IP Law Daily, TRADEMARK NEWS: J.M. Smucker sues Chubby Snacks for engaging in ‘crustless sandwich war’ disparagement, trademark dilution, (Sep 20, 2024)

By Justin Marcus Smith, J.D.

The complaint alleged the putative trouble “began in earnest after Smucker legally and correctly sought to enforce the trademarked circular shape associated and synonymous with the Uncrustables brand.”

The J.M. Smucker Company (Smucker), known for brands like Smucker’s jelly and Jif peanut butter, has sued Chubby Snacks, Inc. (Chubby) in the United States District Court for the Northern District of Ohio. Smucker accused Chubby of misusing Smucker’s federally protected trademarks in Chubby marketing, thereby causing tarnishment and dilution of the Smucker marks. Among other things, Smucker alleged an April 2023 TikTok video by Chubby’s Chief Executive Officer made references to the Smucker “playbook” in “the crustless sandwich war” that amounted to an acknowledgment that Smucker had a valid basis for enforcing its trademark rights. Smucker claims against Chubby include false advertising and commercial disparagement; federal and state trademark dilution; deceptive trade practices under Ohio law; and, violation of the Ohio Food Disparagement Statute. The complaint referenced similarities in circular product shape in the past, focusing instead on Chubby ingredient advertising and alleged disparagement of Smucker ingredients (The J.M. Smucker Co. v. Chubby Snacks Inc., No. 5:24-cv-01587-DCN (N.D. Ohio filed Sept. 16, 2024)).

Smucker marks. Smucker focused its complaint on alleged Chubby misuse of the Smucker UNCRUSTABLES mark and related marks and products. Smucker described how it began manufacturing and selling peanut butter and jelly sandwiches in 1998. It said it began using the UNCRUSTABLES mark in connection therewith in 2000. The Smucker complaint displayed alleged ownership of numerous related federal trademark registrations including Smucker image/design marks and word marks. It said it has guidelines in place to use the UNCRUSTABLES mark as an adjective, not a noun, to keep it distinctive. Smucker said it sells a variety of flavored sandwiches prominently featuring its UNCRUSTABLES and related marks.

Advertising allegations. Smucker accused Chubby of trying to increase sales at Smucker’s expense “by making unsupported and untrue statements in its packaging and advertising about the Chubby Products and the characteristics of Uncrustables sandwiches.” Smucker said Chubby currently sells four varieties of its Chubby Products, including peanut or almond butter paired with a grape or strawberry fruit spread. Smucker devoted roughly 13 contiguous pages of its complaint to detailing its allegations that Chubby has been engaging in “literally and impliedly false and misleading statements[]” about its products, including on social media, like TikTok, and in online reviews. Smucker accused Chubby of “review hijacking” to “inflate the number of ratings and suggest more people are purchasing the item.”

Smucker footnoted that it disclaimed federal Food, Drug, and Cosmetic Act and Food and Drug Administration regulatory claims; however, it alleged that Chubby protein labeling does not comply with FDA regulations because it does not state a protein percent daily value in the Nutrition Facts Panel (NFP). Smucker also challenged the accuracy of Chubby’s “High Protein,” “High Fiber,” and “No Added Sugar” claims. For example, Smucker specifically alleged that Chubby Products do “contain added sugar.”

Turning to its own products, Smucker accused Chubby of engaging in a “[s]mear [c]ampaign” against Smucker’s UNCRUSTABLES products. Specifically, Smucker said Chubby has, for years, been falsely claiming that Chubby products are “‘healthier’ and ‘better for you’ than ‘junk-filled’ Uncrustables sandwiches.”

The Smucker complaint incorporated many in-line screenshots of Chubby social media posts to illustrate Chubby’s alleged disparagement of Smucker’s UNCRUSTABLES products. The in-line screenshots and accompanying descriptions of alleged Chubby disparagement of Smucker ran to about 22 pages of the complaint before reverting back to Smucker’s more legalistic allegations that Chubby has misrepresented its products as “Healthier,” “Better for You,” and so forth, in comparison to Smucker’s UNCRUSTABLES.

Smucker’s complaint appeared to take particular umbrage with Chubby’s use of words like “JUNK,” “junk-filled,” “trash,” and “processed grossness,” in alleged disparagement of Smucker’s UNCRUSTABLES sandwiches. Smucker complained that such words “convey the unmistakable impression and necessary implication that Uncrustables sandwiches are not safe for human consumption.” Smucker specifically denied that its sandwiches contain high-fructose corn syrup and bleached flour. Smucker claimed the predominant ingredients of Chubby products “are the same” as those found in Uncrustables sandwiches.

Misuse, dilution. Smucker alleged that Chubby attacks on Smucker “began in earnest after Smucker legally and correctly sought to enforce the trademarked circular shape associated and synonymous with the Uncrustables brand.” Smucker’s suggested that Chubby resorted to disparagement when Chubby could no longer make its sandwiches round such that the potential for confusion decreased. Smucker cited a September 2022 Forbes interview of Chubby CEO Dillon Ceglio as an example of Chubby “encourag[ing] consumers to correlate the products through near-constant misuse of Smucker’s trademarks.” Smucker cited other examples of Chubby’s CEO and one of its founders allegedly defaming Smucker, including some in-line screenshots.

Smucker continued that Chubby conduct “has injured Smucker in its business and property and threatens to continue to injure Smucker unless such conduct is enjoined by this Court.” It said the conduct amounts to trademark dilution by blurring and tarnishment; commercial disparagement; and unfair competition under the Lanham Act and Ohio statutory and common law.

Relief requested. Smucker prays for a court order:

• declaring Chubby violated 15 U.S.C. 1125(a) and (c);

• declaring Chubby violated the Ohio Deceptive Trade Practices Act, Ohio Rev. Code §§ § 2307.81(B)(1), 4165.02;

• enjoining Chubby from disseminating various statements, for example, about “high fiber,” “high protein,” and “no added sugar,” especially in connection with Smucker’s Uncrustables brand, and in connection with Smucker’s alleged efforts to protect its trademarks, as described at length in paragraphs 28 through 74 and 94 through 98 of the complaint;

• awarding Smucker all available damages relief under 15 U.S.C. §§ 1116-1118 and Ohio law, including any and all available compensatory damages, restitution, disgorgement of profits, treble damages, attorney’s fees, and costs.

Smucker requested a jury trial.

The Case is No. 5:24-cv-01587-DCN.

Judge: NA

Attorneys: Sean H. Suber (Winston & Strawn LLP) for J.M. Smucker Co.

Companies: J.M. Smucker Co.; Chubby Snacks, Inc.

News: TechnologyInternet Trademark OhioNews