• Hershey Wins Round in Trademark Suit Over Zone Bars
  • September 23, 2004
  • Law Firm: Reed Smith LLP - Pittsburgh Office
  • Hershey Foods Corporation is rolling out a line of snack bars under the SmartZone name this September, after a judge refused to block the company's actions in a trademark dispute.

    Judge Richard Stearns of a District Court in Massachusetts denied a request for a preliminary injunction by the ZonePerfect Nutrition Company, which is owned by Abbott Laboratories. ZonePerfect is suing Hershey, claiming the Hershey's SmartZone bars infringe ZonePerfect's trademark. Hershey countersued, accusing ZonePerfect of false advertising.

    Both companies produce products designed to be compatible with the Zone Diet, founded by Dr. Barry Sears, a former research scientist at Boston University School of Medicine. Hershey, which has obtained a "Dr. Sears Zone Approved" seal on its bars, won the first round of the fight.

    "ZonePerfect appears to be attempting to sow customer confusion by implying that its product is associated with Dr. Sears and his Zone Diet," wrote Judge Stearns in denying the injunction. An August 23 trial date in the matter was cancelled and trial in the underlying suit will not occur for at least a year, Hershey stated in a release.

    ZonePerfect bought the ZonePerfect trademark from Dr. Sears and his associates in 2001 for $5 million, and millions of customers buy its products, a ZonePerfect spokesman told reporters. The company has asked the judge to reconsider trial postponement.

    Why This Matters: The case appears to pit a current co-branding initiative against the former purchaser of a trademark. The case may help clarify to what extend trademark sellers can pursue subsequent co-branding efforts.