Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 1 of 24. PageID #: 1
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`
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`AKRON DIVISION
`
`
`The J. M. Smucker Company,
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`
`Plaintiff,
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`
`
`
`
`CASE NO.: __________
`
`COMPLAINT FOR DECLARATORY
`RELIEF, TORTIOUS INTERFERENCE,
`AND UNFAIR COMPETITION
`
`
`Hormel Foods Corporation,
`
`
`vs.
`
`Defendant.
`
`
`
`
`
`
`Plaintiff, The J. M. Smucker Company (“Smucker”), by and through its attorneys, for its
`
`complaint against defendant Hormel Foods Corporation (“Hormel”) alleges as follows:
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`1.
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`Plaintiff seeks declaratory relief under 28 U.S.C. §§2201-2202 and 15 U.S.C.
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`§1125 and redress pursuant to Ohio common law for Hormel’s tortious efforts to derail
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`Smucker’s nationwide launch of its new No Added Sugar variety of JIF peanut butter (“JIF No
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`Added Sugar”) under the pretense that Smucker’s product, which uses a light blue lid and label,
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`infringes Hormel’s unregistered trade dress rights to the color teal used in connection with
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`peanut butter. No consumer would likely confuse clearly-labeled JIF peanut butter with clearly-
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`labeled SKIPPY peanut butter and no reasonable litigant would claim infringement upon these
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`facts.
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`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`AKRON DIVISION
`
`
`The J. M. Smucker Company,
`
`
`Plaintiff,
`
`
`
`
`
`CASE NO.: __________
`
`COMPLAINT FOR DECLARATORY
`RELIEF, TORTIOUS INTERFERENCE,
`AND UNFAIR COMPETITION
`
`
`Hormel Foods Corporation,
`
`
`vs.
`
`Defendant.
`
`
`
`
`
`
`Plaintiff, The J. M. Smucker Company (“Smucker”), by and through its attorneys, for its
`
`complaint against defendant Hormel Foods Corporation (“Hormel”) alleges as follows:
`
`1.
`
`Plaintiff seeks declaratory relief under 28 U.S.C. §§2201-2202 and 15 U.S.C.
`
`§1125 and redress pursuant to Ohio common law for Hormel’s tortious efforts to derail
`
`Smucker’s nationwide launch of its new No Added Sugar variety of JIF peanut butter (“JIF No
`
`Added Sugar”) under the pretense that Smucker’s product, which uses a light blue lid and label,
`
`infringes Hormel’s unregistered trade dress rights to the color teal used in connection with
`
`peanut butter. No consumer would likely confuse clearly-labeled JIF peanut butter with clearly-
`
`labeled SKIPPY peanut butter and no reasonable litigant would claim infringement upon these
`
`facts.
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`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 2 of 24. PageID #: 2
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`Parties
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`2.
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`Founded in 1897 and incorporated in 1921, Smucker is still a family-run Ohio
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`corporation with its principal place of business at One Strawberry Lane, Orrville, Ohio 44667.
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`Smucker’s origins in and association with the state of Ohio are widely known.
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`3.
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`Hormel is a Delaware corporation registered to do business in Ohio since 1936.
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`Upon information and belief, Hormel maintains multiple regular places of business in Ohio,
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`including the Hormel Foods Cincinnati Sales Office located at 4055 Executive Park Dr.,
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`Cincinnati, OH 45241, and its principal place of business is in Minnesota.
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`Jurisdiction and Venue
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`4.
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`JIF No Added Sugar, including its packaging and plans for its nationwide launch,
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`was conceived in Ohio and all marketing of the product emanates from there.
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`5.
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`In multiple emails and letters to Smucker and its counsel in Ohio, Hormel
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`purports to assert that its sales of SKIPPY creamy style peanut butter (including by necessity in
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`Ohio) have given it unregistered trade dress rights to the color teal used on a container lid that
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`preclude Smucker from its Ohio-based marketing and sale of JIF No Added Sugar.
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`6.
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`Hormel has a history of pursuing trademark cases of questionable merit, having
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`tried unsuccessfully to silence a Muppet (“Spa'am”), stop trademarks that included the term
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`“spam” for spam filtering software and, more recently, asserted that consumers would be
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`confused by the use of “black label” terminology on both bacon sold for human consumption and
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`Beggin’ dog treats.
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`7.
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`Hormel’s repetitive and escalating baseless threats and accusations have impacted
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`and threaten to derail Smucker’s nationwide launch of JIF No Added Sugar, damaging
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`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 3 of 24. PageID #: 3
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`Smucker’s investment, market momentum, and goodwill in an amount to be determined at trial
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`but in any event believed to exceed $75,000.
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`8.
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`Jurisdiction is proper in this Court because this litigation arises under federal law,
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`namely 15 U.S.C. §1052 et seq. (Lanham Act). The Court has jurisdiction over this action under
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`28 U.S.C. §1331 (federal question), 28 U.S.C. §1332 (diversity), 28 U.S.C. §1338(a)
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`(trademarks), and 28 U.S.C. §§2201-2202 (Declaratory Judgment Act). Supplemental
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`jurisdiction over the state law claims also is proper in this Court pursuant to 28 U.S.C. §1367.
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`9.
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`This Court has personal jurisdiction over Hormel because Hormel regularly does
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`or solicits business, or engages in other persistent courses of conduct, or derives substantial
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`revenue from goods used or consumed or services rendered in this state; and the causes of action
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`alleged herein arise from Hormel’s property (unregistered trade dress rights) based in Ohio and
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`its tortious interference with Smucker’s nationwide launch of JIF No Added Sugar peanut butter,
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`which it has purposefully directed at Smucker with the aim of causing tortious injury to and
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`unfairly competing with Smucker in Ohio.
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`10.
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`Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and 1391(c)
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`because, among other reasons, Hormel is subject to personal jurisdiction in this judicial district,
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`Hormel and its agents have conducted or conduct Hormel’s business in this judicial district,
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`and/or because a substantial part of the events or omissions giving rise to the claim occurred in
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`this judicial district.
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`Smucker’s JIF No Added Sugar
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`11.
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`Smucker is a leading American food manufacturer. For more than 120 years, it
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`has provided consumers with countless iconic brands, including JIF® peanut butter products –
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`which first debuted in 1956 and has been the #1 selling peanut butter brand in the United States
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`for almost forty years.
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`12.
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`Since 1968, JIF peanut butter has been sold in a jar with a label featuring three
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`adjacent rectangles in red, blue, and green (the “JIF Color Banner”).
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`13.
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`The JIF trademark is prominently displayed against the background of the JIF
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`Color Banner in uniquely symmetrical, extra-wide letters. The JIF lettering has its own cult
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`following of fans who have remarked on social media that the lettering allows the JIF trademark
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`to appear similar even when viewed upside down.
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`14.
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`Consumers are highly brand conscious when it comes to purchasing peanut butter.
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`Numerous internet blogs and postings attempt to separate consumers into two camps based on
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`their preference for #1 JIF or #2 SKIPPY.
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`15.
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`Consumers who are health conscious, like the target consumers for JIF No Added
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`Sugar, pay even closer attention to the products they are purchasing.
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`16.
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`Like its competitors, Smucker uses different lid colors and background label
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`colors to identify particular varieties of JIF peanut butter so that consumers know which variety
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`they are reaching for, including red (creamy), blue (crunchy), and brown (natural). Other nut-
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`butter products recently sold under the JIF trademark include cookies and cream and cheesecake
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`flavored hazelnut spreads using white lids, almond butter using a reddish-brown lid, and
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`chocolate-flavored nut products using purple packaging.
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`17.
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`Also, like its competitor Hormel, Smucker embosses its plastic lids with the
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`stylized design version of its word trademark, as shown below.
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`18.
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`Upon information and belief, aside from some “natural” varieties of peanut butter,
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`no other major peanut butter manufacturer offers a No Added Sugar variety. With the growing
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`popularity of the “keto” diet and concern over the amount of sugar in the typical American diet,
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`Smucker saw an opportunity to launch JIF No Added Sugar.
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`19.
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`In choosing packaging that would differentiate JIF No Added Sugar from other
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`JIF varieties, Smucker chose the color light blue, specifically Pantone Matching Scale (“PMS”)
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`number 2925 C:
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`See https://www.pantone.com/color-finder/2925-C
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`20.
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`The primary considerations driving Smucker’s choice of PMS 2925 C were the
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`existing consumer association between the color blue and sugar claims on food products, the
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`desire to leverage a lid already utilized by Smucker’s peanut butter manufacturing facilities for a
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`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 6 of 24. PageID #: 6
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`JIF product marketed in Canada, and the goal of helping consumers differentiate the product
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`from other varieties of JIF peanut butter on the shelf.
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`21.
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`In the food industry, including the market for peanut butter, manufacturers often
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`use the color blue on either the packaging or an informational banner to identify the product as
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`reduced sugar, as shown below:
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`22.
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`Smucker has used blue labels and blue on the caps for its Sugar Free fruit spreads
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`and ice cream toppings for years, as shown below.
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`23. Manufacturers in the nut-based spread market use many different shades of teal
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`and light blue that peacefully coexist , as shown below.
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`24.
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`Since at least February 2019, another major peanut butter manufacturer, Conagra,
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`has sold a creamy whipped style of peanut butter with 1/3 less sugar under its well-known
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`PETER PAN trademark in light blue packaging, as shown below.
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`25.
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`As the #3 most popular brand of peanut butter, PETER PAN is directly on the
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`heels of #2 SKIPPY.
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`26.
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`Despite this, upon information and belief, Hormel has not challenged Conagra’s
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`use of light blue on the label and lid of its 1/3 less sugar whipped creamy style of PETER PAN
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`peanut butter nor could it, because like the instant case, there is no likelihood of consumer
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`confusion.
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`Smucker’s Preparation to Launch JIF No Added Sugar
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`27.
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`Smucker’s creative marketing of the JIF brand has received widespread, positive
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`media attention during the past year. ADWEEK recognized Smucker’s “That Jif’ing Good”
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`Bunker theatrical-style ad as one of the top 25 ads of 2019. Smucker’s release of limited edition
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`of GIF/JIF labeled peanut butter went viral in February 2020 as it cleverly tapped into the long-
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`standing debate over the proper pronunciation of the .gif file extension. See Feb. 25, 2020 FAST
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`COMPANY, Jif Trolls the World by Rebranding as Gif with a Hard G, available at
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`https://www.fastcompany.com/90466800/jif-trolls-the-world-by-rebranding-as-gif-with-a-hard-
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`g.
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`28.
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`Smucker had planned to capitalize on this brand momentum and positive media
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`association by launching JIF No Added Sugar in FY21.
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`29.
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`During a February17-21, 2020 conference, Smucker announced to the consumer
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`products industry its planned launch JIF No Added Sugar in fiscal year 2021, releasing the
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`following graphic.
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`30.
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`In early March, in preparation for a June launch, Smucker produced around
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`10,000 cases of JIF No Added Sugar in 15.5oz and 33.5oz sizes.
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`Hormel’s Baseless Assertions of Infringement
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`31.
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`On March 17, 2020, Hormel’s in-house counsel sent a letter by email to
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`Smucker’s Ohio-based Director and Managing Counsel for Trademarks claiming to own “teal in
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`the ray design on the labels” of SKIPPY peanut butter and expressing concern over Smucker’s
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`planned launch of JIF No Added Sugar based on the above graphic. A true and correct copy of
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`the letter is attached hereto as Exhibit 1.
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`32.
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`Smucker responded to Hormel on April 3, 2020, explaining that Smucker’s use of
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`light blue (not teal) was consistent with industry use of a broad collection of shades of blue on
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`peanut butter and other nut butters and that Smucker had chosen light blue in part to capitalize on
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`the association between light blue and products that made claims about reduced or no sugar. A
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`true and correct copy of the email is attached hereto as Exhibit 2.
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`33.
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`Smucker has no need or desire to copy any aspect of the SKIPPY packaging
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`because the JIF brand has been – by far – the most popular peanut butter brand in America for
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`decades.
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`34.
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`At the time Smucker adopted PMS 2925 C for JIF No Added Sugar peanut butter,
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`Hormel made no public claims to exclusive ownership of the color teal in connection with nut-
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`based spreads and teal was just one of the many colors used by Hormel on SKIPPY lids and
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`labels.
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`35.
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`Like most peanut butter manufacturers, Hormel uses a variety of colored lids to
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`sell its SKIPPY peanut butter, and the red lettering of SKIPPY on a white background are the
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`only consistent color elements across the brand.
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`36.
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`Teal, a bluish green used by Hormel to designate certain varieties of its creamy
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`style peanut butter, is one of many colors used by Hormel to distinguish between the styles and
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`varieties of SKIPPY peanut butter.
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`37.
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`Hormel uses color to identify different styles and varieties of its SKIPPY peanut
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`butter as shown below.
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`38.
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`As shown above, the color teal does not appear anywhere on Hormel’s SKIPPY®
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`ROASTED HONEY NUT™ Creamy Peanut Butter, which features an orange lid and two shades
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`of orange in its ray design. Nor does the color teal appear anywhere on SKIPPY® SUPER
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`CHUNK® Peanut Butter, which features a royal blue lid and two shades of blue in its ray design.
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`39.
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`On its SKIPPY NATURAL line of products, shown below, Hormel uses a brown
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`lid to identify the product as “natural.” The ray design features two shades of tan, except for the
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`honey-flavored variety which features an orange and gold ray design. The two creamy style
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`varieties use only a small teal banner with the word “creamy” and a teal border around the
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`SKIPPY stylized logo. The chunky style variety uses a royal blue banner and a royal blue border
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`around the SKIPPY stylized logo and does not feature the teal color at all.
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`40.
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`Consumers are readily able to determine the source of Hormel’s peanut butter
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`products that do not feature the color teal by looking to the house mark SKIPPY.
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`41.
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`Recently, Hormel updated its website with a teaser banner indicating that it
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`intends to launch a new Skippy peanut butter variety in June.
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`42.
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`Given Smucker’s superior market position and brand momentum in the media, it
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`is highly likely, and upon information and belief Hormel believed, that any nationwide launch by
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`Smucker of JIF No Added Sugar in the next several months would eclipse Hormel’s June
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`announcement.
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`43.
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`Hormel cannot reasonably believe that Smucker’s use of a PMS 2925 C colored
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`lid and/or label on No Added Sugar JIF creates a likelihood of confusion.
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`44.
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`The parties’ two colors are readily distinguishable by consumers who encounter
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`the products. Upon information and belief, Hormel’s teal is a dark greenish shad in a different
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`color family and readily contrasts with Smucker’s light blue PMS 2925 C.
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`45.
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`SKIPPY and JIF products are typically clustered with other varieties of
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`(respectively) SKIPPY and JIF peanut butters on well-lit grocery shelves. By displaying
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`multiple styles (e.g., creamy and crunchy) of each brand together, by brand, the presentation is
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`dominated by the words and stylized designs of the labels, not lid colors.
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`46.
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`There is no reasonable likelihood of consumer confusion because the lid and label
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`backgrounds for creamy style SKIPPY and JIF No Added Sugar are at best tertiary signifiers
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`behind the parties’ well-known word marks and readily distinguishable label designs. The marks
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`JIF and SKIPPY are both well-known house brands of peanut butter. The label designs for JIF
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`and SKIPPY could not be more different. JIF utilizes its well-known JIF Color Banner design
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`with the JIF name in white with black shadowing, the initial letter capitalized, and the remaining
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`letters in small case. The font itself is rounded, wide, tall, and bold. By contrast, the word
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`SKIPPY is in red all caps with a narrow font, and the letters, the rectangle the letters appear on,
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`and the ray design behind it are all drawn in a way to make it look as though the words and
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`design are retreating into the distance.
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`47.
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`The difference in color between SKIPPY creamy and JIF No Added Sugar is
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`obvious to consumers shopping online:
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`48.
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`Hormel’s teal creamy style SKIPPY is stocked by stores in close proximity to
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`other peanut butters and nut butters that prominently use teal and turquoise in their packaging, as
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`shown in the below photo of a grocery shelf in Stark County, Ohio on April 3, 2020 (the empty
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`spaces show where the more popular JIF varieties were sold out during the early days of the
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`pandemic).
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`49.
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`To meet unprecedented consumer demand triggered by the COVID-19 virus and
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`emergency sheltering precautions enacted across the country, at the start of April 2020, Smucker
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`began shipping the approximately 10,000 pre-launch cases, which were stocked in grocery stores
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`located primarily in Michigan and Ohio.
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`50.
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`On April 9, 2020, Smucker received a letter from Hormel’s outside counsel that
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`failed to address the substantive issues raised in Smucker’s April 3 email, shifted Hormel’s
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`alleged trade dress rights to the teal lid by itself, falsely accused Smucker of deliberately using
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`the color teal to copy Hormel’s trade dress, and demanded that Smucker confirm that it had not
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`yet launched JIF No Added Sugar. A true and correct copy of the letter is attached hereto as
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`Exhibit 3.
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`51.
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`Smucker responded to Hormel in an April 24, 2020 letter, correcting Hormel’s
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`reference to PMS 2925 C as “teal,” demonstrating to Hormel that lid colors were used in a
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`functional manner in the industry to identify varieties of peanut butter, and questioning how
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`consumers could be confused given the prominent use on the parties’ respective products of the
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`well-known SKIPPY trademark and the even better-known JIF trademark. A true and correct
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`copy of the letter is attached hereto as Exhibit 4.
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`52.
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`After nearly a month of silence, Hormel responded to Smucker’s letter on May
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`19, 2020, again warning Smucker against launching its new JIF No Added Sugar. A true and
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`correct copy of the letter is attached hereto as Exhibit 5.
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`53.
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`Hormel’s May 19, 2020 letter doubled down on the accusatory tones of its earlier
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`letter, used distorted images of the parties’ respective products to make the color appear more
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`similar, demanded that Smucker respond within a handful of business days, and threatened that
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`Smucker’s nationwide launch of JIF No Added Sugar would constitute willful infringement of
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`Hormel’s alleged trade dress rights.
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`The Hormel Trade Dress Applications
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`54.
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`It appears that, instead of replying to Smucker’s April 24, 2020 letter, Hormel
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`first attempted to shore up its position by filing two new trademark applications with the United
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`States Patent and Trademark Office (“USPTO”) on April 30, 2020 (collectively, the “Hormel
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`Applications”).
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`55.
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`Hormel’s first application, U.S. Serial No. 88/893,662, claims “a light teal and
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`dark teal ray pattern radiating outward with an irregular-shaped void obscuring a portion of the
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`pattern, together with the color dark teal applied to the lid of the jar” as shown below:
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`56.
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`Hormel’s second application, U.S. Serial No. 88/895,128, claims more broadly
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`“the color teal as applied to the lid of the container” as shown below:
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`57.
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`Upon information and belief, Hormel filed the two overlapping applications
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`because it knows that it will not be allowed to register the color teal or as it states inconsistently,
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`a dark color teal, as applied to the container lid due to long-existing competing uses of shades of
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`blue colors in the industry, lack of recognition of the color as a source identifier, Hormel’s use of
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`many colors other than teal (e.g., royal blue, brown, orange) for the ray design and lids, and
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`Hormel’s use of the color teal in a functional manner to identify its creamy style of peanut butter
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`from the other peanut butter varieties sold by Hormel.
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`58.
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`Upon information and belief, it will take the USPTO examiner a year or more to
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`consider the Hormel Applications.
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`59.
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`If Hormel convinces the USPTO examiner to allow the Hormel Applications to
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`register, Smucker would then be entitled to challenge the applications by filing a proceeding with
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`the Trademark Trial and Appeal Board (“TTAB”), which could take at least another year or two.
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`60.
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`Between now and Smucker’s opportunity to challenge the Hormel Applications
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`before the TTAB, Smucker would exist in a state of uncertainty with respect to the scope of
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`Hormel’s alleged trade dress rights in and to the color teal.
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`61.
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`Smucker is in imminent danger of losing the momentum created by its pre-launch
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`marketing activities if it delays the national launch of JIF No Added Sugar until after the USPTO
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`and TTAB consider the Hormel Applications.
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`62.
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`Upon information and belief, Hormel is using its baseless claims that JIF No
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`Added Sugar infringes Hormel’s alleged trade dress rights to interfere with Smucker’s plans to
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`launch its new JIF No Added Sugar product nationwide not because Hormel sincerely fears
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`consumer confusion, but because it fears that Smucker’s nationwide launch of No Sugar JIF will
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`take media attention and market momentum away from Hormel’s new SKIPPY product launch
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`in June.
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`63.
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`Smucker is entitled to launch its JIF No Added Sugar with PMS 2925 C
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`packaging without the cloud of Hormel’s baseless accusations and its implicit threat to interfere
`
`with the launch through the filing of a lawsuit that would quickly shift Smucker’s positive
`
`momentum in the media into the defensive posture of an (unjustly) accused trademark infringer.
`
`64.
`
`Smucker has not experienced any actual consumer confusion over its JIF No
`
`Added Sugar; nor does Hormel identify any actual consumer confusion with its SKIPPY
`
`products.
`
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`- 18 -
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`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 19 of 24. PageID #: 19
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`
`
`Claim 1
`
`Declaration of No Trade Dress Rights
`
`65.
`
`Smucker reasserts and realleges all of the allegations contained in the foregoing
`
`paragraphs as though the same were fully set forth herein.
`
`66.
`
`Hormel has no enforceable trade dress rights in and to the color teal on peanut
`
`butter because consumers do not recognize the color as an independent signifier of the source of
`
`Hormel’s peanut butter products for a number of reasons, including due to Hormel’s use of
`
`multiple colors in a functional manner to identify the styles and varieties of peanut butter it sells.
`
`67.
`
`Hormel has threatened Smucker against launching its JIF No Added Sugar
`
`nationwide even though Hormel does not possess the trade dress rights it purports to enforce.
`
`68.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`69.
`
`Absent a declaration from the Court that the asserted trade dress is not
`
`protectable, Smucker will continue to suffer from Hormel’s anticompetitive attempts to use
`
`baseless allegations of trade dress infringement to derail Smucker’s imminent nationwide launch
`
`of JIF No Added Sugar.
`
`Claim 2
`
`Declaration of Non-Infringement
`
`70.
`
`Smucker reasserts and realleges all of the allegations contained in the foregoing
`
`paragraphs as though the same were fully set forth herein.
`
`71.
`
`There is no likelihood of confusion, mistake, or deception with respect to the
`
`origin of the parties’ respective goods, or a likelihood that Smucker’s use of PMS 2925 C will
`
`
`
`- 19 -
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`
`
`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 20 of 24. PageID #: 20
`
`
`
`confuse, mislead, or deceive members of the public into believing that Smucker’s JIF products
`
`are in any way connected to or affiliated with Hormel’s SKIPPY peanut butter products.
`
`72.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`73.
`
`Absent a declaration from the Court that Smucker’s use of PMS 2925 C on JIF
`
`No Added Sugar does not infringe any trade dress rights owned by Hormel in the color teal,
`
`Smucker will continue to suffer from Hormel’s anticompetitive attempts to use baseless
`
`allegations of trade dress infringement to derail Smucker’s imminent nationwide launch of JIF
`
`No Added Sugar.
`
`Claim 3
`
`Tortious Interference with Prospective Economic Advantage under Ohio Common Law
`
`74.
`
`Smucker reasserts and realleges all of the allegations contained in the foregoing
`
`paragraphs as though the same were fully set forth herein.
`
`75.
`
`Hormel has no enforceable trade dress rights in and to the color teal on peanut
`
`butter because consumers do not recognize the color as an independent signifier of the source of
`
`Hormel’s products, including due to Hormel’s use of multiple colors in a functional manner to
`
`identify the styles and varieties of peanut butter it sells.
`
`76.
`
`There is no likelihood of confusion, mistake, or deception with respect to the
`
`origin of the parties’ respective goods, or that Smucker’s use of PMS 2925 C will confuse,
`
`mislead, or deceive members of the public into believing that Smucker’s JIF peanut butter
`
`products are in any way connected to or affiliated with Hormel’s SKIPPY peanut butter
`
`products.
`
`
`
`- 20 -
`
`
`
`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 21 of 24. PageID #: 21
`
`
`
`77.
`
`No reasonable litigant would realistically expect to succeed in a trade dress
`
`infringement claim based on the facts available to Hormel.
`
`78.
`
`Upon information and belief, Hormel has leveraged baseless accusations of trade
`
`dress infringement to interfere with Smucker’s nationwide launch of JIF No Added Sugar in an
`
`attempt to secure media attention for its own June product launch.
`
`79.
`
`Hormel has no legitimate justification for its baseless accusations of trade dress
`
`infringement.
`
`80.
`
`As a proximate and direct result of Hormel’s baseless accusations of trade dress
`
`infringement, Hormel has impeded and/or is likely to impede Smucker’s nationwide launch of
`
`JIF No Added Sugar.
`
`81.
`
`82.
`
`The actions of Hormel, if not enjoined, will continue.
`
`Smucker has suffered and continues to suffer damages in an amount to be proven
`
`at trial consisting of, among other things, the threatened diminution in the value of and goodwill
`
`associated with the JIF mark, loss of marketing momentum and investment, and other injury to
`
`Smucker’s business.
`
`83.
`
`On information and belief, Hormel’s actions described above were and continue
`
`to be deliberate and malicious.
`
`Claim 4
`
`Common Law Unfair Competition
`
`84.
`
`Smucker reasserts and realleges all of the allegations contained in the foregoing
`
`paragraphs as though the same were fully set forth herein.
`
`85.
`
`Hormel has no enforceable trade dress rights in and to the color teal on peanut
`
`butter because consumers do not recognize the color as an independent signifier of the source of
`
`
`
`- 21 -
`
`
`
`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 22 of 24. PageID #: 22
`
`
`
`Hormel’s products, including due to Hormel’s use of multiple colors in a functional manner to
`
`identify the styles and varieties of peanut butter it sells.
`
`86.
`
`There is no likelihood of confusion, mistake, or deception with respect to the
`
`origin of the parties’ respective goods, or that Smucker’s use of PMS 2925 C will confuse,
`
`mislead, or deceive members of the public into believing that Smucker’s JIF peanut butter
`
`products are in any way connected to or affiliated with Hormel’s SKIPPY peanut butter
`
`products.
`
`87.
`
`Upon information and belief, Hormel has leveraged baseless accusations of trade
`
`dress infringement to interfere with Smucker’s nationwide launch of JIF No Added Sugar in an
`
`attempt to secure media attention for its own June product launch.
`
`88.
`
`Hormel has no legitimate justification for its baseless accusations of trade dress
`
`infringement.
`
`89.
`
`As a proximate and direct result of Hormel’s baseless accusations of trade dress
`
`infringement, Hormel has impeded and/or is likely to impede Smucker’s nationwide launch of
`
`JIF No Added Sugar.
`
`90.
`
`91.
`
`The actions of Hormel, if not enjoined, will continue.
`
`Smucker has suffered and continues to suffer damages in an amount to be proven
`
`at trial consisting of, among other things, the threatened diminution in the value of and goodwill
`
`associated with the JIF mark, loss of marketing momentum and investment, and other injury to
`
`Smucker’s business.
`
`92.
`
`On information and belief, Hormel’s actions described above were and continue
`
`to be deliberate and malicious.
`
`
`
`- 22 -
`
`
`
`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 23 of 24. PageID #: 23
`
`
`
`WHEREFORE, Smucker hereby prays that the Court enter judgment against Defendant
`
`Hormel as follows:
`
`a. That the Court enter a declaration that Defendant Hormel does not own the broad
`
`trade dress rights in the color blue, teal or dark teal it has attempted to assert
`
`against Smucker;
`
`b. That the Court enter a declaration that there is no likelihood of confusion,
`
`mistake, or deception with respect to the origin of the parties’ respective goods, or
`
`that Smucker’s use of PMS 2925 C will confuse, mislead, or deceive members of
`
`the public into believing that Smucker’s JIF peanut butter products are in any way
`
`connected to or affiliated with Defendant Hormel’s SKIPPY peanut butter
`
`products;
`
`c. That Defendant Hormel be adjudged to have tortiously interfered with Smucker’s
`
`prospective business relationships under Ohio common law;
`
`d. That Defendant Hormel be adjudged to have unfairly competed with Smucker;
`
`e. That Smucker be awarded damages in an amount sufficient to compensate it for
`
`the damage caused by Defendant Hormel’s tortious interference and unfair
`
`competition;
`
`f. That Smucker be granted punitive damages for Defendant Hormel’s malicious
`
`acts;
`
`g. That Smucker be granted pre-judgment and post-judgment interest;
`
`h. That Smucker be granted costs associated with the prosecution of this action; and
`
`i. That Smucker be granted such further relief as the Court may deem just.
`
`
`
`
`
`
`
`- 23 -
`
`
`
`Case: 5:20-cv-01132-SL Doc #: 1 Filed: 05/26/20 24 of 24. PageID #: 24
`
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff Smucker hereby demands a trial by jury on all triable issues of fact.
`
`Dated: May 26, 2020
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/Christina J. Moser
`Deborah A. Wilcox (0038770)
`Email: dwilcox@bakerlaw.com
`Christina J. Moser (0074817)
`Email: cmoser@bakerlaw.com
`BAKER & HOSTETLER LLP
`Key Tower
`127 Public Square, Suite 2000
`Cleveland, OH 44114-1214
`Telephone: 216.621.0200
`Facsimile: 216.696.0740
`
`Attorneys for Plaintiff
`The J. M. Smucker Company
`
`- 24 -
`
`
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