protecting ip rights in the food and beverage...

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Presenting a live 90-minute webinar with interactive Q&A

Protecting IP Rights in the

Food and Beverage Industry Leveraging Trademarks, Copyrights and Patents to Protect

IP From Product Development to Marketplace Delivery

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, APRIL 4, 2017

Thomas J. Maas, Esq., Katten Muchin Rosenman, Chicago

Christopher J. Passarelli, Senior Counsel, Dickenson Peatman & Fogarty, Napa, Calif.

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5

TRADEMARKS AND BRANDING IN WINE APRIL 4, 2017

CHRISTOPHER J. PASSARELLI SR. INTELLECTUAL PROPERTY ATTORNEY

DICKENSON, PEATMAN & FOGARTY

NAPA, CALIFORNIA

T: 707.261.7070 | CP@DPF-LAW.COM

THOMAS J. MAAS ATTORNEY

KATTEN MUCHIN ROSENMAN LLP

CHICAGO, ILLINOIS

T: 312.902.5258 | THOMAS.MAAS@KATTENLAW.COM

6

Disclaimer

This is made available for general informational purposes only and none of the information provided herein should be considered to constitute legal advice. The information presented herein represents the opinions of the presenters and not Katten Muchin Rosenman or Dickenson Peatman & Fogarty.

7

FORMS OF INTELLECTUAL PROPERTY

Patent

Utility Patent, Design Patent

Plant Patent, PVPA

Copyright

Trade Secrets

Trademarks, Service Marks and Trade Dress

8

PATENTS

Processes, machines, articles of manufacture, and

compositions of matter which are:

Novel

Useful

Nonobvious

Design Patent – protection for ornamental (not functional) features of a product or package.

.

9

PATENT RECENT CASES

Rivera v. ITC – K-Cups

Inline Packaging v. Graphic Packaging International – Hot Pockets

10

DESIGN PATENTS

Drawings define the metes and bounds of the ornamental invention.

May coexist with trade dress protection

Must commit to final commercial embodiment prior to filing

14 year term from date of issuance

No maintenance fees (unlike utility patents)

Remedies (35 U.S.C. §§ 283-85, 289)

Preliminary/Permanent Injunction

Compensatory damages

Exceptional Cases – Treble Damages and Attorneys’ fees

11

DESIGN PATENTS

Seminal Case: Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008)

Rejects “Point of Novelty” test - required accused design to possess “substantially the same points of novelty that distinguished the patented design from the prior art.”

Adopts revised “Ordinary Observer" test - through the eyes of an observer familiar with the prior art.

Prior art considered only where both designs are “substantially the same,” and “not plainly dissimilar.”

12

DESIGN PATENTS

Illustrative Cases

Wing Shing Prods (BVI) Co. v. Sunbeam Prods., 665 F. Supp. 2d 357 (S.D.N.Y. 2009)

“on the whole the claimed design when compared to the prior art bespeaks ‘a field ... crowded with many references relating to the design of the same type of appliance.’ ” Conclusion: An ordinary observer familiar with the prior art “would not believe the AR 10/12 [the accused design] to be the ‘same as’ the ’585 patent”

NO INFRINGEMENT

13

DESIGN PATENTS

Illustrative Cases

Keurig Inc. v. JBR Inc., 2013 U.S. Dist. LEXIS 40341 (D. Mass., 2013)

Beverage filter cartridges for coffee

Designs found “plainly dissimilar” – prior art not considered

Failed to prove the two designs are “substantially the same” to the ordinary observer

SUMMARY JUDGMENT - NO INFRINGEMENT

14

DESIGN PATENTS

Illustrative Cases

Samsung Electronics Co., Ltd., et al. v. Apple Inc., 137 S. Ct. 429 (Dec., 2016)

Issue: Where a design patent only covers a product component, is an award of infringer’s profits limited to profits attributable to the component?

35 U.S.C. Sec. 289: Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Sup. Ct. defines “Article of Manufacture” – for multi-component products, this can be a component of that product, rather than the entire end product itself.

JUDGMENT – REMANDED TO LIMIT DAMAGE AWARD

15

DESIGN PATENT RECENT CASES

Campbell Soup Company v. Gamon Plus, Inc. – Soup Display Racks

16

COPYRIGHT

Creative works fixed in a tangible medium of expression

Rights: Reproduction, Distribution, Derivative Works, Public Display, Public Performance

Federal law applies

Term: (Depends) Often lasts for the lifetime of the author plus 70 years

17

COPYRIGHT OWNERSHIP

Author/Creator owns the copyright

Web page, label, photographs, etc.

Exception: Employee in the course of employment

Commissioned Works

Obtain Assignment of Rights!

18

COPYRIGHT ENFORCEMENT

Federal Court jurisdiction and venue

Circuit split: Pending application required in 9th Circuit.

Statutory Damages

Vehicle for Enforcement

Online

Gray Market/Parallel Importation

19

TRADE SECRETS STATUTORY FRAMEWORK

California Uniform Trade Secrets Act (California Civil Code Section 3426 et seq.)

Illinois Trade Secrets Act (765 ILCS 1065/)

Defend Trade Secrets Act of 2016 (18 United States Code Section 1831 et seq.).

20

TRADE SECRETS Information not publicly known, which confers a competitive advantage and has value by virtue of maintaining its secrecy.

Examples:

Customer list

Suppliers

Production/Manufacturing processes

Fertilizer application data

Well location data

21

TRADE SECRETS FEDERAL DEFEND TRADE SECRETS ACT

(18 U.S.C. § 1831 et seq.)

Harmonize divergent state procedural laws and rules of court

Federal cause of action

No preemption of state law –> substantive distinctions

22

TRADE SECRETS FEDERAL DEFEND TRADE SECRETS ACT

(18 U.S.C. § 1831 et seq.)

Differences from state law:

Definition of trade secret

Available remedies

Immunities for whistleblower employees

Protections in court

23

TRADE SECRETS RECENT CASES

U.S. v. Zhang et al. – Criminal trade secret case for theft of seeds

Dalmatia Import Group, Inc. v. Foodmatch, Inc., et al. – Jury verdict re: fig jam under Defend Trade Secrets Act (DTSA)

24

TRADEMARK/SERVICE MARK: WHAT IS IT?

Word, Phrase, Slogan

Symbol, Logo

Picture, Image, Photograph

Color, Shape, Smell

Product or Packaging (aka Trade Dress)

Virtually anything that serves as

an Indication of Source

25

TRADEMARKS POLICY CONSIDERATIONS

Easy reference

Business asset development

Indication of Source

Consistent quality

Prevent false advertising

Prevent confusion

Prevent unfair competition

Protect the consumer

26

TRADEMARKS HOW THEY ARISE

In the U.S., trademarks arise from use in commerce.

In much of the world, the rightful owner is the first to file a trademark application.

27

TRADEMARKS PITFALLS

How to lose your trademark rights:

Generic usage

Abandonment

Crowding of the field

Naked licensing

Illegal activities

28

TRADEMARKS DISTINCTIVENESS

Trademark strength is based on distinctiveness – the ability to indicate source.

Generic – not protected

Descriptive – informational, protected if the mark achieves secondary meaning

Suggestive

Arbitrary

Fanciful

A mark can become generic and lose its ability to function as a trademark.

29

TRADEMARKS GENERIC TERMS

Trademarks that became generic:

Aspirin

Cellophane

Dry Ice

Heroin

Kerosene

Linoleum

Thermos

Trampoline

Videotape

30

TRADEMARKS NOTICE

Superscript or subscript:

TM, SM or ®

Notice of claimed rights/deterrent effect

Effect on damages recovery

Beware: Improper use of ® federal registration notice may be deemed fraudulent.

31

TRADEMARKS REGISTRATION

Some of the benefits of federal registration:

Nationwide constructive use

Presumption of ownership, validity

Use of ® acts as a deterrent

Federal court jurisdiction

+5 minutes of sleep every night!

32

FEDERAL REGISTRATION PROCESS

Filing – Current Use v. Intent to Use

Examination

Office Actions & Information Requests

Publication for Opposition

Allowance for Registration

Issuance of Registration Certificate

Continued Use/Incontestability

Renewal

No Attorney Required? (57% v. 83% success)

33

REGISTRATION

STATE TRADEMARK

Alternative to federal registration PROS:

Easier to obtain

No interstate commerce requirement

No Publication for Opposition

CONS:

No Presumption of ownership, validity

Cannot use “®”

Will not necessarily prevent third parties from achieving federal registration

34

TRADEMARK USE Must be used on or in connection

with the goods or services

Affixed to the goods (e.g., label) or their packaging

Website use in proximity to a means for ordering the goods or services

Means to request a quote

35

TRADEMARK CLEARANCE #1 Misconception: The Secretary of

State cleared my mark

Preliminary “knockout” search

Full search

Willful infringement issue

Tip: Bring alternatives

Tip: Do your own search first

No search is perfect

36

TRADEMARKS RECENT CASES Abbott Laboratories / Similac Baby

Formula

Patron / Porton

Havana Club Rum

Experience Hendrix v. Pitsicalis – Jimi Hendrix’s Likeness

StarKist Co. v. Productos Dolores – Charlie Tuna

37

CONFLICTING MARKS Pseudo Marks – may be assigned to marks

that have alternative spellings or meanings. Used as an additional search tool.

E.g., YOU ARE GREAT v. URGR8

Phonetic Equivalents – alternative spellings

E.g., KWIXTART v. QUICK START

Foreign Equivalents – foreign translations

E.g., 100 PERCENT WINE v. CENTO PER CENTO

38

TRADE DRESS DEFINITION

Total image or overall design or appearance of a product or its packaging.

Includes size, shape, color, color combinations, texture and graphics

All features be considered together, not separately

Function elements NOT protectable

OK if certain components are functional if the overall combination of features is not.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)

39

TRADE DRESS Packaging Trade Dress

For single product or product line/family of products

Product Trade Dress

Product Configuration can serve as trade dress if it is inherently distinctive.

Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063, 1067 (7th Cir. 1992)

Examples:

Coca Cola, Maker’s Mark

40

TRADE DRESS RECENT CASES Diageo v. Sazerac / Dr. McGillicuddy’s

Crystal Head Vodka (Dan Aykroyd)

41

GEOGRAPHICAL INDICATIONS Appellations of Origin

American Viticultural Areas (AVA)

Conjunctive Labeling Requirements

E.g., Oakville - Napa Valley

Misconception: TTB approved my label!

Misleading Terms (e.g., “Loch”)

42

CERTIFICATIONS Certification Marks - Certifies nature or origin.

E.g.,

Location or origin

Materials of construction

Method or mode of manufacture of goods or provision of services

Quality assurance

Accuracy of the goods or services; and

Union or other organization standards.

43

CERTIFICATIONS Examples:

Organics: CCOF, USDA Organic, Oregon Tilth

Sustainability: SIP Certified, Certified California Sustainable Winegrowing (CCSWP)

Cannot certify yourself! The certifier cannot engage in production or

marketing of the certified goods or services but must be competent to certify that any user has met the requirements.

44

CURRENT ISSUES: ALCOHOL - RELATED GOODS

Many alcohol beverage products are being considered related goods

Beer/Wine/Distilled Spirits/Energy Drinks

White Oak Vineyards & Winery v. White Oak Spirits LLC, Case No. 2:14-cv-09830 (CACD 2015)

Vodka and wine found to be related goods.

45

CURRENT ISSUES Trademark use must be “lawful.”

Q: Is a COLA required for lawful trademark use?

A: Not necessarily.

Churchill Cellars, Inc. v. Brian Graham, Opp. No. 91193930 (TTAB 2012)

46

CURRENT ISSUES Relatedness of Goods

Alcohol (liquor, beer & wine)

Restaurant services

Food (e.g. Allegash)

Lesson: Search classes 32, 33 & 43

Under federal trademark law, all alcohol starting to be treated equally!

47

CURRENT ISSUES Material Alteration

Example: Arabic to Roman Numerals (OK)

Example: Gender Change (Not OK)

48

RELATED PRODUCT DEVELOPMENT/LABELING ISSUES

False Advertising (Label Review)

Hot Area for Litigation

Angel’s Envy

Beck's

Blue Moon

Bud Light Lime-A-Rita

Bulleit Bourbon

Kirin

Makers Mar

Red Stripe

Skinny Girl Margarita

Templeton Rye

Tito's

WhistlePig Rye

49

OTHER REGULATIONS AND RULES

TTB Label Approval Is Not A Silver Bullet

FDA Labeling Requirements, etc.

“Light” food or beverages

Designation of Origin Regulations

Industry Regulations (e.g., DISCUS)

Health-Related Claims

50

THANK YOU!

THOMAS J. MAAS ATTORNEY

KATTEN MUCHIN ROSENMAN LLP

CHICAGO, ILLINOIS

T: 312.902.5258

THOMAS.MAAS@KATTENLAW.COM

CHRISTOPHER J. PASSARELLI SR. INTELLECTUAL PROPERTY ATTORNEY

DICKENSON, PEATMAN & FOGARTY

NAPA, CALIFORNIA

T: 707.252.7122

CP@DPF-LAW.COM