Uncrustables Drama Leaves Trader Joe’s in a Trademark Jam

Trademarks serve as a vital way for businesses to protect their brand’s identity. Whether it is McDonald’s prominent golden arches or the Nike Swoosh, a trademark is generally a word, logo, phrase, or design that allows people to identify a business’s goods or services.

The J.M. Smucker Co.’s (“Smucker”) recent lawsuit against the Trader Joe’s Company focuses on this form of intellectual property. The American food manufacturer alleges Trader Joe’s Crustless Peanut Butter & Strawberry Jam Sandwiches and packaging are a “copycat” version of the Smucker’s product, “Uncrustables.”

Smucker claims the grocery store sandwiches have the same crimp markings on their sandwich edges. Additionally, Smucker’s asserts the packaging features the same blue color and a similar image of a bitten sandwich showcasing the PB&J-filled inside.

The Uncrustables manufacturer accuses Trader Joe’s of trademark infringement, unfair competition, and deceptive trade practices, among other violations.

What is trademark infringement?

A party may be liable for trademark infringement when they use a trademark without authorization on or in relation to goods or services in a way that causes confusion, deception, or a mistake about where they originate from.

Congress enacted the Lanham Act in 1946, which governs trademark law through a national registration system. Pursuant to the Lanham Act, an owner of a trademark may sue others who use the mark.

To prove trademark infringement in court, a plaintiff must show that:

• They legally own a recognized trademark.
• They used the mark before the defendant.
• The defendant’s use of the mark leads to a likelihood of confusion for the average consumer, as to the origin of the goods or services.

There is no federal statute of limitations for trademark infringement cases. Federal courts will either refer to state law or the Laches Doctrine to determine if the plaintiff waited an unreasonable amount of time to sue.

Proving likelihood of confusion

Confusion is often the most significant element in determining the outcome of a trademark dispute. Different jurisdictions use different tests.

The United States Court of Appeals for the Ninth Circuit, which covers California, uses the Sleekcraft test to determine likelihood of confusion. That test requires that courts consider the following factors:

1. The strength of the plaintiff’s mark.
2. The proximity of the plaintiff’s and defendant’s goods or services.
3. The similarity between the parties’ marks.
4. Evidence of actual consumer confusion.
5. The channels through which the parties marketed and sold the product.
6. How much attention and care a consumer exerts when purchasing the product.
7. The defendant’s intent in using the mark.
8. The possibility of product expansion.

Courts in other parts of the country apply a similar multifactor test to determine whether there is likelihood of confusion.  For example, courts in the Second Circuit use the Polaroid test, courts in the Federal Circuit use the DuPont test, and the Frisch test is used in the Sixth Circuit, which covers the Northern District of Ohio, where Smucker filed its lawsuit.

What is trademarkable?

A person or company can establish trademark rights for a word, logo, phrase, or design once used with specific goods or services. To be eligible for trademark protection, a mark must distinguish itself from others and appear actively in commerce.

For example, while Apple is a valid trademark for technology products, it would not be suitable for a new food product since, in this context, it lacks distinctiveness and already describes apple-based foods.

Smucker v. the Trader Joe’s Company

Smucker cannot claim trademark rights for peanut butter and jelly sandwiches because the recipe is generic. However, the company can trademark specific food shapes and packaging designs, which it has done, including trade dress protection for its product configuration.

The food manufacturing giant is the owner of various marks consisting of round crustless sandwiches “with distinct peripheral undulated crimping” and for pictorial representations of these sandwiches with a bite taken out of them showing the filling inside.

Smucker must prove that the Trader Joe’s product and packaging are likely to confuse consumers to believe they are affiliated with Uncrustables.

Remedies for trademark infringement

A plaintiff bringing a trademark infringement suit may seek various remedies to address the harm they suffered. Remedies include:

• Injunctive relief – Court order stopping the defendant’s use of the trademark.
• Monetary relief – The infringer may need to pay the plaintiff its actual damages, as well as profits they earned, lawsuit costs, or attorney’s fees.
• Destruction of products – The court may order the infringer return or destroy all products with the infringing mark.

Smucker wants Trader Joe’s to stop using depictions like Uncrustables, return all materials relating to its sandwiches back to Smucker for destruction, and pay over the profits it received.

What can businesses learn?

Trademarks are crucial to how a company distinguishes itself from competitors and builds customer loyalty. Businesses or individuals need to protect them. Parties interested in establishing trademark rights should always conduct a proper trademark search before adopting a mark.

If a trademark search does not present any challenges, parties should register their trademark with the United States Patent and Trademark Office (USPTO). An intellectual property attorney can help with this process while protecting against trademark infringement.

Heidy A. Nurinda is an Intellectual Property, Business Litigation, and Franchise & Distribution Attorney at Lewitt Hackman.