How to Avoid Getting Sued

In this episode of Naming in the AI Age, Mike Carr and Ashley Elliott discuss how to reduce legal risk in brand naming, using the Smucker’s vs. Trader Joe’s case as an example. They contrast descriptive names like Trader Joe’s Crustless Peanut Butter and Strawberry Jam Sandwiches - clear but hard to protect - with distinctive names like Smucker’s Uncrustables, which are unique and ownable.

Mike and Ashley explain that naming strategy should align with business goals: private labels can lean on descriptive names, while national brands need distinctive ones to stand out. They outline a five-step vetting process—from knockout searches to attorney review—and stress that investing in a thorough clearance process builds both legal protection and lasting brand equity.

Resources:

Smucker's sued Trader Joe's

USPTO

Cherubs

Itzakadoozie

Chapters

• 0:00 Welcome to Naming in the AI Age
• 0:22 Smucker’s vs. Trader Joe’s Lawsuit Breakdown
• 0:45 Are the Names Really That Similar?
• 1:54 Descriptive vs. Distinctive: The Trademark Trade-Off
• 3:14 Trader Joe’s Brand Strategy Explained
• 4:04 Itzakadoozie: A Lesson in Creative Naming
• 5:21 The 5-Step Name Vetting Process
• 10:15 Key Takeaways: How to Protect Your Brand

Transcript

Ashley Elliott (00:08):

Well, hello and welcome to naming in the AI Age. Today we're going to tackle a big topic how not to get sued. That is how should you approach name development and trademark research to reduce your legal risk.

Mike Carr (00:22):

So a perfect example, just hit the news. You might've seen the Wall Street Journal article this week about Smucker's lawsuit against Trader Joe's. If you missed it, we'll include the link in the show notes. Anyway, trader Joe's has started selling a new line of frozen peanut butter and jelly snacks called Crustless Peanut butter and Strawberry Jam sandwiches.

Ashley Elliott (00:45):

So Smucker's has been selling its own similar sandwiches for decades, calling them Uncrustables. So Smucker's is claiming that Trader Joe's is copycatting them and really alleging customer confusion from the similar name, the similar packaging. So they're going to ask for monetary damages and for Trader Joe's to destroy its stock.

Mike Carr (01:06):

So what do you think? Would you be confused walking into a Trader Joe's down the street and seeing a box of Crustless peanut butter and Strawberry Jam sandwiches in the freezer thinking it was Smucker's Uncrustables?

Ashley Elliott (01:21):

I mean, honestly, I don't really think so. I feel like Trader Joe's is famous for selling its own private label brands. People don't really typically shop there looking for the big national brands like a Smucker's Uncrustables plus. The names really aren't that similar. If you think about it, Uncrustables is a single coined word. If you look at the package, trader Joe's name is long and is more like an entire descriptive sentence. If I were to tell my husband to get one of these, it would be way easier to tell him to get Uncrustables, let's just say that, versus Crustless peanut butter and Strawberry Jam sandwiches.

Mike Carr (01:54):

Yeah, I agree. This brings up another critical point. Trader Joe's, I think seems to be using their name as a descriptive phrase, not as a brand. I even went out and I checked the USPTO trademark database and I didn't find any application for their name. And even if you look at their package, which we have up on the screen now, you don't see that little tm, that little trademarks symbol anywhere near the phrase, it appears they aren't even claiming trademark rights in the name.

Ashley Elliott (02:23):

Well, I feel like that's the classic trade-off, though. You almost always give up that strong legal protection if you have this feature oriented descriptive style name. If you think about when name Stormers named the cherry sized grape tomato for Desert Glory decades ago, they didn't suggest something descriptive like un cherries. Instead we suggested cherubs. And really after the small, plump, rosy cheeks celestial being cherubs wasn't descriptive at all and it still, and that's what really provided Desert Glory with that stronger trademark protection since then.

Mike Carr (02:56):

Yeah, so while a more brand like name like Cherubs often requires more storytelling and time to establish, it usually does provide much stronger legal protection down the road. So why do you think Trader Joe's went with such a descriptive name?

Ashley Elliott (03:14):

I feel like it's all about brand strategy. So you think of Trader Joe's, it's a private label house. They really don't invest heavily in building all of their individual product brands. They're stored. Trader Joe's is the brand. So an easy to understand, more descriptive style name that just conveys the product is probably what works best for them. I would say, for example, at another grocery store, you'll see the lifeway brand of Keffer with lifeway displayed prominently on the bottle. And then you'll have the little Circle R symbol for the registered trademark. And then you think of Trader Joe's, it has a similar bottle of Trader Joe's at the top, but the dominant text is just low fat keefer. It has no trademark symbol. So the Trader Joe's is the brand and the other part is just the descriptor. It's not the actual brand.

Mike Carr (04:04):

So the key takeaway, especially if you're a national brand worried about private label competition, is to go with a more distinctive ownable brand like name. And lemme give you an example. When Nestle was bringing a very long large Popsicle to the United States years ago from South America, they asked us to come up with a name that would catch the imagination of kids. Now, we didn't suggest names using overused difficult to own roots like maybe Megale or Super Big Popsicle Boy, those are real catchy. Those would've allowed competitors to launch similar private label names like maybe Grand Sickle instead of Megale or Supersize Popsicle. Instead, we came up with a very different kind of name. It's a K dozi. It was less descriptive but still suggestive, more engaging and far more protectable. It gave Nestle a distinctive brand that has served them well for decades.

Ashley Elliott (05:11):

Based on that, what should you do to make sure that a name you're considering is actually legally available other than just coming up with something that feels more coined and less descriptive?

Mike Carr (05:21):

Well, you might start with a quick Google search, then I'd probably go out to the USPTO and do a trademark search, but it is a multi-step process.

(05:31):

So let's break down a solid vetting plan into a five-step process that you

(05:37):

Can follow.

Ashley Elliott (05:38):

Okay, so lay it on me. What is step one?

Mike Carr (05:42):

So that's often called a knockout search, and this is sort of your first quick pass. So just Google the name and is there someone else in your industry already using it? Check social media handles and maybe.com domain availability. If it's obviously taken for basically the same thing you're selling or for the same type of company that you're doing, you can stop right there and you can save yourself a lot of trouble going any further.

Ashley Elliott (06:11):

Oh yeah, the top layer of the funnel of the filter, I guess you could say. Okay. What's next?

Mike Carr (06:16):

Well, now it is a little bit more detailed. Federal trademark search. And this is really crucial. You need to search the US Patent and Trademark office. USPTO is what it's often called database, and we'll include a link in the show notes you can get right there, but it's free, it doesn't cost you anything. And you're looking for registered trademarks and pending applications that are confusingly similar to your name.

Ashley Elliott (06:42):

Okay. You said confusingly similar. What does that exactly mean?

Mike Carr (06:47):

It doesn't just mean identical spellings. I think this is what often messes folks up that have never done this before. It actually includes similar sounding names, similar looking names or names with a similar meaning in the same category of goods or services. And this is where it starts to get a bit tricky.

Ashley Elliott (07:06):

Yeah, that sounds pretty complex. I'm not sure I could exactly follow all of that. What does that lead to when you consider all of the overlap?

Mike Carr (07:14):

A federal registration isn't the only way to have trademark rights. And so I think what might simplify the thing is if a company's been using a name in commerce, if you've been using your name in commerce and you've never bothered to file it as a trademark, you could still have common law usage rights, legal rights in using that name, but only in the geographic area in which you've been operating. So doing that more advanced Google and AI search checking industry directories, looking at state level registries is important.

Ashley Elliott (07:47):

So you're telling me if I go to the USPTO and it feels like it's clear, that still doesn't mean that it's actually clear.

Mike Carr (07:54):

Yeah, that's

(07:54):

Right. You really need in the final steps to do what's most important and that's to hire a professional search firm.

(08:03):

So even though you can do a lot of this yourself with ai, and trust me, we use AI all the time and it makes mistakes and it misses things. So you don't want to just rely upon AI and you don't want to just rely upon Google. And even if you go to the USPTO database and you do it yourself, unless you do this a lot like every day, you're probably going to miss a few things that could really be important. So for a few hundred dollars, you can hire a specialized firm to conduct a comprehensive search, and they have access to databases that the attorneys use and expertise that cover not just federal registrations, but also state trademark registrations, which are not included in the USPTO database. And of course they'll look for common law usage far more thoroughly than you can. And this is something we do for all of our naming clients and we do it ourselves. We don't outsource it to another firm.

Ashley Elliott (08:55):

I feel like that's been great for you to have 40 years in this experience in this part of the industry. So what would you say the last step is? Step five?

Mike Carr (09:04):

Well, finally, you really need to call a trademark attorney, an IP attorney. And this is, I think, really important because they're not going to just run the final deep search. And a deep search is probably more thorough than anything you've done so far. Even a professional searching firm might've done, but they're going to help you interpret it. They will analyze the professional search report and they'll give you a formal written opinion letter on your level of risk. Now, I've never seen a name that's zero risk. And even if it looks very low risk, you could still get sued. But that level of risk, that assessment of risk is just super important. So skipping this step thinking, oh, I don't need a trademark attorney. I can save a few hundred bucks, is like going and doing your own medical diagnosis. You've got all these symptoms, so you go out on the internet and you search this and that, and you might be right on what's wrong with you,

(09:54):

But the cost of being wrong when you think about your own medical diagnosis can be catastrophic.

Ashley Elliott (10:02):

So note to self, don't trust WebMD, go to a professional. Okay, so for the key takeaways here, let's wrap up. What would you say are the key takeaways for our listeners today based on what we've talked about so far?

Mike Carr (10:15):

I think it really boils down to three things. So first of all, understand the fundamental trade off between a descriptive name like Trader Joe's, crustless Peanut Butter and Strawberry Jam Sandwich, which are easier for customers now to understand, but not as distinctive a brand as names like Cherubs or it's a kooy. They tend to be far stronger names down the road and far more protectable trademarks for the longterm,

Ashley Elliott (10:45):

Right? Second, we'd say your naming strategy must match your business strategy. So think of Trader Joe's. Trader Joe's can use descriptive phrases because their master brand, which is Trader Joe's, does all the heavy lifting for them. A global company like Nestle, which needs to fight a myriad of competitors in different markets with different strategies, can't really afford that same type of luxury.

Mike Carr (11:10):

And third, don't skip your homework. Vetting a name properly is a structured process. It starts with that quick Google search that US PTO search, but must graduate to a comprehensive search, and most importantly, that final legal opinion.

(11:29):

Overall, this really should be viewed as more of an investment, not just an expense.

Ashley Elliott (11:36):

I think a lot of work upfront is happening, but putting in that time and the resources upfront and choosing and clearing a stronger, more protectable name is really one of the best investments that you can make. And it definitely can prevent those legal headaches down the road while also allowing you to build that brand equity to set you up really for long-term success.

Mike Carr (11:56):

Yeah, I agree. I mean, I think strong imaginative names paired with a thoughtful clearance process. Don't just keep you out of trouble. They make your marketing easier. They're going to make your margins healthier and copycats a whole lot less scary.

Ashley Elliott (12:13):

If you aim for distinctive names, screen rigorously and file smart, you'll launch with confidence and you'll spend your energy building your brand rather than fighting for the right to use it.

Mike Carr (12:27):

So that's it for our episode this week. Please let us know if you have any questions and we'll be talking about something fun and exciting again next week.

Ashley Elliott (12:37):

Thanks guys.