Smucker Registered the Shape of Its Sandwich in 2002. Now Trader Joe's Wants That Registration Canceled.

On August 28, 2026, Judge John R. Adams of the federal court for the Northern District of Ohio refused to throw out one part of J.M. Smucker's lawsuit against Trader Joe's over a round, crustless, crimped-edge peanut butter and jelly sandwich: the claim that Trader Joe's is diluting Smucker's famous marks. Dilution is a claim reserved for famous marks; it says a copy weakens a household-name mark, whether or not anyone is actually confused. That was the only claim Trader Joe's had asked the court to dismiss. The judge also refused to move the case to California.

At least one early write-up dated the ruling September 1 and described it as a ruling on Smucker's trade dress claims. The seven-page order is dated August 28 and is narrower than that. Smucker's infringement and trade dress claims were never part of the motion, and nothing in the order decides whether the sandwich's shape can be protected at all.

Trader Joe's answered the complaint on September 16. Then, on October 2, it filed an amended answer that added counterclaims asking the court to cancel three of Smucker's registrations. First on its list is Registration No. 2,623,577, issued in 2002 for the shape of the sandwich itself.

That registration is the subject of this piece. It was set up in December 2000. It was Exhibit A to Smucker's complaint. The judge's August order lists "the registration status of the marks" among the reasons the dilution claim can go forward. And it is now first on the list in Trader Joe's counterclaims.

Two honest caveats before going further. Surviving a motion to dismiss is not winning: at that stage a judge assumes the complaint's facts are true and asks only whether they would state a claim if proven. And counterclaims are allegations. As of October 5, 2026, the public docket showed no response from Smucker to them yet, and the court has decided none of it.

Trade dress is the legal term for the look and feel of a product — its shape, packaging, or overall appearance — as opposed to its name. A word mark protects "UNCRUSTABLES." Trade dress protects the round, crimped disc even if you never print a word on it. Different filings, examined differently, and Smucker holds both.

The registration at the center

The word mark UNCRUSTABLES (serial 75873339, registration 2473056) was filed December 17, 1999 and registered July 31, 2001 for "food, namely, sandwiches." Words are comparatively easy to register.

The interesting document is a design application filed a year later: serial 76184192, registration 2623577, filed December 21, 2000 and registered September 24, 2002. It carries no words at all. Its official description reads: "The mark consists of configuration in a round pie-like shape with distinct peripheral undulated crimping."

Read that again. Smucker didn't describe a logo. It described the sandwich. "Peripheral undulated crimping" is lawyer-speak for the wavy sealed edge. The register even classifies the drawing under the design codes for pies and sandwiches, not under any logo category.

The examiner did not say yes the first time. After an office action in May 2001, Smucker's lawyers filed a response on August 27, 2001 making the argument every product-shape registration has to make: that the shape "has acquired distinctiveness through Applicant's use." Acquired distinctiveness means shoppers have come to see a feature as a sign of one company, not just as the shape of the product. The registration issued under Section 2(f), the register's flag for a mark that got in on that kind of proof.

That 2001 response is worth reading closely, because both sides of the lawsuit are now leaning on what is in it. Smucker told the examiner:

• that since the shape's introduction in 1996, U.S. sales had "exceeded 50,000,000 sandwiches" and more than $15 million;
• that its ads, packaging and coupons carried the line "The crimped design is a trademark of The J.M. Smucker Company";
• that "there are numerous alternative designs that can be used for sandwich products";
• that its advertisements "do not tout the utilitarian advantage of the shape or appearance of the subject mark"; and
• that the shape "does not represent a simpler or cheaper method of manufacturing the sandwich products."

The same response supplied the description quoted above, which is still on the registration today.

In 2007, Smucker filed a Section 15 declaration, which, after five years of continuous use following registration, makes a registration "incontestable": closed to most challenges. It renewed the registration in 2012 and again in 2023.

Where the 2002 filing shows up in the 2026 case

Smucker sued on October 13, 2025. The complaint attached six registration certificates, and Exhibit A is the 2002 shape registration, which the complaint calls "valid" and "incontestable."

The August ruling turned on a different and harder question than the one Smucker answered in 2001. A dilution claim needs a mark that is distinctive and famous, and Trader Joe's motion went after fame only. The statute defines a famous mark as one "widely recognized by the general consuming public of the United States," and the court, quoting a Federal Circuit case, put it more plainly: a "household name." Showing that shoppers link a shape to you, which is what Smucker showed in 2001, is a lower bar than showing the shape is a household name. The 2002 registration did not decide the August ruling.

But it is in the ruling. Registration is one of the four factors the federal dilution statute lets a court weigh in deciding fame. When Judge Adams explained why Smucker had pleaded enough to go forward, he listed allegations about "the scope of advertising and publicity, the scope [of] sales, the registration status of the marks, and allegations regarding the extent of recognition of the marks."

The allegations the court quoted also describe Smucker's rights in the "configuration in a round pie-like shape with distinct peripheral undulated crimping" — word for word, the description Smucker's lawyers wrote in August 2001. Next to it: more than a billion dollars invested over 20 years, and about 1.5 billion sandwiches produced a year. In 2001, the number was 50 million sandwiches since launch.

The court left one of Trader Joe's arguments for later: that Smucker had to show fame separately for each mark. That, the judge wrote, is "better suited for summary judgment following a period of discovery."

What Trader Joe's is now arguing

Trader Joe's October 2 counterclaims ask the court to cancel three registrations: the 2002 shape registration, the 2004 picture of a round crustless sandwich (2,883,529), and the 2019 picture of the sandwich with a bite taken out (5,941,408). They rest on two theories.

The first is functionality. A feature is functional, and cannot be a trademark, if it does a job rather than just identifying who made the product. Trader Joe's says the round shape and crimped edge do a job: sealing the filling in. Its centerpiece is a patent, U.S. Patent No. 6,004,596, issued in December 1999 for a "sealed crustless sandwich," which Smucker held. According to Trader Joe's, Smucker told the patent office that the crimped edge is what seals the filling in. In 2007, a reexamination (a second look at whether a patent should have issued) canceled all of that patent's claims. The Supreme Court has said that "a utility patent is strong evidence that the features therein claimed are functional." Whether this patent claimed the same features Smucker registered as a trademark is a question the court has not reached.

The second theory is fraud on the USPTO. Trader Joe's quotes the 2001 response — the ads "do not tout the utilitarian advantage," the shape is not "a simpler or cheaper method of manufacturing" — and argues that Smucker was telling the patent side of the same agency the opposite, without disclosing those patent filings to the trademark examiner.

Incontestable status does not take either theory off the table. The statute lets anyone petition to cancel a registration "at any time" if the mark "is functional" or if "its registration was obtained fraudulently." Those are the two grounds Trader Joe's chose.

Smucker didn't file once and coast

A second design application, serial 76336653 (registration 2883529, the second registration on Trader Joe's list), filed November 14, 2001, described "a pictorial representation of a round crustless sandwich." Its path ran through a final refusal and an appeal.

The prosecution timeline shows an examiner mailed a non-final refusal on April 2, 2002, then a final refusal on June 25, 2003. An office action is the examiner's written objection; a final refusal is the examiner saying, in effect, that the argument has been heard and the answer is still no. Both letters gave the same reason: the application duplicated Smucker's own earlier shape application, and the USPTO will not issue duplicate registrations.

Smucker didn't stop there. On December 29, 2003 it filed an ex parte appeal — an appeal by one party, with no opponent, to the Trademark Trial and Appeal Board, the in-house tribunal that reviews what the USPTO will and won't register. Along with the appeal, it asked the examiner to reconsider, arguing that the two applications would not result in registrations that are exact duplicates. The appeal was received at the Board on January 15, 2004 and instituted on January 31.

Here is the part worth understanding, because it is not what "appealed and won" usually means. On that same January 31, the Board acknowledged the appeal and sent the case straight back to the examining attorney. The Board never ruled on anything. By April 19, 2004 the application that had drawn a flat "no" was approved for publication. It registered September 14, 2004, and the appeal was formally terminated the same day. The appeal kept the file alive; the approval came on the request for reconsideration and its argument that the two filings were not duplicates. (How TTAB proceedings work covers the difference.)

The first application was not a clean run either: it drew its own non-final action on May 2, 2001 and took eleven months to be approved. Product-configuration filings draw pushback as a matter of course: the shape application had to prove acquired distinctiveness before it was approved.

Someone tried to cancel these registrations before

In October 2008, Pierre Foods and Clovervale Farms filed two petitions to cancel both sandwich registrations, the 2002 shape and the 2004 picture — proceeding 92050089 and 92050090. The Board suspended both in March 2009, at Smucker's request, while a related court case played out. In June 2009 the petitioners withdrew, and the Board dismissed both petitions with prejudice, meaning the same claims cannot be brought again. The Board's docket does not say what, if anything, the parties agreed.

What the register does prove is the outcome that matters here: both registrations came through and are live today, with the 2002 registration renewed in 2012 and again in 2023. Trader Joe's is now asking a court to do what those 2008 petitions asked the Board to do.

What the register actually shows about the lawsuit

A Notice of Suit is the entry the USPTO logs on a registration after a court case involving it is reported to the agency. The tidy version of this story would be that the sandwich registrations picked up Notice of Suit entries and that cluster is the register's map of the Trader Joe's case. The register says something less tidy and more useful.

Nine live Smucker registrations carry the Notice of Suit code this year — one entry on May 26, 2026 and four more on July 10 on each. They are not a design cluster. They are the word mark UNCRUSTABLES (2001), the shape configuration (2002), a checkered square-pattern design (2003), the round-sandwich picture (2004), the SMUCKER'S logo (2017), the round crustless sandwich with a bite taken out (serial 88160150, 2019), and three more UNCRUSTABLES word and script marks from 2022 and 2024. Five of the nine issued under Section 2(f).

Three corrections fall out of that, and all of them cut against the neat version. First, these entries are not from the Trader Joe's case at all. The May 26 Notice of Suit document in the files for the 2002 shape and the 2004 picture is the court report from an earlier Smucker lawsuit, J.M. Smucker Co. v. Chubby Snacks Inc. (N.D. Ohio, No. 5:24-cv-01587), filed September 16, 2024, and that report lists exactly these nine registrations. That is why the list does not match the Trader Joe's complaint: two of the six registrations attached to that complaint carry no Notice of Suit at all, and five of the nine that do were not attached. (The one July 10 document in those two files is a report from an unrelated case in Indiana.)

Second, the 2003 registration is not a third picture of the sandwich: the USPTO codes its drawing as squares and a square-patterned background, and its packaged-lunch goods were dropped from the registration in 2009. Third, the register does not give you early warning. The Chubby Snacks report reached the register 617 days after it was filed. The court report for the Trader Joe's case was filed on November 3, 2025, and as of October 5, 2026, no Notice of Suit from that case appears on any Smucker registration. Nothing on the shape registration's file reflects Trader Joe's October 2 counterclaims, either. Notice of Suit entries are also an everyday event: 240 different registrations picked one up on that same Tuesday, May 26.

What a founder should take from this

Smucker's position rests on decisions made between 1999 and 2002, and so does Trader Joe's attack on it. The word mark was the obvious filing. The shape registration was the non-obvious one, and it is the one doing the work on both sides of the case: Smucker relies on it, and Trader Joe's wants it canceled. This is the same pattern as Buc-ee's suing over its cartoon beaver rather than its name: the valuable asset is often the thing that isn't a word.

If your product's appearance is part of why customers pick it off the shelf, protect it before the copycat arrives. Expect the examiner to push back, expect to have to prove customers already connect that shape to you, and read a refusal closely, even a final one, before treating it as the end: Smucker's picture of the sandwich was refused only as a duplicate of its own shape application, and a request for reconsideration got it approved.

Then assume that every sentence you file will be read back to you. Smucker's 2001 statements about its advertising and its manufacturing costs are quoted in a counterclaim filed 25 years later. If you also patent how a feature works, expect someone to put the patent file next to the trademark file and compare them.

For teams tracking brand risk, the practical move is the boring one: watch your own registrations and your competitors' for new events, and know which signals arrive late. Some — a cancellation petition at the Board, a competitor's confusingly similar application, an office action — show up in the USPTO record first. Others, like a Notice of Suit, arrive months after the court filing. GleanMark updates from the USPTO's daily file every business day and runs alerts on the marks you track twice a day; for court fights, read the docket too.

This analysis is based on public USPTO records, the court's August 28, 2026 order, and the parties' filings in J.M. Smucker Co. v. Trader Joe's Co., No. 5:25-cv-02181 (N.D. Ohio). Status statements are as of October 5, 2026. It is not legal advice.