Pepperidge Farm Sues Trader Joe's Because It Too Made A Cookie

from the c-is-for-court-costs dept

Fri, Dec 11th 2015 8:22am — Timothy Geigner

You learn quite a bit writing for this site. For instance, did you know that Milano cookies aren't a style of cookie, but are rather an actual trademarked name of a dessert from Pepperidge Farm? I didn't. Yes, the two biscuit cookies with a layer of chocolate in between, which most of us ignorant fools just call a cookie sandwich, is jealously protected by Pepperidge Farm. Case in point is the company's lawsuit against Trader Joe's for selling what it claims is an infringing cookie.

Pepperidge Farm is calling out Trader Joe’s for allegedly being some kind of cookie monster, claiming in a new lawsuit that the grocery company is infringing on its trademark for selling a cookie that it says is a ripoff of its Milano cookie. By selling a product called Crispy Cookies, Trader Joe’s is damaging Pepperidge Farm’s goodwill and confusing shoppers, according to the lawsuit reported by Reuters. Though Trader Joe’s cookie is more rectangular, it has rounded edges, “mimicking an overall oval shape,” the lawsuit says. The grocery chain also uses similar packaging, the complaint claims.

Yeah, about that packaging. The claim that they're similar? Yeah, that's not actually true.

The differences in trade dress abound, from the colors to the specific shapes of the packaging, not to mention that clearly labeled Trader Joe's logo on its product. Claims that the packaging was designed to look like Pepperidge Farm packaging are clearly not true. As for the trademark claim on the cookie itself? Look, when it comes to the trademark protections of food items, these things are really specific. Recall that in the EU there was an attempt to trademark Kit Kat's shape, which was specific enough to require four bars with the exact shape that Kit Kats are sold in...and even that was recommended to be rejected by the EU. In this case, the shapes of the cookies are different, the types of filling are slightly different, and the actual type of cookies used in each are different (the Milano is a vanilla wafer cookie, and the Trader Joe's product is just a plain old cookie). So, different ingredients and different shapes. Where is the trademark violation?

It's worth noting as well that Milanos first appeared as a cookie in the 1950s, yet Pepperidge Farm only got the trademark on the cookie in 2010, which seems to undercut the theory that its only with this trademark that it could survive in the first place. It seems unlikely that anyone is going to Trader Joe's and thinking they're buying something from Pepperidge Farm. Given the weakness in the other areas of the claim, I'd expect this suit to meet a quick end.

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Filed Under: cookies, milano, trademark
Companies: pepperidge farm, trader joe's

35 Comments

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That One Guy (profile), 11 Dec 2015 @ 6:34am

"We don't need you to give us a bad reputation, we can do that ourselves!"
By selling a product called Crispy Cookies, Trader Joe’s is damaging Pepperidge Farm’s goodwill

If by 'goodwill' they mean 'goodwill towards Pepperidge Farm from it's customers', selling a similar cookie isn't likely to do that. You know what would however? Going legal over something this stupid, showing that Pepperidge Farm is the kind of company that has no problem threatening competing companies for ludicrous reasons.
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Anonymous Coward, 11 Dec 2015 @ 8:39am

so THEY INVENTED the cookie?
well sue the entire planet then!
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Anonymous Coward, 11 Dec 2015 @ 8:53am

Rounded Corners!
If Apple could win a design patent lawsuit for rounded corners against LG when LG's corners didn't even have the same radius surely Pepperdick Farms can win this case against TJs!
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Anonymous Coward, 11 Dec 2015 @ 8:59am

Pirate Joe's
It's getting to the point that anyone, anywhere, with even a remotely similar name or product or business plan can expect to get sued.

After suing a small Canadian shop named Pirate Joe for trademark infringement (and promptly losing) Trader Joe's can hardly play the victim this time around.

https://whereshouldistart.files.wordpress.com/2008/07/nigger-joes-tar-soap.jpg
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Anonymous Coward, 11 Dec 2015 @ 9:03am

While it boggles my mind that Pepperidge Farm believes that the shape of a cookie is protectable intellectual property, even if we accept that, Trader Joe has an easy defense. Just take a look at Oreo cookies and Walmart's "Great Value Twist and Shout" cookies, or Nilla wafers and "Great Value Vanilla Wafers." Both of those Walmart products are arguably much closer in appearance and packaging than the cookies in this lawsuit. If those don't infringe trademark, how does this?
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Anonymous Coward, 11 Dec 2015 @ 9:09am

Not to mention ...
...being a rectangle with rounded corners, I might mistake it for an iPhone.
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Rich, 11 Dec 2015 @ 9:11am

I will stop buying Pepperidge Farm products now.
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annonymouse, 11 Dec 2015 @ 9:17am

Just make it easy on yourself by just avoiding big brand names and if you have the energy then look at where and by whom it is made.
The annoying thing is that boycotting a brand doesn't always pan out when the 3 or so brands on the shelf are the same company and or factory. How many remember the cough remedy shortage and loss of 80% of the shelf stock when one plant shut down for. ... reasons.
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David, 11 Dec 2015 @ 9:18am

Common use?
Since the cookie has been known as a Milano cookie for 60 years, with no trademark, shouldn't they lose the trademark battle since that name is common use now? Like Kleenex and Xerox protect their names, but not all cases of facial tissues or xerographics?
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afn29129 (profile), 11 Dec 2015 @ 9:24am

Confued by potato chips
Ruffles (potato chips) have ridges but generic potato chips cant? Gosh I'm all confused now 'cause I though I was buying Ruffles even though the package clearly had a different brand printed upon the outside.
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Anonymous Coward, 11 Dec 2015 @ 9:26am

Milano's have round edges.
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Anonymous Coward, 11 Dec 2015 @ 9:30am

Re: "We don't need you to give us a bad reputation, we can do that ourselves!"
Goodwill

1. friendly, helpful, or cooperative feelings or attitude.

2. the established reputation of a business regarded as a quantifiable asset, e.g., as represented by the excess of the price paid at a takeover for a company over its fair market value.

I don't think they know the definition of goodwill. I assume they are invoking definition #1, but their actions destroyed their 'goodwill.'
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MarcAnthony (profile), 11 Dec 2015 @ 10:07am

Does PF claim trademark on all shapes?
Pepperidge Farms cookies come in myriad shapes; e.g. oval, braided, tubular, and round. Their Brussels cookie is basically a round Milano. Do they claim ownership of all these shapes? Many others have made similar looking cookies for decades, such as the Royal Dansk sugar cookies that get sold in tins. Some of Pepperidge Farms cookies bear a striking resemblance. Trademark violation!
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Cat Mara (profile), 11 Dec 2015 @ 10:16am

Re:
It's possible the shape of a cookie could be protected by a design patent.
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Anonymous Coward, 11 Dec 2015 @ 10:17am

I fail to see how consumers could be confused by this. You have to physically go to Trader Joe's to get the crispy cookie, and Trader Joe's doesn't sell Pepperidge Farms cookies. By the same token, the stores that sell Pepperidge Farms cookies don't sell Trader Joe's.
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Anonymous Coward, 11 Dec 2015 @ 10:19am

I see Trader Joe's cookie in cupcake paper. Are we sure it's not a cupcake? Or a Reese's peanut butter cup?
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David (profile), 11 Dec 2015 @ 10:31am

Re: Rounded Corners!
Except TJ's cookies are square
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Rekrul, 11 Dec 2015 @ 10:41am

I wonder how Alyssa Milano feels about having a cookie company trademark her last name.
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Steerpike (profile), 11 Dec 2015 @ 11:09am

Yeah, hopefully this won't survive a motion for summary judgment. Trade Dress doesn't look anything alike and Trader Joe's isn't using the registered trademark.
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Anonymous Coward, 11 Dec 2015 @ 11:33am

Re:
...The annoying thing is that boycotting a brand doesn't always pan out when the 3 or so brands on the shelf are the same company and or factory...

Exactly. Many retailers' house brands are manufactured by the same companies that make the known brands. Even if not if the house brand claims to be equal to a known brand (CVS & Walgreens' house brands being good examples) chances are the manufacturer is licensed by the known brand to use it's patent/copyright/trademark-(s).
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Anonymous Coward, 11 Dec 2015 @ 12:02pm

Re: Re:
Brand names have become almost meaningless these days. For instance, most national-brand baked goods are usually contracted-out to various local bakeries. And with things like consumer electronics, there might be a single factory in China making a product sold under dozens of different brand names (blank CD-Rs certainly come to mind).
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Anonymous Coward, 11 Dec 2015 @ 12:16pm

Similar Packaging
Both packages have a top and a flat bottom to allow the package to stand upright on a shelf and picture on the front. How is that not similar?

/s
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DOlz (profile), 11 Dec 2015 @ 1:01pm

Dear Pepperidge Farms
I shop at Trader Joe’s on a semi-regular basis. However; I hadn’t noticed these cookies before. Thanks for pointing them out I’ll be sure to check them out next time I’m in there.
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Anonymous Coward, 11 Dec 2015 @ 1:05pm

Re: Rounded Corners!
Except that this is a trademark case, and not a patent case. (Intellectual property is a lazy way of referring to and thinking about very different laws, and leads to mistakes about what is protected under each law)
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Oblate (profile), 11 Dec 2015 @ 1:23pm

Re: Dear Pepperidge Farms
I had the same thought. I was reading this and thinking "I didn't know TJ made those... I could be there and back in 15 minutes..."
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Glenn, 11 Dec 2015 @ 2:34pm

Rounded, not rounded... gee, I'm glad Apple and Samsung don't make cookies.
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Anonymous Coward, 11 Dec 2015 @ 4:24pm

If a company's name and reputation is so very linked to the shapes of it's cookies, then why isn't Pepperidge Farm selling a cookie shaped like an asshole?
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John85851 (profile), 11 Dec 2015 @ 5:40pm

Who files these suits?
But, like all these cases, someone had to start the case. It wouldn't need to come to a quick end if it wasn't filed in the first place.

Who are the lawyers who file such a suit? Either:
1) The lawyer is paid too much money to think for himself and simply does what the client says, even if knows they have no case. If this is true, the lawyer should be fined for an ethics violation.
2) The lawyer doesn't know any better and he actually thinks the client has a case. If this is true, the lawyer should be disbarred until he learn the law a little better.

In either case, why aren't we going after the lawyers for filing these cases? As usual, as long as the accusing company doesn't face any punishment, they'll keep pushing their lawyers to file these kinds of cases.
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Anonymous Coward, 11 Dec 2015 @ 7:18pm

Re: Who files these suits?
1) The lawyer is paid too much money to think for himself and simply does what the client says, even if knows they have no case. If this is true, the lawyer should be fined for an ethics violation.

By whom? The other lawyers he's helping to make rich? Not likely.
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Coyne Tibbets (profile), 11 Dec 2015 @ 11:02pm

Re: "We don't need you to give us a bad reputation, we can do that ourselves!"
Mmmm Belgian chocolate versus just plain dark chocolate...I think I "gots" to go to Trader Joe's.

Which is the whole point, of course: When a company makes a mediocre product and sells it dear, there's room for another company to make something a bit better and sell it less expensively. To steal customers from the first company. Isn't competition a bitch?

But wait: "Let's file a trademark lawsuit...make them stop competing!"

The new American competitive model: IP lawsuit. Companies run by people too dumb to compete in a "free market", using the government to crush competitors.
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Anonymous Coward, 12 Dec 2015 @ 8:05am

Re:
Don't mess with Pepperidge Farm, because Pepperidge Farm remembers. (Eh, someone had to link to this.)

(https://youtu.be/r2QVjp4KEjU)
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Anonymous Coward, 12 Dec 2015 @ 8:08am

Re: Re: Rounded Corners!
And Pepperidge Farm is a bit obtuse.
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Anonymous Coward, 15 Dec 2015 @ 11:23am

Re: Not to mention ...
...or a gun after a bite or two...
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dianne (profile), 22 Dec 2015 @ 11:28pm

Cookies
A point or two:

Someone point out a store that sells both Pepperidge Farm and Trader Joe's?

Also: They're nothing alike. The packaging is not alike, etc.

Or as a cashier at Trader's told me last week "We're selling a HELL OF A LOT of these cookies!!"
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dianne (profile), 22 Dec 2015 @ 11:34pm

Re: consumer confusion
I'm sorry to say my home town built a large, modern library that cost a bunch of money, and within 10 years, wanted a new building because they claimed it was "confusing" for patrons to find the front door.

You know, the giant double door they built on the front of the building with the large concrete pathway leading up to it?
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