Trader Joe’s recently landed in a “sticky situation” after The J. M. Smucker Company (“Smucker”) sued the retailer, alleging that the retailer’s “Crustless Peanut Butter & Strawberry Jam Sandwiches” are “obvious copycats” of Smucker’s well-known Uncrustables®. Smucker’s Uncrustables® is a household name and staple for many families, resulting in a brand worth nearly $1 billion. While the product itself is seemingly simple—a crustless peanut butter and jelly sandwich—the effort to protect the Uncrustables® brand has been anything but.
Looking to sandwich the competition, Smucker sought patent protection for the Uncrustables® sandwich from the United States Patent and Trademark Office (“USPTO”), obtaining a utility patent (U.S. Patent No. 6,004,596 (“the ’596 Patent”)) titled “Sealed Crustless Sandwich” on December 21, 1999. The patent was originally filed by Menusaver Inc., a company later acquired by Smucker. The claims of the ’596 Patent generally describe a sealed, crustless sandwich including a first bread layer, at least one filling, a second bread layer, and a crimped edge that seals the filling between the bread layers. Patentability was supported primarily by distinct features of the sandwich’s crimped edge, distinguishing from a sandwich with its crust merely removed to appease a picky eater.
A third party argued that the USPTO was “out to lunch” when it granted the ‘596 Patent, arguing in a subsequent USPTO reexamination proceeding that the patent was invalid. Unfortunately, the third party prevailed and obtained cancellation of all of Smucker’s patented claims. Prior art cited during the reexamination included a 1996 Pampered Chef Recipe and Instruction Book and U.S. Patent No. 3,782,270 to S. Sollerud. To distinguish their invention, Smucker’s amended their claims to recite the “not fully compressed” nature of their crimped edge. However, the amended claims were found to be indefinite, and thus, not patentable.
Though Smucker lost patent rights to Uncrustables®, it still holds numerous trademarks covering the product, as well as trade dress in the appearance of the packaging and product. These are at issue in the recent lawsuit filed against Trader Joe’s.
A trademark is a word, phrase, symbol, design, or combination of these that identifies and distinguishes the source of goods or services; it tells consumers who is behind a product or service. Trade dress is a specific type of trademark. It refers to the overall “look or feel” of a product or service that identifies their source to consumers. Trade dress can include elements such as shape (e.g., the distinct shape of a Coca-Cola® bottle) or color (e.g., the famous “Tiffany blue” used by on jewelry boxes from Tiffany & Co.) Descriptions of Smucker’s trademarks and trade dress covering Uncrustables® include: “configuration in a round pie-like shape with distinct peripheral undulated crimping;” “pictorial representation of round crustless sandwich;” “two-dimensional pictorial representation of a round crustless sandwich with a bite taken out showing filling on the inside;” the word ‘UNCRUSTABLES’ in blue stylized letters with white shadowing;” and “stylized script of the word ‘UNCRUSTABLES’ in blue with black and white shadowing around the word.” Smucker alleges that Trader Joe’s “Crustless Peanut Butter & Strawberry Jam Sandwiches” infringe these trademarks.
The test for trademark infringement is “likelihood of confusion,” i.e., would an ordinary consumer be confused about the source or sponsorship of the goods or services? Here, the question is whether an ordinary consumer is likely to confuse Smucker as being the source or a sponsor of Trader Joe’s product.
Smucker supports its trademark infringement claim by citing to Trader Joe’s sandwiches being round, crustless, and crimped, and also to their packaging, which is the “same color blue” as Smucker uses in their Uncrustables® mark and features a round crustless sandwich with a bite taken out of it, exposing the filling. Smucker also provides evidence of actual consumers that were confused as to the source or sponsorship of Trader Joe’s product; they thought Trader Joe’s product was a Smucker’s product.
Smucker, however, emphasizes that they “do not take issue with others in the marketplace selling prepackaged, frozen, thaw-and-eat crustless sandwiches [but] cannot allow others to use Smucker’s valuable intellectual property to make such sales.” In fact, many other companies sell crustless sandwiches in non-circular forms, likely because Smucker’s intellectual property does not extend to such forms.
The “brand-which” battle has just begun. Trader Joe’s has not responded to Smucker’s lawsuit yet.