Judge Sara Lioi in the Northern District of Ohio granted Hormel Foods Corporation’s request to dismiss a trade dress lawsuit against it filed by J.M. Smucker Company on Tuesday. The judge explained that the court could not conclude that the trade dress infringement claim, which defendant Hormel asserted through letters to the plaintiff, was “objectively baseless,” so Hormel’s cease-and-desist letters to enforce its purported trade rights to the color of its peanut butter lid are protected.
Smucker, in its petition last May, claimed that the prominent Jif trademark on its planned no-sugar-added peanut butter would prevent consumer confusion due to the light blue lid. It also explained that light blue was common in the packaging of many light-sugar or no-sugar products. The petition reportedly was responding to Hormel’s efforts to cancel the launch of the peanut butter because the light blue lid allegedly infringed on its trade dress rights, which include a teal lid. Smucker hoped to end the dispute quickly in order to get its products on the shelves.
Smucker brought its claims under the Lanham Act. The judge explained in the opinion that Hormel had sent a letter to Smucker claiming that it owned the “teal in the ray design on the labels” and that the planned light blue lid for Jif No Added Sugar product was concerning to the defendant and could confuse consumers. Smucker responded that teal was one of many different colors used in connection with Hormel’s Skippy products and claimed that there would not be confusion by its use of light blue.
The lawsuit followed an ongoing exchange of letters between the parties beginning in March 2020 and trademark requests filed in April 2020 by Hormel for the color teal used in Skippy peanut butter packaging. Smucker reportedly claimed that the trademark requests would take years and that it hoped to produce its Jif No Added Sugar product with the blue lid sooner, leading it to file the present lawsuit. The plaintiff also claimed that Hormel was challenging its release because it would take attention from its own new peanut butter product that it had been planning.
Hormel’s motion to dismiss alleged lack of jurisdiction, arguing that the court does not have jurisdiction over Ohio, where Hormel is located, and failure to state a claim. The court ruled in Hormel’s favor, saying that “Smucker has failed to carry its slight burden to establish a prima facie case for this Court’s exercise of specific personal jurisdiction over Hormel” for its claims of unfair competition and interference with prospective economic advantage.
Smucker is represented by Baker & Hostetler LLP. Hormel is represented by Porter Wright Morris & Arthur LLP, Monroe Moxness Berg, and Fredrikson & Byron P.A.
