Finnegan achieves sweet victory for Ukrainian candy maker

Finnegan represented Roshen, a major Ukrainian candy maker, in two actions initiated by Ferrero Rocher before the Trademark Trial and Appeal Board. Ferrero claimed that the ROSHEN logos were likely to infringe and dilute its ROCHER and FERRERO ROCHER marks. Roshen counterclaimed to cancel Ferrero’s registration for the mark ROCHER on the grounds of fraud and abandonment.  Finnegan worked closely with experts to design and conduct two nationwide consumer surveys: one on the likelihood of confusion and the other testing actual association of the ROSHEN logo with FERRERO ROCHER/ROCHER for dilution. The survey results showed a less than three percent chance of potential confusion or association.  In the middle of the TTAB proceedings, Ferrero filed a federal lawsuit against Roshen in a U.S. district court, asserting trademark infringement and unfair competition, but then withdrew the complaint.  At the end of the discovery period, Ferrero withdrew both its TTAB opposition and cancellation proceedings against Roshen with prejudice, resulting in a complete victory for Roshen.