December 30, 2015

That’s the Way the Cookie Crumbles

By Bryan K. Wheelock, Principal

On December 2, 2016, Pepperidge Farm sued Trader Joe’s for infringement and dilution of the “famous and unique Milano® cookie configuration trademark.  Civil Action 3:15-cv-0174-AWT in the District of Connecticut.  While the jury is still out on whether or not a typical cookie-munching consumer can tell the difference between  Milanos and Crispy Cookies:

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The lesson to be learned from this cookie clash is Pepperidge Farms’ foresight in getting a federal trademark registration on the Milano® cookie configuration:

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The registration is “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.”  15 USC §1115(a).  It is far easier and less expensive to establish rights in a trade dress ex parte before the U.S. Patent and Trademark Office, than in a contested proceeding in a district court.

While Pepperidge Farms may not have the same success it had against Nabisco back in the 1990’s when it asserted rights in the shape of its Goldfish® crackers (Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 U.S.P.Q.2d 1882 (2nd Cir. 1999)), having the registration on the Milano®  trade dress gives it a big advantage in its current contest with Trader Joe’s, saving it from having to establish ownership of the trade dress, and allowing it to focus on proving infringement.