Peanut butter, jelly and litigation, the perfect mid afternoon snack. The J.M. Smucker Company dished up a trademark dilution and infringement lawsuit against an e-cigarette retailer who is selling UNCRUSTABLE e-cig products.The J.M. Smucker Company, or more commonly (and easier to type repeated times) referred to as “Smucker’s,” for over 119 years (Willard Scott wishes you a happy birthday) has been distributing jellies, peanut butter and other spreadable goodies. The product was once sold from the back of a horse-drawn wagon but has grown into a global strawberry-scented giant. Since 1996, Smucker’s has been distributing crust-less peanut butter and jelly sandwiches for picky kids, like me, bearing the UNCRUSTABLE trademark. Uncrustables now come filled with all things from peanut butter to jelly to honey to chocolate flavored hazelnut spread. In 2010, Defendant launched the [Vapor Shark](http://www.vaporshark.com/) online and later retail store to distribute e-cigarettes, e-liquids and related products. As seen to the left, defendant distributes parts to a e-cigarette under the UNCRUSTABLE trademark.
In 2015, Defendant applied for and was able to register a trademark for the term in a class covering “electronic cigarettes; electronic smoking pipes. “Smucker’s was not aware of the trademark application or when it was published for opposition. Brand protection lesson learned: always monitor the filings of the Trademark Office. If Smucker’s was aware of the pending application, it could have moved to oppose the mark and avoided litigation. Instead, Smucker’s waited some six months until after the time to oppose had lapsed to move to cancel the registration. Defendant’s counsel argued to Smucker’s that he didn’t feel consumer confusion was likely and requested evidence. In the meantime, to “Smucker’s surprise and dismay,” Vapor Shark filed a lawsuit in Florida seeking a declaratory judgment of non-infringement. Smucker’s countered with this lawsuit in Ohio (its home State) for similar claims.
Smucker’s spends three pages of its complaint warning of the hazards of e-cigs and asserts that associating the UNCRUSTABLE trademark with such a product dilutes and tarnishes the reputation and goodwill of Smucker’s UNCRUSTABLE mark. Smucker’s also argues that the marks are confusingly similar and likely to confuse customers to think defendant’s product is associated with Smucker’s, when they are not. Would you be likely to confuse the two Uncrustables? The dilution argument appears to be more sound than the consumer confusion one. It would seem to make sense to consolidate the competing lawsuits and fight out this rather sophisticated trademark dispute.