protecting ip rights in the food and beverage...

Protecting IP Rights in the Food and

Beverage IndustryLeveraging Trademarks, Copyrights and Patents to Protect IP From

Product Development to Marketplace Delivery

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TUESDAY, APRIL 9, 2019

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

Christopher M. King, Senior Counsel, Foley & Lardner, Milwaukee

Sheila Fox Morrison, Partner, Davis Wright Tremaine, Portland, Ore.

Abigail J. Remore, Counsel, Chiesa Shahinian & Giantomasi, West Orange, N.J.

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Protecting IP Rights in the Food & Beverage Industry

Chris [email protected]

IP Protection Strategies

Innovations can be used to distinguish products from competitors

IP protections for innovations create effective barriers to competition

Functional Innovations – protected via Utility Patents and Trade Secrets

Ornamental, Non-Functional Innovations – protected via Design Patents, Trademarks, and Copyrights

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Basic Types of IP Rights

Patents

Trade Secrets

Trademarks

Copyrights

Inventions (patents)

Designs (patents & trade dress)

Confidential Information (trade secrets

Brands & Logos (trademarks)

Writings, Drawings, & Software (copyrights)

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Layers of IP Protection

New Product

Trade Secret

Copyright

Trademark

Design Patent & Trade Dress

Utility Patent

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Examples of IP Protection for Food & Beverage

Copyright

– Product photos

– Ad copy

Trade Secret

– Recipe

– Production Process

Utility Patent

– Product

– Production Process


– Product Appearance

– Package Appearance

Trademark

– Brand name

– Logo

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Utility Patent & Design Patent

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Overlap of Design Patent and Trade Dress Protection

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Design & Trade Dress Protection Strategy

Step 1: Secure Design Patent Protection

Step 2: Enforce Design Patent

Step 3: Proactively Build TM Rights - Promote the Trade

Dress to Consumers

Step 4: File for Registration of Trade Dress

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Secure Design Patent

Hurdles:

– Novel

– Non-Obvious

Timing – file early, file often

– One year bar to US applications from disclosure

Contents of application remain secret until design patent issues

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Example Design Patent & Product

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Enforce Design Patent Right to exclude others from

making, using, selling or offering to sell product in US market for 15 years from issuance.

Test: An ordinary observer would think the accused design is substantially the same as the patented design when compared in the context of the prior art.

No need to prove consumer confusion, only substantial similarity of infringing product to patented design.

No surveys needed

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Design Patent Enforcement Strategies

Commercial Product Defensive Patent Filings

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Promote the Trade Dress to Consumers

Proactively build trademark rights in the trade dress

Use the 15 years of Design Patent exclusivity to build consumer recognition and goodwill in the product design.

Draw consumers’ attention to the unique ornamental features of the product as a way of identifying the source of the product.

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Sample Advertising

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Sample Advertising

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Sample Advertising

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File for Registration of Trade Dress

After years of active promotion and sale (typically 5), file for registration of trade dress as a trademark.

Evidence of promotion and use required.

Registration will last for as long as trade dress is used in marketplace, potentially well after expiration of Design Patent.

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Example Trade Dress & Product

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Take Aways

Be Creative – Wide variety of IP protection is available for food and beverage products

Get Involved – Insert both Trademark and Patent legal teams early into new product development

Be Intentional – Proactively promote your trade dress to consumers

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Trademark Clearance – Likelihood of Confusion Analysis

A lot of potentially conflicting classes/goods/services

o 29, 30, 31, and 32

o 33 (wine, spirits);o 35 (retail store featuring food)o 42 (old restaurant class)o 43 (restaurant class)


Sheila Fox Morrison

Class 29

(Meats and processed

foods)

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and

cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk

products; edible oils and fats.

Class 30

(Staple foods)

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and

preparations made from cereals; bread, pastry and confectionery; ices;

sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar,

sauces (condiments); spices; ice.

Class 31

(Natural agricultural

products)

Grains and agricultural, horticultural and forestry products not included in

other classes; live animals; fresh fruits and vegetables; seeds; natural

plants and flowers; foodstuffs for animals; malt.

Class 32

(Light beverages)

Beers; mineral and aerated waters and other non-alcoholic beverages;

fruit beverages and fruit juices; syrups and other preparations for making

beverages.

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Trademark Clearance - Likelihood of Confusion Analysis

Odd combinations of goods/services that may be deemed related:

o Wine and water

o Wine and glassware

o Wine and restaurants

o Beer, wine and spirits

o Soft drinks and candy

o Soft drink and cigars


Sheila Fox Morrison32

Trademark Clearance - Likelihood of Confusion Analysis

Context matters

o “Related Goods” is a matter of consumer perception (or perceived consumer perception - USPTO)

o Often not at all related to industry marketing positioning or strategies

o Channels of trade

o Target consumers

“Something More”

Opus One (wine and restaurant services)

Blue Moon (beer and restaurant services)



Infringement – Likelihood of Confusion Analysis


• The same issues as with clearance

• It can be hard to determine of a mark is confusingly similar with so many similar marks in the space

• In addition to the legal analysis you have to add in the practical analysis




• Practical factors

Each industry sector has its proclivities

o The wine, beer and spirits industries each handle claims a little differently

o There are a lot of sunk costs in packaging so required/demanded changes result in more rigorous defense

Cost-to-market can be high and profit margins may be slim so you have to be “smart” and creative in your enforcement efforts/settlement positions




• Practical factors

Before you send a demand letter or a response to a demand letter consider:

o What is a reasonable outcome that addresses the objectors concerns?

o Are there reasonable limitations that are short of a name change?

o Limit to channels

o Limit to particular trade dress

o Agree not to expand into respective product scopes

Support your position with business rationales

o Can’t tolerate infringing mark because your client has actual plans to expand

o Co-existence will diminish the exclusivity, and thus the value of the brand


Infringement – Monitoring for Infringement


• Standard resources are available

e.g., USPTO watch services, standing Google searches)

• Can also watch industry specific resources

e.g. Certificate of Label Approval (COLA) database for alcoholic beverages)

• Clients are usually a reliable “watch-dog”


PROTECTING IP RIGHTS IN THE

FOOD AND BEVERAGE INDUSTRY

RECENT CASES & LESSONS LEARNED

Abigail J. RemoreChiesa Shahinian & Giantomasi PCApril 9, 2019


Viacom International v. IJR Capital Investments, L.L.C.891 F.3d 178 (5th Cir. 2019)

Two factor analysis regarding whether Viacom owns a legallyprotectable mark in THE KRUSTY KRAB:

1. Use as a source identifier

2. Distinctiveness

Source: https://en.wikipedia.org/wiki/File:Krusty_Krab_230b.png


Real Foods Pty Ltd. v. Frito-Lay North America, Inc.906 F.3d 965 (Fed. Cir. 2018)

Opposition to registration of two marks:

CORN THINS for crispbread slices predominantly of corn, namelypopped corn cakes

RICE THINS for crispbread slices predominantly of rice, namely poppedrice cakes

“Our case law provides that ‘[w]here a mark sits on a sliding scaleof descriptiveness impacts the burden a proposed registrantmust bear with respect to its claim of acquireddistinctiveness.’... Rather than making it impossible for Real Foodsto establish secondary meaning, the TTAB found the marks ‘highlydescriptive,’ thereby properly placing a heavier burden on RealFoods to prove distinctiveness.”


Fifty-Six Hope Road, et al. v. Jammin Java CorporationNo. 16-05810, slip op. (C.D. Cal. May 30 ,2017)aff’d sub nom. Hope Road Merchandising LLC v. Jammin Java Corporation747 Fed. Appx. 622 (9th Cir. 2019)

In assessing profits under the Lanham Act: Plaintiff is only required to prove Defendant’s sales

Defendant then must prove all elements of cost or deduction claimed inorder to offset those sales

“Importantly, the Defendant must show that any deductions forbusiness expenses ‘[were] of actual assistance in theproduction, distribution or sale of the infringing product.’”


TRADE DRESS DECISIONS




Sazerac Company, Inc. et al. v. Fetzer Vineyards, Inc.265 F.Supp.3d 1013 (N.D. Cal. 2017)

Source: http://www.buffalotracedistillery.com/brands/buffalo-trace Source: http://www.1000storieswines.com/


Globefill Incorporated v. Elements Spirits, Inc. et al. No. 10-2034, jury verdict (C.D. Cal. Mar. 29, 2017)

Source: https://www.thespiritsbusiness.com/2017/03/court-backs-crystal-head-in-bottle-suit/


Spangler Candy Company v. Tootsie Roll Industries, LLCNo. 18-1146, slip op. (N.D. Ohio Mar. 13, 2019)

Source: www.westlaw.com Source: www.westlaw.com


CASES TO WATCH & LESSONS LEARNED




CASES TO WATCH

Perry v. H.J. Heinz Company Brands LLC No. 19-280, E.D.La, filed Jan. 14, 2019

METCHUP v. MAYOCHUP

Reverse confusion

MillerCoors, LLC v. Anheuser-Busch Companies, LLC No. 19-218, W.D.Wis., filed Mar. 21, 2019

Relating to Bud Light corn syrup ads aired during Super Bowl LIII

Alleges false advertising and federal trademark dilution under theLanham Act


LESSONS LEARNED & BEST PRACTICES

Use caution when referencing elements of pop culture in brandnames.

Steer clear of descriptive trademarks.

For trade dress, “secondary meaning requires more than extensiveuse alone.”

When it comes to succeeding on trade dress infringement claims,evidence of infringer’s bad faith intent can be very helpful.


THANK YOU

Abigail J. Remore

CounselChiesa Shahinian & Giantomasi [email protected]

protecting ip rights in the food and beverage...

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