Wishes for peace and love are as common around the winter holidays as chocolate and peppermint candy. But when two companies market seasonal confection products with nearly identical names, it’s left to the courts to unwrap a trademark lawsuit.
Vosges Haut, a Chicago-based chocolatier, has widely distributed the “Peace Love and Chocolate” products for a decade. The Kairos Group, which does business as Chuao Chocolatier, directly competes with Vosges. And recently Chuao started distributing a holiday product it branded “Peace, Love & Peppermint.”
On Dec. 18, Vosges filed a trademark infringement lawsuit in federal court in Chicago against San Diego-based Chuao. Additional counts included false designation of origin and unfair competition, as well as a violation of the Illinois Uniform Deceptive Trade Practices act.
In explaining its corporate identity, Vosges spared few details, noting its “intriguing chocolate creations are made with the finest ingredients from around the world, sourced by founder and chocolatier Katrina Markoff in or about 1997. Three days following her graduation from Vanderbilt University, Katrina moved to Paris to pursue her dream of studying the culinary arts at Le Cordon Bleu. Using her palate as her guide, she embarked on a world tour that began with an apprenticeship in Spain under the direction of Ferran Adrià and continued east through Southeast Asia and Australia. Katrina’s fusion of indigenous spices, flowers, roots, herbs and liqueurs with premium chocolate creates a sensory experience that nurtures awareness of and appreciation for the world’s diverse cultures.”
Vosges, which began using “Peace Love and Chocolate” in 2005, federally registered the phrase as its trademark in 2011. For a decade, the words have been used on nearly all the company’s chocolate catalogs, bars and other products, as well as its website, email signatures and stationery that accompanies its chocolate gifts. Such products are sold nationwide at places like Starbucks, Whole Foods and Kroger, as well as the Vosges retail outlet at O’Hare International Airport.
Chuao, which has its products in many of the same national outlets as Vosges, recently started selling a “Peace, Love & Peppermint” bar. Vosges learned of this product in November. The complaint included a picture of the wrappers of both the Chuao product and a Vosges peppermint candy cane bar that bears the “Peace, Love & Chocolate” designation.
Upon learning of the competing product, Vosges’ attorney, Vivek Jayaram, of Jayaram Law Group, Chicago, contacted Chuao, but was unable to come to an amicable resolution. Chuao continued to promote and sell products with the allegedly infringing mark, even in the same stores, which, Vosges asserted, “is likely to cause consumers to be confused or mistaken as to the affiliation, connection or association of these infringing goods with Vosges and its products.”
In addition to seeking a jury trial, Vosges has requested an injunction that bars Chuao from making, marketing and selling anything bearing the contested phrase. Vosges asked the court to order Chuao to file a report detailing its compliance with the injunction and to force Chuao to deliver to Vosges for destruction any offending products and materials. It further wants Chuao to provide detailed accounting of “all transactions relating to its importation, distribution and sales of products bearing” the phrase, including gross revenues and profits. Vosges also asked the court to order Chuao to transfer any profits and advantages earned through its products, as well as to be subject to payments for treble damages and legal fees.