July 2021
Natural Products Consulting
By Morgan E. Smith; Clare A. Cornell; Fionnuala P. Richardson
What is a trademark?
Trademarks are an important part of consumers’ everyday lives. Legally, a trademark is a word, name, symbol, logo, device, or combination thereof, used by a business to identify its goods and/or services and to distinguish them from those of others. To consumers, trademarks serve as “source identifiers,” or shorthand ways for companies to communicate to consumers what a product is, who is behind it, and the quality/reputation associated with the product or company. They are incredibly powerful tools to communicate with consumers, often times even without words. It is no surprise, then, that some of the most famous trademarks are from the food and beverage industry:
Trademarks are a particularly significant asset for food and beverage companies because they help consumers to properly associate products with the company’s goodwill and build a trusting relationship between brand and consumer.
When choosing a trademark, you should consider two things: 1) is the mark capable of identifying and distinguishing your products or services from those of a competitor, i.e., is it protectable? and 2) is the mark available for the contemplated use? The contemplated use should include not only products currently offered, but also any future product expansions and collateral/promotional products if applicable.
Uniqueness and distinctiveness allow a trademark to stand out in the marketplace, establishing an efficient communication tool to capture consumers’ attention. There are different levels of trademark distinctiveness, and a sliding scale of protectability. The more distinctive a trademark is, the more protection it will generally be afforded under the law. The graphic below illustrates the “spectrum of distinctiveness” for trademarks:
Fanciful, Arbitrary | Suggestive | Descriptive | Generic |
Fanciful marks are the strongest marks on the spectrum of distinctiveness, as they do not have an independent meaning or significance apart from their existence as a trademark. Examples include:
OREO cookies | TRIX breakfast cereal | DORITOS tortilla chips |
Arbitrary marks are the next strongest. Arbitrary marks are words that have a common or recognized meaning, but that meaning is unrelated to the products or services for which the mark is used. Examples include:
DOMINO’S pizza | SONIC fast-food restaurant |
Next are suggestive marks. These require imagination, thought, or perception for consumers to reach a conclusion as to the nature of the goods or services. Suggestive marks are strong, but not as strong as fanciful or arbitrary marks. Examples include:
COPPERTONE suntan oil | CHICKEN OF THE SEA tuna |
Next on the spectrum are descriptive marks. Descriptive marks convey an immediate idea of an ingredient, quality, characteristic, purpose, or function of the goods or services. These marks are unprotectable absent a showing of acquired distinctiveness or “secondary meaning.” And, even once secondary meaning is established, the trademark owner does not have a total monopoly on the words, because others may still use the words to describe their products without infringing on the owner’s rights. Examples include:
RAISIN BRAN cereal | FROSTED FLAKES cereal |
The weakest “marks” on the spectrum are generic terms, which are the common names of product categories. Generic terms are never protectable, and even trademarks that were once protected may become “genericized” through improper use. Trademarks that have been lost due to “genericide” include escalator, nylon, lanolin, aspirin, and trampoline.
The U.S. Patent and Trademark Office (USPTO) prohibits registration of certain types of marks, including several categories that are particularly relevant in the food and beverage industry: deceptively misdescriptive marks, geographically descriptive (or misdescriptive) marks, and surnames.[1]
The USPTO uses the following test to determine whether a trademark is deceptively misdescriptive:
A third criteria distinguishes marks that are deceptively misdescriptive from marks that are deceptive. To be deceptively misdescriptive, the misdescription must concern a feature that is relevant to the purchase decision.[2] If the misdescription is material to the purchase decision, the mark is deceptive.[3]
If the proposed mark fits the first two criteria, then the USPTO will likely refuse registration of the mark on the basis that it is deceptively misdescriptive. Take, for example, the mark OCEANSIDE RESTAURANT for a restaurant that is not near an ocean. OCEANSIDE RESTAURANT meets the first prong of the test, because it misdescribes the services by using the word “oceanside” even though the restaurant is not near an ocean. As for the second prong, consumers are likely to believe that “oceanside” describes the restaurant, because there are many restaurants that are close to oceans, making it perfectly reasonable for consumers to assume that this restaurant is also near an ocean. In contrast, MOON CRATER RESTAURANT would not be misdescriptive, because consumers would not think the restaurant is located in a moon crater. Thus, the USPTO might refuse registration of OCEANSIDE RESTAURANT if it were used in connection with a landlocked restaurant and may even refuse the mark as deceptive, because location could be considered material to the purchase decision for restaurants. That said, even deceptively misdescriptive marks may be eligible for registration with a showing of acquired distinctiveness, whereas deceptive marks are never eligible for registration.[4]
A mark that contains a geographical location may be refused on the grounds that the mark is geographically descriptive. The test for whether a mark is geographically descriptive (and therefore unregistrable absent a showing of secondary meaning) is: (1) whether the primary meaning of the mark is a place that is generally known to the public, (2) whether the public would believe that the products or services originate in the named place, and (3) whether the products or services actually come from that place.[5] For the second prong, there must be a goods/place association in order for the mark to be found geographically descriptive. Examples of geographically descriptive marks include YOSEMITE BEER for beer originating at or near Yosemite National Park and BAIKALSKAYA for vodka made from water piped from Lake Baikal.[6] Examples of marks that were determined not to be primarily geographically descriptive include THE MONTECITO DIET for diet publications, HARVEYS BRISTOL CREAM for cakes flavored with sherry wine, and CATALINA ISLAND GRANOLA for granola.[7]
A mark that is primarily merely a surname is also not registrable absent a showing of secondary meaning. Whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public.[8] This type of analysis is particularly fact sensitive and difficult to predict, however the USPTO has considered whether (1) the surname is rare, (2) the term is the surname of anyone connected with the trademark applicant, (3) the term has any recognized meaning other than as a surname, (4) the term has the “structure and pronunciation” of a surname, and (5) the stylization o the lettering is distinctive enough to create a separate commercial impression.[9]
Prior to deciding on a trademark, you should also assess the availability of the mark. This process is referred to as trademark clearance. Clearance usually involves trademark counsel searching for identical or similar marks used in connection with the same or related goods or services. Clearance is an important part of building a valuable brand, because it helps you and your business understand whether a proposed trademark is available (and in what countries) and what types of risks might be associated with adopting any given trademark.
As mentioned earlier in this chapter, anything that distinguishes your products and services from those of your competitors—a name, logo, slogan, color, sound, or shape—can serve as a trademark and may be eligible for registration with the USPTO. In addition, a product’s trade dress, or the “total image and overall appearance” of a product, may be protectable as well.[10] In the United States, trademarks rights begin and end with trademark use, not registration, although registration confers certain benefits and presumptions discussed below.
Words and logos are the most common types of trademarks. Words can be registered as trademarks in plain text, which protects all stylization variations, or in specific styles. Logos can be registered alone or in connection with accompanying wording. See the following examples below, all associated with SPRITE soda or WHOLE FOODS grocery stores, respectively.
USPTO Reg. No. 4431252 | USPTO Reg. No. 3815261 |
USPTO Reg. No 4275821 | USPTO Reg. No .195230 |
USPTO Reg. No. 5091860
USPTO Reg. No. 6329194
USPTO Reg. No. 6289840
Slogans are also a very powerful branding tool and are eligible for trademark protection so long as they are not descriptive of the products at issue. For example, “slogans” like “THE BEST BEER IN AMERICA” and “AMERICA’S FRESHEST ICE CREAM” would not be eligible for trademark protection, whereas slogans like “WE HAVE THE MEATS,” “I’M LOVIN’ IT,” and “OBEY YOUR THIRST” are.
Trade dress is considered a “symbol” or “device” that falls within the definition of a trademark or service mark. It is generally defined as the “total image or appearance of a product,” or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, or graphics.”[11] It is particularly important for food and beverage companies to examine their product packaging and product design for possible trade dress protection, because they are some of the first things that a consumer sees and can be critical when making product selections.
Trade dress includes both product packaging and product design. Product packaging refers to the packaging in which a product is sold, while product design refers to a product’s shape or configuration.[12] Both product design trade dress and product packaging trade dress must be nonfunctional in order to be protectable. Product design trade dress is not immediately entitled to federal registration; it may only be protected if the owner can show secondary meaning. Alternatively, product packaging can be immediately protectable and does not require a showing of secondary meaning. And, even if product packaging is initially found not to be inherently distinctive, it may still be protected if it has secondary meaning.
Traditional types of trade dress for product design and packaging include unique bottles and/or boxes. Classic examples of protected product design include Hershey’s Kisses Chocolate drops and Pepperidge Farm “Goldfish” snack crackers.[13]
USPTO Reg. No. 1986822
USPTO Reg. No. 1640659
As for product packaging, the classic example is the Coca-Cola Company’s signature bottle, which has been registered with the USPTO since 1977. The brand has since registered a variety of other trade dresses that are associated with product packaging.
USPTO Reg. No. 1057884
USPTO Reg. No. 4543677 | USPTO Reg. No. 3510996 | USPTO Reg. No. 4431252 |
USPTO Reg. No. 3469572 | USPTO Reg. No. 2471029 | USPTO Reg. No. 4492656 |
Additional examples of product packaging trade dress include the below packaging for mints, chewing gum, and bubble gum.
USPTO Reg. No. 5248462 | USPTO Reg. No. 2298252 |
In the EU and UK, it is also possible to register the shape of goods and their packaging. As with other types of marks, when assessing the registrability of this type of mark, the EU/UK IPO will consider if it can be represented in the register in a manner which enables the public to determine the clear and precise subject matter of the protection afforded and if the appearance of shape has distinctive character with regard to the goods for which protection is sought from the perspective of the average consumer. Goods and their packaging can be protected if they are inherently distinctive, although in most instances evidence of acquired distinctiveness will need to be provided. There is no specific trade dress protection in the EU and UK; however, packaging designs can be registered design protection. In the UK, once the getup of a product becomes known and acquires goodwill, its appearance can be protected by the tort of Passing Off.
Colors can also serve as a trademark, although it is generally difficult to obtain a trademark registration for a color absent very strong evidentiary showings of acquired distinctiveness (colors are not inherently distinctive and are thus not eligible for protection from the USPTO absent such a showing). That said, even without formal protection from the USPTO, colors serve as one of most visually catching source identifiers in the food and beverage industry and are particularly useful in a grocery store aisle (think yellow for CHEERIOS cereal, green for STARBUCKS coffee, blue for OREO cookies, etc.).
In the EU and UK, colors can be protected, although, generally, it is accepted that the public is not accustomed to associating the color of a product or packaging with origin; therefore, it is unlikely to act as a badge of origin. However, if the applicant provides evidence of use demonstrating acquired distinctiveness, it may be possible to secure a registration for a color mark in these territories. For example, Mars UK Ltd successfully secured an EU trademark registration for the color purple:
for cat food and cat milk after providing a substantial amount of evidence of use in the EU over a period of thirteen years (Mars UK Ltd, Case R 1620/2006-2, 4 May 2007.) Within a UK or EU trademark application, applicants will need to include a clear and precise description of how the color will be used on the packaging and provide an internationally recognized color identification code, such as a Pantone code.
Companies have many options to consider for protecting the appearance of food and food packaging innovations. While the options are different, in many cases, they are complementary. For example, design patents and trade dress can provide complementary protection for product designs and packaging. That said, given that all trade dress must also be non-functional to be protectable, utility patent filings claiming that a product design or packaging has some sort of function should be avoided.
Before choosing a trademark, your company should convene to set clear goals about the purpose of the mark, its anticipated use, the life span of the mark, and the relative importance of the mark, as well as discuss whether the mark is intended for just domestic use or whether it will be used internationally. These factors can impact both the scope of the clearance searches and the level of risk the business may be willing to accept.
Brand names that are clever and original are entitled to broader protection than ones that are simply “descriptive” of the goods. For example, Kellogg’s Frosted Flakes may encounter roadblocks when attempting to enforce the brand in the marketplace. As defined by Kellogg’s itself, Kellogg’s Frosted Flakes are: “[o]ven toasted corn flakes . . . perfectly glazed with a sweet frosting.”[14] And, while Kellogg’s Frosted Flakes are popular, Kellogg’s is not the only company to make cereal that consists of “frosted flakes”:
By contrast, children and adults alike associate Tony the Tiger with Kellogg’s Frosted Flakes cereal. Since Tony’s debut in the 1950s, the character has spanned several generations and evolved into an advertising cartoon mascot to promote and distinguish the breakfast cereal. In the competitive “frosted flakes” cereal market, Tony the Tiger distinguishes Kellogg’s Frosted Flakes from those of other companies. Further, the strong brand image encourages brand loyalty and repeat purchases.
As discussed above, trademark rights can be lost if the trademark becomes synonymous with the product category (e.g., escalator, nylon). To avoid this, trademarks should be used as a proper adjective, not a noun, and should be used together with the generic name of the goods or services. For example, OREO is followed by the generic descriptor, “chocolate sandwich cookies” and CLIF BAR is followed by the generic descriptor “energy bar.”
Additionally, the mark should be set apart from other text, and should be followed by appropriate trademark notices such as ™ or ® (if registered).
The owner of a registered or unregistered mark has the right to prevent third parties from using a mark that is likely to cause confusion, mistake, or deception as to the source, sponsorship, or association of its goods/services.[15]
To ensure your business is building and maintaining a strong brand, you will need to develop and implement a trademark enforcement strategy. Enforcement strategies define a brand’s zone of protection and require buy-in from various business stakeholders. Trademark enforcement is also a key component of maintaining trademark rights throughout the life of a brand; without executing an enforcement strategy, a mark could become so diluted that it loses all value. Successful enforcement strategies define clear roles, responsibilities, and expectations to ensure timely and effective monitoring and action against potential infringers. A well-executed enforcement strategy polices the use and registration by third parties of identical or similar trademarks and trade dress by monitoring USPTO applications, opposing applications, and challenging uses that meet your enforcement criteria, as well as monitoring the web and marketplace for potentially infringing uses. Monitoring the marketplace for infringement protects the strength and value of a trademark and prevents others from arguing that the business has lost trademark rights through inaction.
When developing an enforcement strategy for a brand, a sliding scale approach is often helpful.
No Action | Enforce |
Non-Similar Mark | Identical Mark |
Non-Similar Services | Identical Services |
In some circumstances, the “sliding scale” approach is not warranted. In situations where a trademark is so well known that it can be considered “famous” under the law (think household names like COCA-COLA and NIKE), any use of the mark, regardless of the goods or services involved, could harm the brand by diluting it. In the example below, although sodas and illegal drugs are distinctly different products, the COCA-COLA brand would nevertheless be diluted and harmed by the use of “ENJOY COCAINE” (particularly when stylized just like the COCA-COLA branding).
Trademark infringement actions generally take place in federal district court and follow the same process as other types of civil litigation. If infringement is found, recovery can include:
To acquire a federal trademark registration, a business should register the mark or trade dress with the USPTO, which confers national priority on the owner as of the filing date.[16]
The USPTO allows for two main types of trademark applications:
After an application is submitted, it is examined by the USPTO to determine if it is registrable. If the USPTO determines the mark is not registrable (for example, because it is geographically descriptive or likely to be confused with another existing registration), it will issue an office action refusing registration. Office actions are used for substantive issues, as well as more administrative ones, such as requiring an amendment to the description of goods/services. Applicants have six months to respond to office actions. Once all issues are resolved, the application publishes for opposition, meaning that third parties have thirty days to object to the mark’s registration, or ask for an extension of time to do so. After the opposition period, use-based applications proceed to registration. Intent-to-use applications receive a notice of allowance, and the mark owner has six months to submit evidence of use or request an extension of time to do so. Once such evidence is submitted and accepted, the application proceeds to registration. The registration process takes a minimum of about six months, but more often twelve to eighteen months.
Federal trademark registrations provide several key benefits, including:
As discussed above, trademark rights are obtained and maintained through proper and continuous use. In the fifth to sixth year after registration, you must renew the trademark registration by providing proof (a “specimen”) that you have used the mark in U.S. commerce. Thereafter, trademark registrations must be renewed every ten years from the date of registration, with similar proof of use.
After a trademark has been registered in the United States for five years, third-parties are no longer allowed to challenge the registration on certain grounds. Registrations may always be challenged on abandonment or fraud grounds, or because the mark has become generic. In addition, after five years of registration, a trademark registration can become “incontestable” if the registrant makes the appropriate filings between the fifth and sixth year after registration. “Incontestable” registrations can only be challenged on limited grounds and are entitled to heightened evidentiary presumptions in infringement actions.
To file an application in these territories, applicants need to provide a representation of the trademark, details of the products and/or services for which the mark is to be registered, as well as the applicant’s full name/company name and address.
When submitting an application in the UK, the applicant will need to sign a declaration that they are already using, or have a bone fide intention to use the trademark in relation to the goods or services applied for. No such declaration is required in the EU application.
In the EU, the trademark registration takes around six months whereas, in the UK, the process takes around four months, provided no office or third party objections are filed against the application. After an examination period, where the UK or EUIPO examines the inherent registrability of the mark, the trademark is published in the journal where third parties, including earlier rights holders, can object to the application based on their earlier rights. The UK and EUIPO do not examine an application against other marks already registered.
The application process in the EU and UK is highly similar, except in the EU there is a three-month opposition period, whereas in the UK, the opposition period is two months with a possibility to extend by one month.
As with the US, only once a trademark is registered can the ® symbol be used.
In the EU/UK, it is not necessary to provide evidence of use of a trademark registration; however, they become vulnerable to cancellation actions once they have been registered for a period of five years, and there are no proper reasons for non-use.
[1] 15 U.S.C. § 1052.
[2] In re Hinton, 116 USPQ2d 1051, 1055 (TTAB 2015).
[3] In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013).
[4] Trademark Manual of Examining Procedure (“TMEP”) § 1203.02(c).
[5] TMEP § 1210.01(a).
[6] Id. § 1210.04
[7] Id.
[8] In re Hutchinson Tech. Inc., 852 F.2d 552, 554 (Fed. Cir. 1988).
[9] TMEP § 1211.01.
[10] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992).
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