By Jordan Greenberger, Esq.
You have been making a delicious and unique food or beverage that your friends and family love, and recently quit your day job to focus your energies on commercializing the product and bringing it to market. You have contracts with vendors for the raw ingredients, are perfecting a scalable recipe at a commercial kitchen, and are in negotiations with buyers. You know that your product is going to sell like crazy because the flavors are irresistible, the quality is top-notch, and you have just landed upon just the darndest name, logo, and packaging to attract your ideal consumers. In fact, you are about to write huge checks to the label printer and packaging manufacturer, whose work will ensure that your new brand flies off of the shelves.
Unless you have already considered intellectual property issues relating to your product and new brand, I would advise you to put down your pen and make sure you have covered your legal bases. What you need at this point is a legal shield to protect your brand, product, and intellectual property. Copyrights and trademarks are often an extremely valuable asset for food and beverage companies. And making sure you have them at the outset can save you a lot of time, money, energy, and frustration.
Here are five things about intellectual property to consider as you prepare to bring your product to market.
1. The “Secret” Recipe. While your recipe might not (yet) be as valuable as the recipe for Coca-Cola or the Colonel’s fried chicken, it still is the foundation of your product and may qualify as a trade-secret. There are various laws protecting trade-secrets, but as its name implies protection applies only if the proprietary information is actually “secret.” Whether it is kept in a locked file cabinet or on a password protected flash drive, limit who has access to the recipe and keep it under wraps. And if you are contracting production to an outside manufacturer, consider including in your agreement terms that address their non-disclosure obligations and restrictions on their ability to compete with you after the contract ends. Also, consider limiting what labeling regulations permit you to disclose about the ingredients in your product (e.g., “natural spices”). Let consumers and your competitors know the secret in the sauce only when they buy your cookbook.
2. Branding. Trademarks – which include words, logos, colors, sounds, or even the “dress” of a product like the distinctive shape of a bottle – identify the source of goods and services. Before deciding on your brand, consider its “strength” under trademark law, which bears upon the marks performance in the market and the scope of legal protection to which the mark is entitled. Is the mark merely descriptive (“creamy” for ice-cream)? Suggestive of the nature of the product (“bee juice” for honey)? Arbitrary in connection with the product (“Anchor” for beer)? Fanciful or made up (“Ooglekaflooble” for, well, anything). Also before deciding on the mark, consider what other marks are out there for the same or similar products. Then you can avoid investing in a name, logo, or distinctive trade-dress that someone else is already using. Otherwise, you run the risk of facing accusations of trademark infringement, which could arise if there is a likelihood of confusion between your mark and another trademark.
3. Advertising. Thinking about hiring a photographer to shoot an advertisement with a celebrity holding your product with some graffiti in the background? This scenario touches upon both copyright and “right of publicity” issues. As to copyright, federal law protects original works of authorship, including photographs and graffiti. Yes, graffiti; meaning, use of the graffiti in the background of the advertisement without the artist’s permission might constitute copyright infringement. Also, who owns the copyright in the photograph, the photographer (who took the picture) or you (who commissioned the work)? Although the photograph was specially ordered or commissioned for the project, it may not be deemed a “work made for hire” absent a signed agreement to that effect. And as to the celebrity in the foreground holding your product, did you obtain her permission to use her likeness for commercial purposes? Whether famous or not, failure to obtain a person’s permission to use their name, image or likeness for commercial purposes may be a violation of their right of publicity.
4. Registration. A common misconception is that a federal registration is required in order to have a copyright or trademark. Copyright protection in the hand-drawn intricate artwork on your label attaches the moment pen is put to paper. Similarly, protection of your mark or symbol attaches when the mark is used in commerce. Thus, registration is not required, but it does provide certain benefits. For example, registration may be used as proof of who owns the intellectual property, and of the scope of the owner’s exclusive rights. Also, registration may permit you to obtain enhanced remedies if you were to succeed in a lawsuit, such as recovery of your attorney’s fees. There are other benefits to registration, including if you are concerned about growing your brand internationally or preventing counterfeits from being imported.
5. Uh-oh. You are in business. Disputes will arise. If not privately resolved, they may end up in court. Your company is thriving, and wait, what’s that, a new start-up is making a virtually identical product being sold under a logo that is similar to yours? Or alternatively, your past comes out of the woodwork. Like, your former business partner who claims to own the recipe, and your college roommate whose nickname, like your new product’s name, was “Ooglekaflooble.” Moreover, dollars being spent on your new product may mean less dollars going into the pockets of another food/beverage brand, who might believe you are trying to capitalize upon their prior hard work. It happens. But such disputes can be avoided, or at least mitigated, when you get your ducks in a row at the beginning.
Jordan Greenberger (www.jgreenbergerlaw.com) is a Brooklyn-based attorney who focuses his practice on intellectual property law. Jordan represents clients in copyright, trademark, litigation, and transactional matters.