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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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
Design Patent & Trade Dress
– Product Appearance
– Package Appearance
Trademark
– Brand name
– Logo
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Utility Patent & Design Patent
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Design Patent & Trade Dress
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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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Example Design Patent & Product
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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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Example Trade Dress & Product
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Example Trade Dress & Product
27
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
29
Protecting IP Rights in the Food and Beverage Industry
Sheila Fox Morrison | Davis Wright Tremaine LLP
1300 SW Fifth Avenue, Suite 2400 | Portland, OR 97201Tel: (503) 778-5311 | Fax: (503) 276-5711
Email: [email protected] | Website: www.dwt.com
Anchorage | Bellevue | Los Angeles | New York | Portland | San Francisco | Seattle | Washington, D.C.
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)
Protecting IP Rights in the Food and Beverage Industry
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
Protecting IP Rights in the Food and Beverage Industry
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)
Protecting IP Rights in the Food and Beverage Industry
Sheila Fox Morrison33
Infringement – Likelihood of Confusion Analysis
Protecting IP Rights in the Food and Beverage Industry
• 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
Sheila Fox Morrison34
Infringement – Likelihood of Confusion Analysis
Protecting IP Rights in the Food and Beverage Industry
• 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
Sheila Fox Morrison35
Infringement – Likelihood of Confusion Analysis
Protecting IP Rights in the Food and Beverage Industry
• 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
Sheila Fox Morrison36
Infringement – Monitoring for Infringement
Protecting IP Rights in the Food and Beverage Industry
• 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”
Sheila Fox Morrison37
PROTECTING IP RIGHTS IN THE
FOOD AND BEVERAGE INDUSTRY
RECENT CASES & LESSONS LEARNED
Abigail J. RemoreChiesa Shahinian & Giantomasi PCApril 9, 2019
39 | ©2019 Chiesa Shahinian & Giantomasi PC
TRADEMARK DECISIONS
PROTECTING IP RIGHTS IN THE
FOOD AND BEVERAGE INDUSTRY
40 | ©2019 Chiesa Shahinian & Giantomasi PC
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
41 | ©2019 Chiesa Shahinian & Giantomasi PC
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.”
42 | ©2019 Chiesa Shahinian & Giantomasi PC
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.’”
43 | ©2019 Chiesa Shahinian & Giantomasi PC
TRADE DRESS DECISIONS
PROTECTING IP RIGHTS IN THE
FOOD AND BEVERAGE INDUSTRY
44 | ©2019 Chiesa Shahinian & Giantomasi PC
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/
45 | ©2019 Chiesa Shahinian & Giantomasi PC
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/
46 | ©2019 Chiesa Shahinian & Giantomasi PC
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
47 | ©2019 Chiesa Shahinian & Giantomasi PC
CASES TO WATCH & LESSONS LEARNED
PROTECTING IP RIGHTS IN THE
FOOD AND BEVERAGE INDUSTRY
48 | ©2019 Chiesa Shahinian & Giantomasi PC
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
49 | ©2019 Chiesa Shahinian & Giantomasi PC
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.
50 | ©2019 Chiesa Shahinian & Giantomasi PC
THANK YOU
Abigail J. Remore
CounselChiesa Shahinian & Giantomasi [email protected]