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Food Mentors: Why You Need to Trademark Your Food Brand Right Now

Listen up. This here is important. Have you noticed the market lately? Big Food can’t keep up, while specialty food is leading the way and even hitting the big time. I don’t know what this means for your particular small food company, but I do know this: If there’s ever a time to drop everything you’re doing and take your intellectual property seriously, it’s now. The minute you have a clear idea of your product and brand, you have a responsibility to yourself, your company, and its future to know your intellectual property rights — and, at the very least, to get it trademarked.

For the sake of context, below is a list (ranging in relevance from the essential to the unlikely) of the kinds of intellectual property protections you could be entitled to as a food business. We’ll only be covering Numero Uno in the post, as it’s the one that matters the most, costs the least, and takes only 90 minutes of your time to file.

  1. TRADEMARK: Protects your Brand Identity. Essential — and urgent — if you want to have a real business in the real world and be taken seriously and be given money and not get sued. DO THIS TODAY.
  2. TRADE SECRET: Protects your Secret Recipe. Super important to a food business (because patent protection is very unlikely). I’ll do a separate post on this shortly.
  3. COPYRIGHT: Protects your original (visual) creation. Optional if you want your aesthetic contributions to humanity carved in legal stone
  4. PATENT: Protects your Invention. Unlikely, unless you have the money to go through an extravagant legal process and you really have something finger lickin’ good to litigate/license to death.

WHEN (NOW!) TO TRADEMARK

There are small food businesses busting on the scene daily, and only one musical chair for all the snowflake identities. Make sure you claim your chair ASAP. And make damn sure you’re not sitting on anyone else’s lap. As a wise man once said in an infomercial: “When would now be a good time to start?”

WHY TRADEMARK

Trademarking is essential for two reasons — one assertive, the other preventative: to claim your brand identity, and to ensure you’re not infringing on anyone else’s.

First-to-Market Advantage: Your brand identity is an asset. Future investors and lenders will want to see how you developed the value of your brand’s identity and market position from the start. Taking the assertive step to protect your brand identity early on gives you more chances of claiming a first-to-market position, and shows that you’re serious about your business and its long-term strategy.

Infringement Prevention: Trademarking your brand protects you from infringement from others. It also ensures you’re not infringing on someone else yourself. Getting attached to a branded product — and building a following around it — before you’ve even verified that the brand is legally available can lead to a surprise Cease and Desist taped to your front door. Avoid exposing your business to a lawsuit — trademark that snowflake today!

WHAT TO TRADEMARK

Lauren Handel, Principal Attorney at Handel Food Law and our legal mentor at FoodWorks, states: “At a minimum, entrepreneurs should take steps to ensure that their brand name is protected through trademark registration with the U.S. Patent and Trademark Office. It may also be worthwhile to register logos, product names, and taglines, if those assets are used as trademarks — meaning, to signify that the products come from a particular company.”

You can trademark words, phrases, logos, colors, and even the “dress” of a product (for example, a uniquely shaped container).

HOW TO TRADEMARK

“The first step in protecting a brand is to choose a trademark that is not infringing on anyone else’s trademark and that can be protected,” says Lauren. “That is why it is important to do a thorough trademark availability search in the branding process.”

Mark Clearance: Use the free Trademark Clearance Search through the Trademark Electronic Search System database (TESS) to ensure that another entity hasn’t already registered an identical or similar mark for the same categories of goods or services as you. (Keep in mind, TESS only covers federally registered marks. For unregistered marks, you’ll need to search separate state trademark databases and business name databases, as well as go online and search web sites and articles that have similar marks related to your goods and services.)

Mark Eligibility: Not everything can be registered. Unless your mark is found “federally registrable and legally protectable,” you may get a refusal letter, called an Office Action. To make sure you’re choosing wisely, we dug a little deeper into USPTO’s definition of “federally registrable and legally protectable”:

Federally Registrable. The main reason for refusal of a trademark application is “likelihood of confusion” between the mark you’re trying to register and that of another company. Make sure you’re picking a registrable mark — one that’s not easily confused with another mark with the same goods or services. (“MockNuggets,” your breaded seitan snacks, probably won’t, er, fly.)

Legally Protectable. A protectable mark is one that’s considered “inherently strong“ and can easily be defended against others who want to use the same or similar mark. The “strength of mark” range goes from Generic and Descriptive on the weak end, to Suggestive and Fanciful/Arbitrary on the strong end. The more generic (say, “Milk”) or merely descriptive (“Long & Thin” breadsticks) your mark is, the weaker it is, and the less likely it is that you’ll be able to get it registered. Strong marks — weird, zany, arbitrary — are more likely to be registered.

There are other, more specific reasons why your mark may not be accepted. The U.S. Patent and Trademark Web site has all the information you’ll need to both research and register your mark, including tips and video tutorials.

Basis for Filing: If you’re already using your mark commercially on all the goods and services identified in your application — selling your product on the market with the branding in place — you’ll be filing your application under the “use in commerce” basis. You’ll have to show evidence of date of first use of the mark anywhere and the date of first use of the mark in commerce.

On the other hand, if you are not yet using your mark commercially but intend to do so in the near future — “ you have more than just an idea but are less than market ready (for example, having a business plan, creating samples products, or performing other initial business activities)” — then you’ll file under “intent to use” basis, and you’ll be subject to additional fees and a renewal process if you do not bring the mark to commerce in a timely fashion.

Filing Your Application: You will need information about your mark, such as the categories of goods and services for which your mark will be used, the date of the mark’s first use in commerce, and if there’s a design component to the mark you’re applying for. Remember you want to get the broadest protection for your trademark, so avoid including Web extensions, even if you’re a strictly Web-based business — otherwise a company with the same mark as yours can register it simply by changing the extension.

According to the USPTO Web site, you should get a response to your application within six months of filing.

Filing Fee: The fee covers a complete legal review of your case, and is not a guarantee of registration. Online trademark registration costs between $225 and $400.

Trademark Enforcement: Keep in mind that, once you get your trademark approved, you are legally responsible for policing your trademark against infringement.


Written by Monika Norwid

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