolate given the shape, design and name of the pan, especially given the fact that it is to make a chocolate product. On the other hand, it is just a grid of squares with "chocolate" written inside each. If the finding is there is likely confusion in the marketplace, then Williams Sonoma would be liable for trademark infringement, including perhaps damages. If on the other hand, the finding is that the use of this pan “dilutes” the strength of a “famous mark” by blurring or tarnishing Hershey’s image, then confusion is not required. Unlike trademark infringement, for dilution there is only the remedy of getting a permanent injunction, not damages as well.
But perhaps this story is only half-baked. A glance at Williams Sonoma’s on-line catalog shows that they also market a “Sandwich Cookie Cake Pan.” A dead ringer for the Oreo cookie, we'll just have to see if another suit pans out.