Keep What’s Yours: Protecting your Brand with Trademarks

June 16, 2021

(originally published at https://startupcpg.com/spotlight/f/keep-what%E2%80%99s-yours-protecting-your-brand-with-trademarks)

Suzann Moskowitz is the owner of a boutique law practice, The Moskowitz Firm, focused on brand protection, copyright, and related technology and licensing issues. For nearly two decades, Suzann has worked closely with creative entrepreneurs, technology start-ups, foodie founders, and companies large and small to protect their valuable intellectual property and to navigate evolving legal landscapes. 

With so many to-dos between hatching a name and landing on a shelf, it can be easy to overlook the importance of formal brand protection.

Securing your CPG brand with a federal registration at the United States Patent and Trademark Office (“USPTO”) is a relatively simple process with significant returns. It demonstrates a level of seriousness to potential investors and retailers and can also avert costly copycat situations. 

To illustrate what CPGs should know about intellectual property (IP) protections, including trademark (brand, logo, slogan) and copyright (website, social, package content) issues, this Spotlight series will follow the journey of the fictional plant-based brand, ChickTwin and its founders, the “CT Duo.” In this installment we will learn the value of a registered trademark and outline the steps of in this process. 

1. Why are Trademarks Important to CPG Companies?

Though a brand “exists” even before you announce it, valuable intellectual property rights start with federal registration at the USPTO, which entails completing paperwork and paying government fees starting at $250. Filing does not require an attorney, but it can help.

A registered trademark is like an insurance policy that reduces the costs of enforcing IP rights and strongly deters copycats. By being searchable in the database of registered marks, you put others on notice of your prior rights, and in most cases, the USPTO will kick out any attempts to file anything confusingly similar. 

For those who try to copy despite this protection, registration provides access to federal courts and enhanced remedies, not to mention first dibs on domain names as well as e-commerce and social media platforms. While the registration certificate looks spiffy in a frame, the presence of the ® symbol is a sign of seriousness to retailers and investors.

2. What Makes a “Good” TM?

Marketing advice and gut feelings have the greatest influence when choosing a brand name, but two main factors come into play when it comes to protecting a trademark: 

  • Is it *creative* enough? The USPTO won’t grant a registration to a totally generic/literal brand, like CHICKEN NUGGET, and it will give only limited protection to descriptive brands like CHICK’N NOODLES. Adding a fanciful or arbitrary word like ZOOBI or ZOMBIE to CHICKEN TENDERS helps, but only the creative word is fully protected. In terms of creativity, the CT Duo succeeded with ChickTwin, but, as this series will reveal, that’s not the end of the story.
  • Is it *available* for use? Though the first thing to check is if another party already has a USPTO registration for the exact or similar mark, that’s not the end of the analysis. The question is whether there’s a “Likelihood of Confusion” with another mark, i.e., could a typical consumer (distracted parent responding to texts while walking down the Whole Foods® freezer aisle) be confused into thinking your proposed brand is somehow related to another brand – even if it’s not the same exact product. The CT Duo were disappointed that their first choice, Chick-Fil-N/A, was too risky, but searched diligently until a better option emerged.

While there are other reasons the USPTO can refuse a mark (like “deceptiveness,” e.g., calling a conventional product OrganikChick), creativity and third-party use are the big issues, which can usually be identified through a proper risk-assessment search, ideally BEFORE a major investment (emotional and otherwise) in the brand.

3. Is a Clearance Search Necessary?

Though formal searching is optional, even a quick “knockout” search helps owners rule out brands which are likely to be refused (potentially preventing the anguish of finding this out several months after filing and announcing a launch). A more thorough search provides strategic insights about competitors and leads to useful intel like “this might work for a frozen nugget but never a kitchen gadget or restaurant name.” While it’s sensible to start with DIY digging like USPTO’s TESS database + a web search, human lawyers using licensed software tools and other tricks can efficiently review lists of similar marks for similar goods and give honest assessments about the risks of moving forward.  

The CT Duo felt confident about the ChickTwin name based on the results of a clearance search conducted by counsel, but struggled with the next steps (forcing them to contend with another company that filed a similar name first – which a future installment of this series will describe).

4. How do you Register?

Once a name is selected, it’s time to make a choice: file before launch (“Intent to Use” or “ITU”) or wait until you’re already selling/shipping in multiple states (“In Use”). Either way, the USPTO fee is usually $250 per class. (But in some cases- like a unique product description- paying the $350 fee for custom filing is justified.) Because ITU applications hold your place in line, the only downside is a small additional USPTO fee ($100 per class) to eventually submit proof of interstate use. 

Start to finish, without third party objections, the process can wrap up in under a year, but Office Actions (inquiries from the USPTO) and delayed sales can push that timing significantly. (The USPTO posts user-friendly content about the process and timeframes, and this series will highlight special timing considerations for food startups eager to launch.) While A DIY approach can be successful, experienced trademark counsel can improve the odds of getting that coveted certificate. Once registered, a brand can proudly upgrade from the tm to the ® symbol, and grow with confidence. 

Stay tuned as we continue our trademark and copyright protection journey with the CT Duo and find out what they learn along the way!

This article is provided for informational purposes only, and should not be construed as legal advice.