FREDERICK — Candymaker The Hershey Co. wants a local coin machine supplier to pay for selling stickers spoofing its popular cake of minty chocolate. Vendomatic Inc. will be preparing a defense for a trademark infringement lawsuit filed by Hershey over a sticker parodying the logo for York Peppermint Patties, where the name "York" is changed to "Dork."
The Pennsylvania-based candy manufacturer filed the lawsuit March 28 claiming the sticker the Frederick-based company sold in its coin-operated machines last year infringes on the York Peppermint Patties logo.
The lawsuit filed in U.S. District Court of Maryland alleges the sticker infringes on the York trademark, dilutes its distinctiveness in the market and is the same as selling counterfeit merchandise.
"Defendant's unauthorized use of the York Trade Dress was a deliberate effort to trade off the value and goodwill established by Hershey," states the lawsuit, filed by Richard Simpson, an attorney with Ross, Dixon & Bell LLP, a Washington, D.C. law firm.
Hershey is seeking damages ranging from $100,000 to $1 million per "counterfeit mark" that was sold, offered for sale or distributed by the company. Hershey also wants the court to award it all of the profits from Vendomatic's sale of the stickers.
A spokesman for Hershey declined to comment.
Hershey sues
Vendomatic, the nation's second largest bulk vending company, services more than 80,000 machines in 10 states in the mid-Atlantic. The family-owned company's territory stretches from Maine south to North Carolina and west to Kentucky and Ohio. Established in 1960, the company moved in 2004 to Frederick from Rockville.
Jane Wilcom, spokeswoman for Vendomatic, thinks the lawsuit is frivolous and unfair.
"It's a parody; it's not confusing -- People don't really think that's York and they're not looking for candy when they buy a sticker," Wilcom said. "Even though they settled with the distributor, they're coming after us even though we're a customer of theirs."
In May, Hershey demanded Vendomatic stop selling the Dork stickers, Wilcom said. Vendomatic pulled the stickers from its machines and disposed of the inventory.
Vendomatic is one of many companies that bought the stickers from Menasha, Wis.-based Flatline Corp., which makes stickers and temporary tattoos for coin-operated vending machines.
The maker of the Dork sticker settled with Hershey, Wilcom said, but she isn't sure when.
A spokesman for Flatline declined to comment about the settlement.
Wilcom believes Hershey targeted Vendomatic because it's one of the largest venders to buy the sticker from Flatline.
"We made a minimal profit on those stickers," Wilcom said. "Selling them for 50 cents, we're talking fractions of pennies in profit."
Parody defense
It's not the first time a Frederick company has been threatened with a trademark violation lawsuit.
Beef 'N Buns 'N Paradise, a restaurant on East Patrick Street, used to be called Cheeseburgers 'N Paradise, after a song about a meat eater's struggle to switch to a vegetarian diet.
In 2004, a lawyer representing singer and song writer Jimmy Buffet, who wrote the song "Cheeseburger in Paradise," forced the barbecue and ice cream stand to change its name.
Wilcom expects the lawsuit to be dismissed because she thinks Vendomatic has a strong parody defense. She hopes the litigation will not tarnish the company name.
"I'd like to think we're the ones that make kids happy with that gum ball or candy in their hand," Wilcom said. "We're just trying to give children a little bit of joy -- one quarter at a time."
The parody issue will be key at a trial, said James B. Astrachan, a principal of Astrachan Gunst & Thomas P.C. in Baltimore, who teaches trademark and unfair competition law at the University of Maryland School of Law.
He said there is precedent for parodying corporate names and logos, as long as the use is not meant to imply it is the product in question, or somehow tarnishes the company's reputation. He said Hershey will have to show there is a relationship between the sticker's logo and the company's product, which likely will prove difficult.
"The main question is, will an appreciable number of people be confused by the use of the trademark?" Astrachan said. "Anyone who is buying a sticker is probably not looking to buy candy. They will have a tough road to hoe."
The Daily Record contributed to this report
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