The potentially less fun part of creating a brand is navigating legal territory.
At this week’s FoodBev Exchange event in Chicago, organized by Momentum, intellectual property (IP) attorney Janet Garetto, a partner at global law firm Nixon Peabody LLP, spoke on a panel about IP protection strategies for food manufacturers.
She sat down one-on-one with FoodNavigator-USA and talked through questions brand owners should ask before they embark on their brand-building journeys. The information here is provided for informational purposes only, and should not be construed as legal advice:
What are the basics to start with in navigating the legal waters of intellectual property?
Whether you’re big or small, you have to go through this exercise: The questions you need to ask are ‘Can I use the mark without infringing someone else’s rights, and can I protect the mark for myself?
You have to select marks that make sense—you want to pick a mark that’s available, so it’s not going to be too close to someone else’s prior mark.
If you can, pick a more protectable mark. Let’s say you’re in the beverage space, and you want to call your product Fizzy or Bubbly. Well that describes a property of a beverage. Not that it’s impossible to protect it, it just makes it more difficult because it’s not as strong as a brand to select from the onset, and it’s potentially more possible that someone’s already out there that thought of said property already.
Would a visit to the US trademark or patent database online be enough to know what you can or can’t use?
The United States is unusual because we allow people to have rights through use, it’s called Common Law rights. So if you decided to start using a brand name, let’s say Oreo, did someone already register something that’s close to Oreo?
But you also have to go out and look at activity that’s going on in the marketplace. Is someone using something close to Oreo? Even if they didn’t register it, but they’re using it, they could stop you from having rights. So it’s a more complicated analysis than in some other countries.
I recommend that you do basic internet searching, so you can quickly see if somebody’s using something that’s potentially close to the mark you’re thinking of using.
What are the benefits of getting your IP sorted out early on?
Small companies, maybe they don’t have as much funding to sort all of this out, but the most important rights that companies often have in the early stages are related to their IP.
If you file trademark applications or you file patent applications, those rights really help you in launching and then seeking funding as you’re trying to create a start-up. You really need to take these sorts of analyses early on so that you’re investing in something that’s your own.
So you’re not going to have the problem of someone challenging you, and you’re investing in something that you can protect yourself.