protecting ip rights in the food and beverage...
TRANSCRIPT
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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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TRADEMARKS AND BRANDING IN WINE APRIL 4, 2017
CHRISTOPHER J. PASSARELLI SR. INTELLECTUAL PROPERTY ATTORNEY
DICKENSON, PEATMAN & FOGARTY
NAPA, CALIFORNIA
T: 707.261.7070 | [email protected]
THOMAS J. MAAS ATTORNEY
KATTEN MUCHIN ROSENMAN LLP
CHICAGO, ILLINOIS
T: 312.902.5258 | [email protected]
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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.
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FORMS OF INTELLECTUAL PROPERTY
Patent
Utility Patent, Design Patent
Plant Patent, PVPA
Copyright
Trade Secrets
Trademarks, Service Marks and Trade Dress
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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.
.
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PATENT RECENT CASES
Rivera v. ITC – K-Cups
Inline Packaging v. Graphic Packaging International – Hot Pockets
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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
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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.”
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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
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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
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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
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DESIGN PATENT RECENT CASES
Campbell Soup Company v. Gamon Plus, Inc. – Soup Display Racks
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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
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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!
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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
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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.).
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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
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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
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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
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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)
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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
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TRADEMARKS POLICY CONSIDERATIONS
Easy reference
Business asset development
Indication of Source
Consistent quality
Prevent false advertising
Prevent confusion
Prevent unfair competition
Protect the consumer
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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.
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TRADEMARKS PITFALLS
How to lose your trademark rights:
Generic usage
Abandonment
Crowding of the field
Naked licensing
Illegal activities
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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.
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TRADEMARKS GENERIC TERMS
Trademarks that became generic:
Aspirin
Cellophane
Dry Ice
Heroin
Kerosene
Linoleum
Thermos
Trampoline
Videotape
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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.
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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!
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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)
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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
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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
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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
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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)
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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)
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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”)
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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.
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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.
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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.
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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)
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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!
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CURRENT ISSUES Material Alteration
Example: Arabic to Roman Numerals (OK)
Example: Gender Change (Not OK)
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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
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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
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THANK YOU!
THOMAS J. MAAS ATTORNEY
KATTEN MUCHIN ROSENMAN LLP
CHICAGO, ILLINOIS
T: 312.902.5258
CHRISTOPHER J. PASSARELLI SR. INTELLECTUAL PROPERTY ATTORNEY
DICKENSON, PEATMAN & FOGARTY
NAPA, CALIFORNIA
T: 707.252.7122