If you have been a reader of my blog for a while, you have learned that businesses can register a trademark for goods related to the distinctive shape of a product or packaging. And they can defend that registration by claiming trademark infringement if it seems likely that consumers will confuse one brand for another brand. But are similar shape and type of product enough to verify that consumers will be confused? 

Smucker’s is riding a current lawsuit against Gallant Tiger, a small Minneapolis gourmand sandwich maker, on these two points. Smucker’s claims that Gallant Tiger is infringing on its Uncrustables by selling a too-similar round, crustless PB&J.

Smucker’s is a national multi-million dollar brand. Gallant Tiger barely turns a few thousand dollars per month, selling its sandwiches to coffee shops. So why is Gallant Tiger holding its ground?

Identical or Fraternal Sandwich Twins? What Does It Take for Trademark Infringement?

It is true that both companies:

• Make peanut butter and jelly sandwiches
• Remove the crusts from those sandwiches, leaving a round shape
• Crimp the sides of the sandwich closed
• Feature this crimped, crustless sandwich with a bite taken from it on their packaging

These similarities are too close for comfort, according to Smucker’s. They pulled out their trademark registration of the Uncrustable shape to prove their point.

Said a Smucker’s company spokesman of the lawsuit:

“The Uncrustables design has received a federally registered trademark that Smucker, as a trademark owner, has an obligation to protect. Our intent is to ensure an amicable resolution and we would welcome the opportunity to discuss this further with the Gallant Tiger team.”

Amicable? Perhaps. Smucker’s has asked for Gallant Tiger to cease and desist the making, crimping, and selling of its sandwiches post-haste.

The Stance of the Gallant Tiger

However, Gallant Tiger feels confident that sandwich eaters of Minneapolis will not confuse their sandwiches with Uncrustables and they will not be found liable for trademark infringement. Although they admit the composition and shapes are similar, they believe the brands are on different levels in meaningful ways – in other words, consumers are really not likely to confuse them:

• Gallant Tiger sandwiches use artisanal, non-standard ingredients, like chai-spiced pear butter instead of grape jelly, single-ingredient almond butter instead of processed peanut butter, and sourdough bread
• Gallant Tiger sandwiches cost $5.75 each – compared to a $10 box of ten Uncrustables
• Their sandwiches are only distributed within Minneapolis

Gallant Tiger’s legal representation also pointed out that sandwiches do not come in that many functional shapes: you can basically choose square, round, or triangle if you use a standard sandwich loaf, unless you venture into more wasteful polygons.

Perhaps the humblest and most convincing point comes from the founder of Gallant Tiger, Kamal Mohamed. He notes that, if customers truly do confuse the brands, they will probably go with the cheaper and more plentiful option of Uncrustables. Mohamed’s point acknowledges that the brands are pursuing different target audiences.

The Conclusion of Confusion

It is hard not to see this as a “David and Goliath” tale in which you want to root for the small guy. Ultimately, the outcome rests on the priority of Smucker’s trademark registration and the solidity of their consumer confusion claim. Likelihood of consumer confusion claims do not rest in the abstract – they flow logically from instances of actual confusion and analysis of factors such as similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, relatedness of the goods or services, similar channels of trade, commercial strength of the trademarks, and sometimes customer surveys. The differences in the ingredients of the sandwiches may not be enough to overcome a trademark registration for the shape of the product.