In yet another delicious trademark lawsuit, Pepperidge Farm has sued Trader Joe’s for trademark infringement, dilution, and unfair competition on the grounds that TJ’s Crispy Cookies are confusingly similar to PF’s Milanos brand cookies.
That’s right – I hardly finished writing about a trademark lawsuit over Hawaiian sweet rolls when this one came along.
Let’s start by crushing some dreams: Pepperidge Farm is not actually a farm, but a division of the Campbell’s Soup Co., and Trader Joe’s is no longer owned by a guy named Joe, but rather by a German trust.
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Details of the Cookie Trademark Lawsuit
The Pepperidge Farm v. Trader Joe’s complaint, which was filed in U.S. federal court in Connecticut (click here to read the complaint), doesn’t have to do with the brand name MILANOS – TJ’s isn’t so dumb as to outright rip off the name of another product. Instead, it has to do with “the famous and unique MILANO® cookie configuration trademark,” which is “characterized by a unique configuration comprised of a chocolate filling (sometimes with additional flavoring) that is sandwiched between two oval shaped cookies.”
Pepperidge Farm owns a U.S. trademark registration for this configuration: Reg. No. 3,852,499. They note that they “[place] the MILANO® cookies inside fluted paper trays inside a larger, upright package, which includes an image of the MILANO® CONFIGURATION on the principal display panel.” They go into detail in the complaint about how TJ’s allegedly copied not only the cookie configuration, but also distinctive elements of the packaging.
All of which leads to this claim:
The similarity in configuration between the MILANO® cookies and the Infringing Product and the manner in which Trader Joe’s has chosen to package and advertise the Infringing Product is likely to cause confusion, mistake, and/or deceive purchasers, potential purchasers, and the relevant public and trade at the time of purchase, as well as post purchase as to the source or sponsorship or approval of the Infringing Product, and/or as to its affiliation with Pepperidge Farm, thereby causing harm to Pepperidge Farm’s reputation and good will.
PF goes on to note that “a recent web search for the terms “Trader Joe’s” “cookie” and “Milano”, Google produces 125,000 hits, many of which liken the Infringing Product to the MILANO® cookies.” It seems like TJ’s is a victim of its own success.
Who Will Win?
Wes Anderson (no, not that one) over at Duets Blog (one of the best trademark blogs out there) suggests that PF will have trouble succeeding with its claim of trademark infringement:
…a likelihood-of-confusion claim may be tough sledding for Pepperidge Farm. Trader Joe’s is known for filling its stores with its own private label products in its stores, and these products frequently borrow naming and design cues from more famous brand names. What’s more, the products do not appear side-by-side in the marketplace; Trader Joe’s products are sold only in their own stores — so you won’t find the offending treats sold alongside MILANO cookies at your more conventional big-chain grocery store. In essence, it’s hard to envision a consumer buying TJ’s cookies and having any confusion as to whether they come from or are affiliated with Pepperidge Farm.
I think this one is more of a tossup. The court will have to determine how sophisticated they believe Trader Joe’s customers are. How much thought is put into the purchase of a bag of cookies? Other than changing the name of the product, TJ’s has gone a long way to make their cookies and the packaging resemble Milanos.
Which brings us to the trademark dilution claim. As I’ve written before (in a case involving ice cream, in case you’re not hungry enough), Trademark Dilution is a claim by a trademark owner that the use of the mark by the defendant would diminish the goodwill embodied in the trademark – even if the defendant is not using the mark in connection with similar goods or services.
This means that you can be guilty of trademark dilution even if you don’t use the actual brand name or logo. However, in order to prevail in a trademark dilution claim, the infringed mark must be famous. Are the distinctive shape and packaging of Milanos sufficiently famous on their own – meaning, without the Milanos brand name – to qualify for a trademark dilution claim? This one leans a bit more in PF’s favor.
Sometimes, a lawsuit isn’t perfectly clear-cut. Trader Joe’s obviously has an interest in protecting its ability to manufacture and sell products that are similar to name brand goods. But they may have gone too far in this case. I’ll be keeping an eye on this one.
