A sandwich startup in the Midwest has found itself in a sticky situation — much stickier than the jelly that sits between the slices of bread it offers.
Prepackaged sandwich startup Gallant Tiger, whose products are currently sold in the Minneapolis area where the company is based, was sent a cease-and-desist letter from J.M. Smucker Company on Nov. 21, as first reported by the Star Tribune. Gallant Tiger, which sells round crustless sandwiches with flavors like “blueberry bourbon sage jam and peanut butter” and “apple chili jelly and almond butter,” are being accused by Smucker's of trademark infringement over the shape and packaging of its offerings.
In addition to fruit preserves, peanut butter, syrups and ice cream toppings, the 125-year-old J.M. Smucker Company is the maker of Uncrustables, sealed and crust-free sandwiches found in the freezer aisle of most grocery retailers. Smucker's is arguing that both the shape and the packaging of Gallant Tiger's products look too much like that of Uncrustables.
In Smucker’s cease-and-desist letter to Gallant Tiger, obtained by TODAY.com, lawyers for Smucker's say the company has produced Uncrustables for more than 20 years, noting annual sales of $500 million and saying it produces nearly 1 billion sandwiches annually.
“It has come to our attention that Gallant Tiger, LLC recently launched a new prepackaged round crustless sandwich,” reads the cease-and-desist letter. “We have no issue with others in the marketplace selling prepackaged PB&J sandwiches, but Gallant Tiger’s use of the identical round crustless design and images of a round crustless sandwich with a bite taken out creates a likelihood of consumer confusion and causes harm to our goodwill in our trademark.”
The letter goes on to say that Gallant's new products are “misleading consumers by causing them to believe that Gallant Tiger’s products are authorized by, endorsed by or somehow affiliated with Smucker when they are not.” The letter also alleges Gallant Tiger’s use of a round crustless design also dilutes the distinctive nature of Smucker’s trademark, of which it says it owns several pertaining to the shape and creation of the round crustless sandwich it produces.
“This conduct violates, dilutes and infringes upon our rights in and to the Trademark under the Lanham Act and applicable state law,” the letter reads. “We trust that you understand we must protect our valuable rights in our intellectual property.”
Gallant Tiger's owner and chef Kamal Mohamed, who also owns Minneapolis restaurant STEPCHLD, says starting this company was deeply rooted in his childhood, growing up in the Minneapolis area with his parents, who are both Ethiopian immigrants.
“In middle school, those of us who grew up on free and reduced lunch would get PB&J sandwiches if the school didn’t have enough hot meals or we were behind on our payments,” Mohamed tells TODAY.com. “I didn’t mind because I personally preferred the PB&J sandwiches.”
Mohamed says he eventually became a restaurateur and opened up a few successful restaurants in the Minneapolis area, but still craved and dreamt about what he calls "unassuming and timeless" sandwiches.
“It’s the swiss army knife of food — a perfect pre-workout, efficient to carry between meetings, on a road trip, hike, beach day, you name it,” he says. “But, in terms of quality ingredients and creativity in flavors, I didn’t see what I wanted in the market. So we decided to fill that gap.”
Launched publicly on Oct. 10 in Minneapolis coffee shops, Gallant Tiger is a snack company focused on “clean and creative ingredients,” according its website. “We took the classic, crustless nut butter sandwich from your childhood and reimagined it with organic ingredients and bold flavors."
“We’re currently in one local market but our plans are to expand,” Mohamed says. “We raised a small seed round with family and friends and are currently in the process of raising capital to increase our production capabilities for a national rollout.”
Blocking those plans to expand, he says, is the recent cease-and-desist he received from Smucker's. So, in response, Culhane Meadows, who is representing Gallant Tiger in the matter, responded to the cease-and-desist, pointing out in a Dec. 8 letter (also obtained by TODAY.com) that Smucker’s patent has recently run out.
“Your letter mentioned that because of your exclusive use of the round crustless sandwich design, you have developed significant goodwill among consumers who associate the design exclusively with Smucker,” reads the letter written by Angela Washelesky, a lawyer for Culhane Meadows. “That Smucker was able to do this for 20 years is entirely because of the utility patent 6,004,596 which only recently expired."
Washelesky writes that the heart of the patent is “a method of making a sealed crustless sandwich which can be stored for extended periods of time without an inner filling seeping into the bread portion,” and since Smucker's patent has expired, it can’t claim this attribute as a trademark, citing a legal ruling from 2000 as precedent.
“There are not very many shapes that a sandwich can be made into,” Washelesky writes, adding that for Smucker's to claim a round shape as exclusively doesn’t leave much room for competition. “Further, there is an aesthetic aspect to a round sandwich. Most plates are round, and a round sandwich on a round plate is more aesthetically pleasing than a square sandwich on a round plate. Thus, it is our conclusion that a round shape for a crustless sandwich is functional because there are a dearth of viable alternatives.”
Washelesky also writes in Gallant Tiger’s response that the packaging and advertising showing a bite taken out of its crustless round sandwich is the most feasible way to show what is in a sandwich.
“It is functionally necessary to show a bite taken out of a food product which consists of an outside and an inside, so that consumers can view the inside of the product,” Washelesky writes. “Since the product is meant to be bitten into with teeth, it is natural to show a bite mark instead of, say, a cut made by a knife. Showing a bite taken out of a food item meant to be bitten is a common usage and therefore not exclusive to Smucker.”
“Gallant Tiger’s packaging looks nothing remotely like yours,” Washelesky continues in the letter. “In addition, my client’s ingredients are of a premium quality, causing their products to be twice as expensive as the Smucker products, so consumers are sure to notice the difference and not be confused into inadvertently buying the Gallant Tiger product.”
Washelesky concludes her letter by informing Smucker that Gallant is ready to defend his position in the world of round crustless sandwiches. “We trust that Smucker is not willing to see a court declare the Smucker trade dress trademarks invalid, which we are quite confident would be the outcome if Smucker were to press this matter,” Washelesky writes.
When reached for comment, a Smucker's spokesperson issued the following statement to TODAY.com:
To confirm, in our cease and desist, we do not reference patents, rather three trademarks we have attained. As a responsible trademark owner, we regularly monitor the marketplace for any infringements. In this instance, we are enforcing our federally registered trademarks which protect the exclusivity of the Uncrustables design and round shape. Through the hard work of our employees and with significant investment, we have been able to grow the Uncrustables brand and attain a leadership position, making the shape of the product instantly recognizable to consumers.
Please know we are not intending to restrict competition, rather we are simply focused on protecting the unique trademark design that has become synonymous with the brand and avoid instances of deliberate copycat products in the marketplace. We continue to encourage discussion with the Gallant Tiger team and are hopeful they will engage us so that we can reach an amicable resolution.
For his part, Mohamed hopes that this dispute will be resolved amicably as well, albeit in a different way.
“I believe Jerome Monroe Smucker (the founder of Smucker's) who was a farmer that started by selling apple butter from the back of a wagon would be disappointed,” Mohamed says. “Smucker's can do better. In their position in the market, they should be stewards of forward-thinking, not killers of it.”
“We believe a reasonable consumer can tell the difference between our products, just like they can with Justin’s vs. Reese’s peanut butter cups, or Annie’s vs. Kraft Mac & Cheese,” Mohamed adds. “One can tell the difference between Domino’s and Pizza Hut even though they’re both circular food products. So what are we really talking about here?”
