While a traditional cookie is round, they can come in all kinds of delicious shapes and sizes. A cookie that ventures outside the cookie shape norm is Pepperidge Farms’ Milano cookie. The Milano is a distinctive oval shaped cookie sandwich with chocolate in the middle. It has been a big hit for Pepperidge Farms and they intend to keep it that way. That’s why they recently filed a lawsuit for trademark infringement against Trader Joe’s alleging Trader Joe’s Crispy Cookies infringe the look and package design of Pepperidge Farm’s iconic Milano cookies.
Is it really true that a cookie could be worthy of trademark protection? Can you stop someone from shaping a cookie a particular way? Since trademark protection is afforded to distinctive designs that act as a source indicator for goods or services, a unique shape may signal to consumers that the product comes from a particular source – so yes, it may be possible to receive trademark protection.
However, trademark protection is not afforded to strictly functional elements of a product. So, if a particular shape for a cookie provides a functional advantage, the Trademark Office would likely not grant a trademark registration. This is to prevent the registrant from keeping competitors from using required functional elements of their products.
Three dimensional marks, such as the shape of a cookie, can be registered with the U.S. Patent and Trademark Office. But keep in mind that the examining attorney that review the registration application will likely request that you submit evidence of acquired distinctiveness or secondary meaning.
So let’s consider the Milano. Is an oval shaped cookie sandwich with chocolate in the middle a necessary functional element of a chocolate cookie sandwich? Probably not. There are many different shapes you could use to create a cookie sandwich. You could use a star shaped cookie, a diamond shaped cookie or a traditional round shape. You could also create a cookie sandwich with 3 cookie layers rather than just two. This is Pepperidge Farms’ argument, that the style of its cookie is unique, non-functional, and indicates to the consumer that the cookie comes from Pepperidge Farms.
In fact, the USPTO already bought Pepperidge’s argument. In 2010, it reviewed the trademark application on the style and configuration of the Milano and determined it was distinctive enough to grant a trademark registration on the cookie sandwich. The mark was not initially held to be distinctive by the USPTO, but was considered registerable after Pepperidge Farms submitted evidence of acquired distinctiveness. Pepperidge Farms is now using that trademark registration to sue Trader Joe’s for selling and marketing a similar cookie it calls “Crispy Cookies”.
Trader Joe’s Crispy Cookie is the same basic idea as the Milano, but the cookies are slightly more rectangular than oval. The edges are rounded however, giving it the feel of an oval. The trendy grocer also uses packaging similar to that used by Pepperidge Farms.
While Pepperidge probably won’t be able to block Trader Joe’s from selling a chocolate cookie sandwich, there is a reasonable chance that it will be able to force Trader Joe’s to at alter the shape of its cookies and change the packaging. Pepperidge is also seeking damages from lost profits and punitive damages.
Although cookie shape might not be the first thing you associate with trademarks, if an element of a product is non-functional and conveys a brand or source of goods, you may want to protect it. If you have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.