-Wes Anderson, Attorney
When a company puts “DISTINCTIVE” on its own packaging, its usually a sign that it highly values its trade dress and product configuration rights. That’s certainly the case for Pepperidge Farm and its Milano cookies.
The commercial bakery giant has taken aim at Trader Joe’s, the popular grocery chain, for selling house-branded “Crispy Cookies” that borrow a few design cues from Pepperidge Farm’s MILANO cookie, the oval-shaped cookies held together with chocolate filling. See for yourself:
Taking umbrage at Trader Joe’s rounded-rectangle sandwich cookies, Pepperidge Farm filed a complaint in the District of Connecticut, alleging trademark infringement and trademark dilution under the Lanham Act, common law, and Connecticut state law.
While Trader Joe’s isn’t using the MILANO name, it turns out Pepperidge Farm has a registration in hand for both MILANO the word mark and a separate registration for “a configuration of a cookie comprised of a filling sandwiched between two oval-shaped cookies.” The complaint makes reference to this as the “MILANO Configuration.” Obtaining such a registration can often be a significant undertaking, but Pepperidge Farm did not receive any functionality refusals and was able to show acquired distinctiveness in its cookie configuration.
And Pepperidge Farm’s complaint meticulously claims other elements of its packaging – a “fluted paper tray” to hold the cookies, and the use of vertical, rather than horizontal, packaging – as part of its overall trade dress that Trader Joe’s mimics.
A sidenote: though they are ostensibly “for adults,” I haven’t had MILANO cookies since childhood, and in my past trips to Trader Joe’s I never noticed they were selling a similar product. Unfortunately, in doing my due diligence for this blog post, I was informed that the local Trader Joe’s was all out of the Crispy Cookies – even in the back! Evidently, they are quite the popular item in St. Louis Park, Minnesota, or there is such a thing as a “cookie-litigation hold.” In any case, my would-be taste test was foiled. I regret the omission.
Back to the merits: a likelihood-of-confusion claim may be tough sledding for Pepperidge Farm. Trader Joe’s is known for filling its stores with its own private label products in its stores, and these products frequently borrow naming and design cues from more famous brand names. What’s more, the products do not appear side-by-side in the marketplace; Trader Joe’s products are sold only in their own stores — so you won’t find the offending treats sold alongside MILANO cookies at your more conventional big-chain grocery store. In essence, it’s hard to envision a consumer buying TJ’s cookies and having any confusion as to whether they come from or are affiliated with Pepperidge Farm.
On the other hand, Pepperidge Farm’s dilution claim may have considerable merit: a dilution claim does not require consumer confusion, only that the MILANO Configuration be deemed a “famous mark” and that Trader Joe’s similar cookie configuration is likely to diminish the distinctive quality of the MILANO Configuration.
Proving the fame of the MILANO Configuration may be the sticking point, and Pepperidge Farm will need to marshal a wealth of evidence to show third-party recognition of the cookies’ shape, configuration, and packaging. The Pepperidge Farm complaint does make some reference to this, stating “the MILANO® cookies are instantly recognizable and due to their popularity, have appeared in pop culture and TV shows like Frasier, Will and Grace, Seinfeld, and Two and-a Half Men.”
I’d be shocked if this clip from Family Guy didn’t make its way into the conversation, with references to the MILANO name, packaging, and cookie shape along with an irreverent reference to the old tagline “Pepperidge Farm Remembers”:
Remember those sweet, warm New England summers? Remember sippin’ lemonade underneath a shady tree? Remember when you hit that pedestrian with your car at the crosswalk and then just drove away? Pepperidge Farm remembers. But Pepperidge Farm ain’t just going to keep it to Pepperidge Farm’s self free of charge. Maybe you go out and buy yourself some of these distinctive Milano cookies, maybe this whole thing just disappears.
So, armed with all this public recognition, will the MILANO Configuration reign supreme? I suspect Trader Joe’s might just have a different product on store shelves once they are back in stock at my local shop.