But I Like the Crusts

A number of years ago, Smucker was roundly mocked in some intellectual property circles for obtaining a patent on a “crustless” peanut-butter-and-jelly sandwich.  The Federal Circuit, in fact, invalidated some of Smucker’s broader claims.  Fast forward to the present, however, and the Smucker’s “Uncrustables” line of prepared sandwiches is doing just fine in stores, and IP rights remain in play.  More below the jump.

Last Wednesday, Smucker’s filed a Complaint against a competitor for infringement of its IP rights in Uncrustables.  But Smucker isn’t complaining about patent infringement.  This time, the company will avoid a return engagement with the Federal Circuit by suing two firms, producers of the crustless sandwich called the “PB Jamwich” and “PB Jammerz,” under the Lanham Act.  The core allegation is that the PB Jamwich and PB Jammerz, which are square, infringe Smucker’s trade dress rights in Uncrustables, which are round. 

A copy of the Complaint is posted here.

Some of the details are simply entertaining.  The Complaint recites correspondence between the parties that includes denial of liability on the ground that the packaging for the PB Jamwich and PB Jammerz features an image of the crustless sandwich sliced in half.  Smucker’s counsel replied that mutilating the mark does not reduce likelihood of confusion.  That’s a phrase that belongs in Tom McCarthy’s treatise:  the trademark equivalent of that priceless maxim of California law, “superfluity does not vitiate.”

On the merits, the Complaint elides an interesting distinction.  I assume that the intended consuming audience for Uncrustables is composed largely of children.  This is a case, therefore, where likelihood of confusion analysis might plausibly focus on children, and if that’s correct, then Smucker’s claim seem strong, at least at the outset.  Round sandwich; square sandwich?  Once the crust is missing, who can tell the difference?  On the other hand, if Smucker can enforce round sandwich rights against square sandwiches, does that give Smucker an overly broad trade dress right?  Among other questions to be asked is this one:  How many shapes are left for competitors to exploit?  Is a triangle acceptable?  A parallelogram?Remember that Smucker shouldn’t be able to obtain a patent-like property right without a valid patent!

Updated 8/22: Modern litigation practice being what it is, it should come as no surprise that one of the plaintiff’s lawyers, Timothy P. Fraelich of JonesDay, read this post and wrote me today to suggest a correction.  Paragraph 27 of the Complaint alleges that the alleged infringing product is round, like the plaintiff’s Uncrustables product, so my speculation about shape-infringement might seem to be off the mark.  It does appear that Smucker only sued after the defendants changed their formerly square sandwich and made it round. In the context of the full Complaint, however, nowhere does Smucker concede that the square sandwich does not (or would not) infringe the plaintiff’s mark.  To the contrary, the Complaint points out in paragraph 26 that the defendants had previously expressly disclaimed an affiliation with Smucker; “Clovervale recognized that even a square crustless sandwich might lead to consumer confusion with the famous Round Crustless Sandwich Mark of Smucker.” I take that allegation to imply that Smucker would indeed argue that square crustless sandwiches infringe the mark embodied by the round sandwiches. In other words, suppose the defendants volunteered to settle the case by changing back to a square sandwich shape. All other packaging and promotion to remain as it stands today. Would Smucker take that deal? I don’t expect Smucker to answer that question, but I think that I know the answer. But who knows — Smucker might surprise.

The Complaint also dwells on the packaging, and on the boxes (images of which are included in the Complaint).  On the packages, for which adults might be the relevant consuming audience, it’s more difficult to see similarities between the plaintiff’s “sandwich mark” and the defendants’ “mutilated” sandwich.  “Mutilation” might be a particularly unfortunate choice of words.  To a lot of consumers, and Smucker’s counsel notwithstanding, a thing that has been mutilated might be readily distinguished from the untarnished original.  So which is it?  Packaging or thing? 

The most remarkable aspect of the filing may have nothing to do with trademark law itself.  As Smucker acknowledges in the Complaint, roughly a month ago the defendants filed petitions under the Bankruptcy Code.  The Complaint therefore alleges that Smucker’s claims are not subject to the automatic stay.  To a lawyer (like me) with a casual familiarity with bankruptcy law, this raises a red flag:  Doesn’t the Complaint represent a wilful violation of the automatic stay?  Not so fast.  I haven’t done an exhaustive search, but I have seen some opinions that hold that post-petition suits against a Chapter 11 debtor for infringement of IP rights don’t violate the automatic stay, because they don’t necessarily seek to control property of the debtor or otherwise interfere with the orderly administration of the debtor’s estate.

Chew on that.

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