Ideally, it is always essential to keep up-to-date documentation on the use and promotion of the trademark in order to prove its reputation and distinctive strength before INAPI or the courts.
On October 13, 2025, the renowned US company The J.M. Smucker Company, manufacturer of the popular “Uncrustables” sandwiches, filed a lawsuit in the Northern District Court of Ohio against the Trader Joe’s supermarket chain.
The accusation centers on the fact that the new product launched by Trader Joe’s, called “Crustless Peanut Butter & Strawberry Jam Sandwiches,” reproduces almost identically the design, packaging, and color characteristic of “Uncrustables,” creating an obvious risk of confusion among consumers.
It is important to mention that the plaintiff has been marketing this product for more than two decades and has invested significant sums in consolidating its visual identity. “Uncrustables” are peanut butter and jelly sandwiches without the crust and with sealed edges. In addition, they add in the lawsuit that this design, together with its packaging, distinctive name, and image of a sandwich with a small bite taken out of it, has become a recognized symbol in the U.S. market.
In this regard, Smucker’s maintains that Trader Joe’s launched a product that replicates these distinctive elements, which has led, as established in the accompanying evidence, to various consumers believing that the defendant’s products are related to the plaintiff’s products, thus constituting trademark infringement and unfair competition.
In addition to the above, Smucker’s is not only demanding the immediate cessation of sales of Trader Joe’s product, but also the destruction of all products on the market and compensation for damages.
In its defense, Trader Joe’s has not yet issued an official statement, although some intellectual property lawyers have stated that the plaintiff’s registered trademarks would strengthen all of its arguments. However, they believe that the defendant will defend itself by establishing that the shape of the sandwich, i.e., sealing the bread to prevent the jam from escaping, is a purely practical function and therefore excluded from protection, regardless of any similarities that may be found between the two packages.
Beyond the controversy we have referred to, the Smucker’s vs. Trader Joe’s case reopens an essential issue for any company that markets mass products in relation to the actual scope of trademark protection and packaging design.
In the United States, as in Chile, trademark law allows not only words or logos to be registered, but also the three-dimensional shape of the product or its packaging, provided that it has a distinctive character. Therefore, the importance of this case lies in taking care when marketing products, avoiding any imitation of packaging or design of trademarks that are protected.
Each situation must be analyzed specifically, but when a registered trademark is reproduced together with its characteristic packaging or presentation, we are faced with a trademark infringement. In addition, such a design may also be protected by copyright. On the other hand, if the packaging, design, advertising, and colors are also very similar or identical to those of another competitor, an action for unfair competition could be brought, especially in cases where there is an exploitation of another’s reputation with the aim of inducing confusion between one’s own goods or distinctive signs and those of a third party.
In this regard, an important aspect is the fact that such actions may not only constitute trademark infringement, but may also give rise to cases of unfair competition.
Law No. 20,169 punishes conduct that, through illegitimate means, seeks to divert customers from a competitor or take advantage of its reputation. In the case of an imitative product, there may not be a trademark infringement, but it could constitute unfair competition, in which case the plaintiff can still request that the conduct cease and seek appropriate compensation.
Along these lines, this case is also a warning not to settle for merely registering a trademark or logo. In reality, the packaging, colors, graphic layout, and even the shape of the product can be protectable assets. In fact, following the amendments introduced by the INAPI Short Law, which reformed Law No. 19,039 on Industrial Property, the possibility of registering three-dimensional trademarks with the National Institute of Industrial Property was expressly incorporated. This reform broadened the scope of trademark protection, allowing the owner to fully protect their trademark, including the packaging, shape, or configuration of the product, provided that these elements meet the distinctiveness requirements established by current legislation.
Smucker’s experience also demonstrates the importance of consistent and prolonged use of a brand in the market. In fact, the US company bases its claim on the widespread recognition and sales volume of its products, arguing that this track record reinforces their distinctive character in the market. In this context, it maintains that it is impossible to claim ignorance of the existence and notoriety of the “Uncrustables” brand, given its sustained presence and strong commercial positioning. Therefore, in our country, the use of the brand in the market is also extremely important, which is why it is always necessary to have evidence of use, such as advertising material, photographs, presence on social networks, sales figures, among others. This use and recognition will always be useful when demonstrating that the trademark is used in the domestic market and is therefore recognized by consumers, which can help us strengthen a claim for trademark infringement or unfair competition.
Another important point in this case is the need for surveillance, whether through physical or technological means. That is why both companies and individuals must have internal monitoring protocols in place, i.e., active surveillance where stores, supermarkets, social media, and services are constantly checked to detect any infringement should it occur.
This case serves as an example of why we should not settle for registering only the brand name or logo. True protection requires a comprehensive approach that covers the entire presentation of the product: name, packaging, colors, typography, shape, and graphic elements.
Likewise, it is always best to keep up-to-date documentation on the use and promotion of the brand, as this is essential for proving its reputation and distinctive strength before INAPI or the courts.
Finally, it is vital to react promptly to imitations, which requires active monitoring of our products or services.
For more information on these topics, please contact our Intellectual and Industrial Property Group:
Eugenio Gormáz | Partner | egormaz@az.cl
Carlos Lazcano | Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Associate | frodriguez@az.cl
Esteban Orhanovic | Associate | eorhanovic@az.cl
Matías Selamé | Associate | matiasselame@az.cl
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