A small local Minneapolis company had received a cease-and-desist letter from J.M Smucker company over their crustless peanut butter and jelly sandwiches launch as they believe it is infringing their trade mark.
American parents when making PB&J sandwiches have been taking off the crusts for their children for many years. Smucker’s took advantage of this trend in and took away from this inconvenience. Smucker’s began packaging and selling frozen PB&J sandwiches without crusts but with crimped edges in grocery stores across the USA in December 1996 under the brand ‘UNCRUSTABLES’. Smucker’s own multiple trade marks for the brand including two for the shape of the sandwich, one with and one without a bite taken out of the sandwich. Smucker’s also have an active design right which protects the patterned design of the crimping around the sandwich. In addition to this they also own a utility patent for the machinery that produces the sandwiches. Smucker’s has invested a staggering amount into the business and in November 2021 announced a $1.1 billion investment in a new plant based UNCRUSTABLES sandwich.
Concerning the Minneapolis company they began selling its PB&J sandwiches only in October 2022 in about 6 cafes. Coincidentally, the local company’s sandwiches look very similar to UNCRUSTABLES but has flavours aimed more towards adults such as chilli jam flavours which are sold at a premium price. The reason Smucker’s likely were drawn to this company was because of the fact that this company’s packaging includes an eye-catching image of a round, crustless, crimped sandwich with a bite taken out of it in which seems to be an extremely similar design to UNCRUSTABLES. The staggering similarity of both images certainly do not seem to be a coincidence.
A lawsuit has not yet been filed but Smucker’s is simply doing what every trade mark owner should do, which is monitoring their trade marks. The legal arguments are likely to be much stronger with Smucker’s considering the fact that the small company is considering in allowing Smucker’s to purchase their company which indicates bad faith. Start-up company’s should seek proper legal advice before launching their products and should try to have trade marks which are as distinctive and original as they can possibly be.
Written by Zohaib Tahir, an LLM student at Solent University
