Read the complete article from ABC News, Why Uncrustables maker J.M. Smucker sued Trader Joe's over PB&J sandwiches.

According to the article, a branding battle is heating up in the frozen aisle over premade peanut butter and jam (PB&J) sandwiches.

The J.M. Smucker Company (Smucker; Smucker’s) recently filed a lawsuit in federal court in Ohio against Trader Joe’s, alleging trademark infringement and unfair competition.

What to Know about Smucker's Lawsuit

Smucker claims that Trader Joe's version of prepackaged, frozen, thaw-and-eat crustless peanut butter and jam sandwiches mimics the "distinctive" features of its own frozen Uncrustables sandwiches, which have been sold by retailers since 2000.

"As a responsible trademark owner, we actively monitor the marketplace and enforce our federally registered trademarks to protect the distinctive Uncrustables sandwich design and round shape," a representative for Smucker said.

While there are other premade, frozen PB&J sandwiches on the market, Smucker has specifically focused on Trader Joe's due to what it says are similar product shapes and packaging styles.

"Our focus is solely on protecting the unique trademarked design that represents the high quality associated with the Uncrustables brand and preventing consumer confusion caused by imitation," the representative said.

Smucker also claims in the lawsuit that Trader Joe's packaging is a violation of the Orrville, Ohio-based food manufacturer's trademark, due to the blue lettering it says matches the same hue used on Uncrustables boxes.

Trader Joe's product, Crustless Peanut Butter & Strawberry Jam Sandwiches, is sold in a four-count pack for $3.79.

A four-count pack of Uncrustables from Smucker sells at retailers like Target for $4.79.

The Potential for Customer Confusion

Legal expert Geoffrey Lottenberg, who leads intellectual property for the firm Berger Singerman, told the media that "the key to this case is Smucker proving that it has strong brand rights, and that consumers are likely to be confused into believing the Trader Joe's sandwiches are affiliated with Smucker's."

"For example, Smucker alleges, based on certain social media posts, that the public believes the Trader Joe's sandwich is private labeled by Smucker when they are not," Lottenberg said.

What's Next for Smucker’s Lawsuit

Lottenberg explained that this is a "relatively straightforward" case that's rooted in longstanding trademark law.

"This case is set up to test the bounds of product design recognition and how close a competitor can come before getting into hot water," he said. "The case is early, and defenses have yet to be lodged, so it is unknown what unique issues of the law may arise."

Discussion Questions

  1. Define trademark infringement and unfair competition.

    Trademark infringement occurs when someone uses a protected trademark (or a confusingly similar mark) without permission, and in commerce, in a way that causes confusion among consumers about the origin, sponsorship, or affiliation of goods or services.

    To prove infringement, the plaintiff must generally show:

    (a) The plaintiff’s ownership of a valid trademark;
    (b) The defendant’s unauthorized use of an identical or a similar mark; and
    (c) The likelihood of confusion among consumers regarding the source of goods or services.

    Unfair competition includes any fraudulent, deceptive, or unethical commercial conduct that confuses consumers or gives a business an unfair advantage over competitors. Common forms of unfair competition include:

    (a) Trademark infringement, which involves using a logo, name, or brand that is confusingly similar to another party’s trademark;
    (b) False advertising, which involves a defendant making misleading or false claims about their product and/or the plaintiff’s product;
    (c) “Passing off,” which involves a defendant misleading customers into thinking that their product is actually made by another company (e.g., counterfeit goods);
    (d) Trade secret misappropriation, which involves stealing or improperly disclosing another company’s confidential business information;
    (e) “Bait-and-switch” tactics, which involve advertising one product to lure customers, then pressuring them to buy a more expensive item;
    (f) Trade libel/commercial disparagement, which involves making false or misleading statements that damage a competitor’s reputation or business; and
    (g) Imitation of trade dress, which involves copying the look and feel of a product’s packaging or design in a way that causes confusion.

  2. Define “customer confusion” in the context of intellectual property law.

    For reference, the concept of customer confusion is addressed on several occasions in response to Article 3, Discussion Question 1 above.

    In the context of intellectual property law, particularly trademark law, customer confusion refers to a situation where consumers mistakenly believe that two products or services come from the same source, are affiliated, or are endorsed by the same entity, when in fact they are not.

    As mentioned in response to Article 3, Discussion Question 1 above, customer confusion is an essential element of a trademark infringement claim, meaning that among other things, a plaintiff must prove customer confusion to prevail in a trademark infringement claim.

  3. In your reasoned opinion, and having taken into consideration the information provided in this article, as well as the video and comparative product pictures included at the above-referenced internet site, has Trader Joe’s illegally infringed on Smucker’s trademark? Why or why not?

    This is an opinion question, so student responses may vary. Determining whether customer confusion does or does not exist is not an exact science; instead, it is based on the factfinder’s (i.e., the jury’s) conclusions in litigation.

    In your author’s opinion, which is based on the information provided in Article 3 as well as the video and comparative product pictures included at the above-referenced internet site, although this is admittedly a “close call,” Trader Joe’s has not illegally infringed on Smucker’s trademark. This opinion is based on your author’s conclusion that there is no likelihood of confusion among consumers regarding the source of the food products because of the substantial differentiations between the products.

    First, the predominant colors of the products’ packaging are different—Smucker’s is red, while Trader Joe’s is blue.

    Second, the names “Smucker’s” and “Trader Joe’s” are clearly displayed on the respective product packaging.

    Third, Smucker’s uses the trademark name “Uncrustables,” which is a unique, made-up word (i.e., it is a word that is not otherwise included in the English language), while Trader Joe’s uses the generic name “Crustless,” which is an actual word.

    Fourth, Smucker’s product packaging shows only one sandwich, while Trader Joe’s product packaging shows four.

    Your author is confident that a reasonable consumer can distinguish between a manufacturer’s brand (e.g. Smucker’s) and a store brand (e.g., Trader Joe’s).

    As noted in the video accompanying Article 3, this is not a “slam-dunk” case for the defendant Trader Joe’s—Its crustless peanut butter and jam sandwiches are similar to Smucker’s Uncrustables’s trademarked round shape and crimped edges. Also, the product packaging for both visually depicts a bite taken out of a sandwich.