Intent to Use

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How The Cookie Crumbles – Milano Cookies Trademark Infringement

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Written by Anastasios G. Garbis

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Intellectual Property | Trademarks

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December 8, 2015

Last week, Pepperidge Farm, Inc., owner of the famous Milano® cookies brand, filed a complaint against Trader Joe’s for trademark infringement. What’s interesting about this case is that the infringement did not come from using a similar name, but rather a similar, and perhaps confusing, design.

Pepperidge Farm has successfully been selling Milano brand cookies since 1956. In 2010, it obtained a trademark registration for the configuration of the cookie.

In trademark law, we refer to this as “trade dress.” When you think about trademarks, you typically associate it with a name or a logo. There are times, however, when the actual shape of the product is so distinctive, that when people see it, they can immediately identify the source of that product.

Perhaps the most famous trade dress example is the Coca Cola bottle. Even without a label on it, you would know what you’re drinking. You can see why it would be unfair and likely to cause confusion if a generic cola company offered you a dark drink in a Coca-Cola bottle. The intent to deceive would likely be present as it is trying falsely associate itself with famous product.

In the complaint, Pepperidge Farm claims that “despite being well aware of the famous MILANO® cookie configuration trademark, and the enormous goodwill symbolized thereby and associated therewith, Trader Joe’s recently began selling, in the packaged retail space, a cookie product designed to trade on the MILANO® cookie’s goodwill and reputation.” The complaint also alleges that Trader Joe’s has used similar packaging to recent Pepperidge Farm packaging to further deceive consumers.

The issue with the packaging rests on the fact that Trader Joe’s is using a fluted paper tray to market its cookies, much like how Pepperidge Farm marketed its cookies in the past. The kicker here is that the actual product is not packaged in a fluted paper tray, but rather in a plastic tray as shown below and may strengthen Pepperidge Farm’s argument.

The similarities are definitely there. It’ll be interesting to see if it is decided that the Trader Joe’s cookies are different enough in shape/design to allow them to be sold without infringing on the Pepperidge Farm trademark.