Trademarking the Shape of Cookies


Earlier this month (Dec. 2015), Pepperidge Farms, the bakers and marketers of one of my favorite cookies, filed suit against the popular grocery retailer, Trader Joe’s, for, among other things, selling a cookie having the general appearance and shape of their well-known Milano cookie.  By selling a similar looking cookie, Trader Joe’s is alleged to have infringed the trademarked shape and appearance of the Milano cookie.  Note that I said “trademarked shape and appearance,” not the trademarked name, “Milano,” cookie.    

This suit piqued my interest because, occasionally, I have prospective clients who call seeking assistance in obtaining a patent on their special cookie or some other edible concoction.  Typically, I advise them that a patent is probably not the best method of protecting or establishing exclusivity for something that is primarily recipe-based.  In support of my recommendation NOT to pursue a patent for their recipe, I cite examples of well-known products that enjoy exclusivity by keeping the recipe a trade secret and obtaining a federal trademark registration to protect the product name.  Classical examples include Famous Amos, Mrs. Fields and Kentucky Fried Chicken with the secret eleven herbs and spices that allegedly distinguish their product. I’m sure there are others examples, but the prospective client generally sees my point and takes my advice with regard to trademarking.  

Now, I’m confident that in the case at hand, Pepperidge Farms is doing an adequate job of maintaining the secret of the recipe for Milano cookies, and it is readily apparent that they secured a federal trademark registration for the name, “Milano.”  But, interestingly, Pepperidge Farms took the additional step of securing federal trademark protection for the shape and appearance of the Milano cookie.  Specifically, the registration for the appearance of the Milano cookie states that trademark protection extends to the “configuration of a cookie comprised of a filling sandwiched between two oval-shaped cookies” and where “a small portion of the cookie bumps out of an otherwise flat contoured surface.” Furthermore, Pepperidge Farms alleges that the manner in which Trader Joe’s is choosing to package and advertise their infringing cookie is likely to cause confusion in the minds of potential purchasers resulting in harm to the reputation of Pepperidge Farms and reducing the sales of their Milano cookies.  

Trader Joe’s allegedly offending cookie, which is marketed under the very 003.jpggeneric and inoffensive name of, Crispy Cookies, also has a chocolate filling sandwiched between two rounded rectangular cookies and clearly resembles the Milano cookie.  However, the evidence in support of the confusingly similar packaging for Crispy Cookies can get a little confusing itself.  Suffice it to say the Pepperidge Farm Milano cookie is currently depicted on the outside of its packaging casually stacked and assembled with a few pieces of chocolate.  Within the package, however, the cookies are contained in fluted paper cups.  The Trader Joe’s Crispy Cookies are depicted on their packaging in fluted cups, but are contained within their packaging in plastic trays.     

Essentially, Pepperidge Farm has the burden of convincing a jury that they are entitled to damages, costs and injunctive relief that would prevent Trader Joe’s from selling the Crispy Cookies in a shape and/or in a package that is confusingly similar to the shape and packaging of their Milano cookie. I haven’t been consulted, of course, but I am pessimistic that Pepperidge Farm will succeed in its attempt to curtail the sale of Crispy Cookies by Trader Joe’s.  I simply don’t believe that Pepperidge Farm can or will demonstrate the that typical Trader Joe’s shopper/consumer who sees either the shape or packaging of Trader Joe’s Crispy Cookies will be confused as to the source or origin of Crispy Cookies.  They will know that they are not Milano cookies from Pepperidge Farm, and here is why:  

Almost everyone who shops at Trader Joe’s is expecting to find and purchase a variety of quality products originating from other than traditional sources.  I would argue that the typical Trader Joe’s shopper who sees a package depicting an elongated, rounded-edge cookie with a chocolate filling is likely to assume that the cookies contained therein taste something like Pepperidge Farm’s Milano cookie.  That consumer would also not be confused but would definitely KNOW immediately from the “Crispy Cookie” name on the package that the cookies contained therein are not Milano cookies.  The names could not be more dissimilar, and I would argue that the typical Trader Joe’s shopper would be oblivious to the absence of the “bumped out” portion on the Crispy Cookies’ surface and not be at all misled by the Crispy Cookies packaging and its depiction of elongated cookies in fluted cups.  The inconsistent packaging would, at most, cause the observant consumer to do nothing more than smile and scratch his head.  It’s Trader Joe’s, for goodness sake. The consumer is accustomed to purchasing house brands and generic products and is simply not expecting nationally branded products.

I’ll follow the trial and keep you posted.  It will be interesting.     

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