Beverage School: Trademarks

Speaker 1 [00:10] Next up we are very excited to introduce Amanda Roach and Angela Kalsi of Greensfelder talking about the often tricky world of trademarks. Very excited, thanks so much.

Amanda Roach [00:27] Hi everybody, thanks so much for sticking around for a little talk on trademarks. Um, my name is Amanda. Um, Angela and I have been working together for probably about 15 years at a variety of different firms. I know more lawyers, yay, um. But we'll make this fun, I promise. Um, basically we cut our teeth in the early days, um, representing Fortune 500 companies. So what we did was basically manage the trademark portfolios of companies that had 10+ trademarks, 10,000 trademarks plus per portfolio, um, so that was a very distinct, um, and necessary skill set. Nowadays though, we're really focusing on brands that are starting up and growing, um, who are very well who are funded are very well funded. It's our job to take those brands from maybe 0 12 trademarks all the way up to hundreds of trademarks because the point of a lot of our startup beverage companies is really to sell it to a bigger brand later on so that's really what we're focusing on so I'll let Angela take it from here.

Speaker 3 [01:34] Yeah, so you guys already know that your brand is one of the most valuable assets of your company, right? The legal aspects, uh, of that can sometimes be elusive. So our goal here is to spend the next 20 minutes basically just, uh, demystifying some of the legal practice around protecting your brand. Uh, and again, if we don't get to everything, we will, uh, be at the round tables at the end. Feel free to come up with your questions. So, zooming out for a second, where do trademarks fit in the broader scheme of intellectual property? Uh, so you've got patents, they protect inventions, copyrights protect expressive works, everything from music to art to software code. Uh, but both of these are finite. They eventually expire and the work goes into the public domain. Not trademarks. Uh, trademarks are different in that respect, and it makes them one of the most powerful types of intellectual property for your company to hold, because trademarks can last potentially forever. Uh, what are trademarks? Well, it's anything that identifies the source of your company, uh, as the originator of your products, and that sounds super vague because it is. Trademarks can actually be anything, which Amanda will describe,

Amanda Roach [02:59] right? So the whole point behind a trademark is that you want a consumer to walk into the grocery store. And you want that consumer to look on the shelves and see your brand and automatically think of your company. That is the point of trademarks. So what is a trademark? Well, a trademark can be any one of these things that are on this list, and this is not a finite list, um, and don't get scared if you're out there building your brand. You don't need all of these different kinds of trademarks in order to build a strong portfolio. Um, if we stick to the left, so the left column. Um, we use Nike as an example because they have done a really excellent job of obviously creating brands that really point back to Nike as the company. Obviously you're out in the world, you see the word Nike. What do you think? I'm gonna get a great pair of shoes. You hear the word Air Jordan, same thing. You hear Air Jordan, you're gonna think Nike. You see the swoop, you hear the phrase just do it, you're thinking Nike. Nike also went so far as to get a trademark on the bottom of their shoes, so that tread on the bottom of a Nike shoe. is actually a trademark. It's a source identifier, and that's really smart because Nike sometimes sells things in China and as you may know, China is kind of one of those ripe jurisdictions for counterfeiting. So if you're ordering your Nikes off of Alibaba, you can actually turn that shoe over and if you don't see this tread, you probably have a counterfeit good. So that's one of the reasons that Nike has gone so far is to register the tread on the bottom of that. Some other kind of more fun ones are color. Tiffany Company, the jewelry company, has registered this this particular color of blue because they want you to know if you see the little blue box you're gonna get a very um well respected piece of jewelry if probably overpriced, but that's another story. Um, Netflix, you could be anywhere in your house, and if you hear the kung, you know that somebody is basically logging into their Netflix account to watch Stranger Things. Smells another great one, and every parent in this audience I know knows the smell of Play-Doh. We all want to forget it, but as much as we try, we can't. That was by design because Play-Doh actually has a trademark on the smell of their product. Motion, I think I'm losing my mic here. Are we good? OK, motion is another really good one and yes we realized we misspelled Lamborghini as Lamborghini. We're trying to be super Italian right now. I'm sorry, um, but Lamborghini actually wanted to make themselves stand out among the, the, the supercar industry. So what they did is they're like, hey. Let's get a trademark on the the the way the doors look when they open and close. It's the scissor door motion. So if you're at a super fancy party in Hollywood, you see a supercar with the doors that go up and down like this, the idea is that you'll think you'll see that you'll think Lamborghini.

Speaker 3 [06:01] OK, so basically anything under the sun can function as a trademark, but you're probably thinking, OK, I've got my business name, I've got maybe a slogan, maybe a logo, maybe some product names. Why register them? Uh, and it's a good question because, uh, you do have trademark rights simply by virtue of using your brand out in the market. They're called common law rights, and it gives you a certain amount of protection. However, that protection is limited, and there are significant benefits that come from registering your trademarks with the US Patent and Trademark Office. Just very briefly, it's notice to the world that this is your trademark. It also serves as an automatic presumption of your trademark's validity and your exclusive ownership over it. That means if you end up in court, you don't have to prove that this is a valid trademark. You don't have to prove that no one else has it. That piece of paper from the trademark office, your registration registration certificate, proves just that. Of course, it's useful if you need to file suit in federal court. You can use it to extend protection overseas. You can file it with customs to try and stop counterfeits. And of course, everyone here who sells their goods on Amazon knows how important it is to have the federal trademark number when you are setting up your business using the Amazon brand registry. Uh, but of course, I think the most common benefit that people ask about is use of the registration symbol. So this is one of the questions we get most often. What is the difference between the TM symbol and the circle R registration symbol? So the TM you can use that immediately. In fact, all of you should be using the TM symbol with your goods, whether or not your marks are registered, because it's, uh, it pertains to those common law rights I was talking about. It just says to the world, I claim this is my trademark, you cannot use it. That said, customers notice when you've got the registration symbol. You know, it says you've taken the step of protecting and registering your brand, and there are actually laws around improper use of it. So it is really important to get your marks registered before you use that symbol. But again, it's one of the key benefits. So, actually, a little shout out here to one of our clients, uh, Dela Cye. They gave us permission to use some of their examples in today's presentation, uh, little case studies as we go along. Um, but basically, you, you've decided, yeah, I do want to file my trademarks. What should I be thinking about? The two main hurdles. Number 1, pick a mark that is distinctive. Number 2, pick a mark that no one else has. And we're going to be hitting on those two factors throughout this presentation, so we'll definitely come back to those in more detail. But what about some of the nitty gritty? A lot of the time we get this question, OK, we've got it in the budget to file one trademark now. Should we just do the words alone or our logo? 99% of the time you want to file the wordmark. That's because the trademark office considers wordmark registrations to encompass all different fonts, all different stylizations. It's really broad protection. You can present that mark however you want to, and it's protected. Similarly, uh, color versus black and white, we get that question a lot. Black and white is almost always the best bet because the trademark office considers that to encompass all possible color combinations. So, especially, uh, you know, as you're building your brand, you know that logos change. You may change the color scheme, you may tweak things. It's best to have the broadest possible protection with that first trademark filing you make. Uh, again, house mark versus product names. That one's pretty obvious, right? It's most important to protect your house brand. What's going to be the main thing customers associate with you and your company? Product names, a lot of times can be, uh, on the descriptive side. So that can uh lead to some pitfalls when it comes to trademark protection as well.

Amanda Roach [10:21] Right, so as Angela was saying, um, one of the main things we wanna do is when you're filing your trademark we really wanna make sure that your mark does not describe the goods that you're claiming um we have clients come to us all the time and say I want my client to walk into the store and I want them to see my brand and know exactly what I'm selling. And it, it makes sense, right? Make, make, makes sense to me. Like it, it's, it's, it's good sense, but legally speaking from a trademark perspective it's kind of the opposite. The further away your trademark is from what you're actually doing, the more protectable it is, um, so this is what we call the spectrum of distinctiveness and what I really want you guys to take away from this is state of the right of the red line when you're selecting your new brands because. Distinctiveness is a yes or no question, but there are levels of distinctiveness. We want to stay away from generic marks because nobody in the entire world can ever register a mark for hand sanitizer covering hand sanitizer. Why? Because everybody in the hand sanitizer industry should be able to use the word hand sanitizer for their hand sanitizer without getting in trouble with anybody. Descriptive is kind of the same thing. So descriptiveness, descriptive marks actually describe what you're doing in the goods. And services, so these companies listed below are companies that actually were able to get a descriptive term or phrase registered for their trademark, but just so you know it takes a really long time to do this. You have to really be able to show use. You have to be able to show that association between the consumer's mind and your company. It's kind of a long game that you're playing with descriptive marks if you can get them. Um, some examples, obviously, Whole Foods Market for grocery stores selling Whole Foods. American Airlines is registered for an American-based airline service. Um, again, these companies were able to do it, but these marks aren't necessarily considered strong. So then we're gonna go to suggestive. So suggestive, suggestive marks are fun because, yeah, they're not really describing what you're doing, but they leave little tiny bread crumbs. So it's like little kind of hints in the consumer's mind where consumers have to do these kind of mental gymnastics to kind of be like, oh, that's what that trademark is. I get it now. I know what they're offering. Great example, Netflix for a service, uh, for the services to stream movies over the internet. You have Net for Internet, you have flick for movies, put them together and you have Netflix. That's a suggestive mark. Arbitrary marks are words that come right out of the dictionary. These are, you can find them in any Merriam-Webster, but the way that these companies are using them have absolutely nothing to do with what they mean. So Dove for chocolate, gray goose for vodka. My favorite, Apple for computers. 40 years ago, nobody would have seen an Apple and automatically thought to look at their phones, right? Like today, that's all we do. We, we hear Apple, we look at our phone. Fanciful is the most protectable category of trademarks, and these are words that basically didn't exist before somebody came up with the idea to use them as a trademark. Starbucks for coffee, Caribou for candy. So why is this important? It's important because the more distinctive your trademark is, the easier it is to protect over time. Trademarks, when you get to registration, you know, we'd like to say your, your trademark is not a 1990s Meg Ryan rom-com. like happily ever after doesn't end at registration. You're gonna have to use that mark and you're gonna have to keep doing some work with it. To keep it live and protectable and awesome, so the more you can come to the right side of the line, the easier that job is because it's less likely people are going to just pick that certain phrase out of nowhere and use it for their own goods and services and if you're looking to be bought, companies also know this like they know that the stronger your trademark is on this distinctiveness spectrum, the easier it will be for them. To be able to keep that mark over time, use it, um, and continue to keep it strong. OK, so now we know what we're doing. So we have the trademark, we have the name, we're ready to go. So a lot of our clients always say, OK, when should we start thinking about filing a trademark? And our answer is always yesterday. That's because the average time from application to registration in the United States right now is taking 12 to 18 months. Right, it's awful. Um, so we do have clients who come to us and they're like, look, we're launching this new product name in a month, we need to get the trademark now, now, now, and we're like, yeah, that's not gonna happen. I'm so sorry, not gonna happen. Um, it's just because the USPTO is very, very backed up right now. But just so you know, this is kind of the timeline, uh, well, the, the steps you're going to have to go through between application and registration, and we're going to get to these in a second. The first one is search. So searching's not required, but it is something we highly recommend and here's why it's because you really wanna know walking into that trademark registration if there could be any issues with your mark. So what we do is we try to search through the United States patent and trademark records to try to find any marks that are close to yours, um, or maybe claim the same goods and services that could potentially block your registration path. Um, we also try to screen for descriptiveness, which was that last slide. So we try to give you some sort of assessment on, you know, do we think your marks are going to get a hit for being too descriptive for your goods and services.

Speaker 3 [16:13] So you've searched your mark. Hopefully it's clear. Time to file. Uh, it's pretty straightforward to trademark application at the USPTO. You can see, uh, up on the screen, we've got again an example of de la Calle. They're here this weekend, so say hi to them, try their beverages. They're amazing. Um, but basically, yeah, what goes into this, um, trademark application, you've got the name of the applicant, you've got the mark itself. You can see the example here, they went with the word mark for broadest protection, very smart, they must have had good trademark attorneys. Um, Intent to use versus use based so you can actually file a trademark before you've started using it, and that's extremely powerful because it allows you to secure rights in a name, protect it so that no one else can use it even before you've launched. Uh, goods and services must be claimed in an application as well, and sometimes that can get a little tricky. Uh, so the entire world of products and services are categorized into one of 45 different classes in the world of trademarks. Beverages are usually in 32 or 29 or sometimes 30, um, but it's important to know that you should think carefully about what you claim. Number one, because you can't simply claim beverages. The USPTO won't allow it. They require, um, quite a lot of specificity actually in describing what your drinks are. Uh, and sometimes that can lead to problems because if you go super broad, say I want to claim absolutely every beverage that is possible to claim in Class 32. Well, you know, that's, that may sound like smart strategy, but at the end of the day, you have to show use on every single one of those. And if that's not realistic, why are you creating the headache for yourself at time of filing, knowing you're not going to be able to submit those examples, uh, down the line? And you may think, yeah, sure, I can delete them later, but also if you go unnecessarily broad, you may end up running into an issue with prior trademark covering that category of drinks, and you're not even planning on doing that, but all of a sudden you've got a dispute with them because you tried to go super broad with your filing. The other side of that coin is if you go too narrow, say you've claimed, uh, you know, fruit flavored beverages, and then next thing you know you put out a drink that's not a fruit flavor, well, your registration doesn't cover that. So it is doing a little bit of a dance to come up with the description that is going to be most appropriate for your trademark filing. Uh, and finally, one last thought on the goods description. Uh, trademarks sometimes will, uh, run into issues with FDA or regulatory issues. For example, if you've got the word organic in the name of your brand, you better make sure the goods that you claim in your application are described as organic, uh, because the USPTO does look for that. All right, so you filed your application. You're going to wait 8 or 9 months before you hear anything at all from the trademark office. As Amanda mentioned, it's super backlogged right now, so that's a long time to wait if you're wanting to get a trademark secured before you launch your product. The good news is if you search and file early, that does provide a certain amount of protection so that you can move forward with confidence even while you're waiting for the slow process at the trademark office. But that brings us to examination that 9, 10 months have passed, you get your first, your first examination report from the trademark office. Now, all of you are here because you are deeply invested in your brands, and I would venture to guess that some of you are already in this process. Maybe you've reached examination and maybe you've received one of the two deadliest types of refusals that are out there. The first one, likelihood of confusion. There is a trademark already on the register that is too close to yours. Number 2, descriptiveness. Your trademark is too descriptive. Think about the spectrum Amanda just went over, uh, to function as a trademark. So these are scary refusals. They can sometimes be the end of the road, uh, but not always, because there are a lot of tricks, strategies, uh, arguments that can go into circumventing. These refusals and unfortunately we don't have time to go into our lovely case studies from uh our friends de la Calle, but, but certainly come find us at the round tables. We'd be happy to talk about how we get around these issues when they crop up because uh they can seem very gnarly, but it's not the, not the end of the story if you get one of those refusals.

Amanda Roach [21:04] So let's say that you've been through examination and you've gotten your office action and you and your lawyers talked and you were able to provide a great response. So now you're through examination, you're to publication. Congratulations, you have now overcome probably the biggest hurdle that exists with trademark registration. Um, publication is this tiny little 30-day period. It is required for all trademarks in the United States and it's also actually required for all, basically all trademarks you file abroad in different patent and trademark offices. But it's basically a, it's a 30-day period where anybody who, who wants to can actually raise their hand and say, I don't want this trademark to register for X, Y, Z reasons. And you know, uh, yeah, it sounds kind of scary, but like 90% of the trademarks that we handle get through this period with absolutely no issues, um, but it is something that you should know exists, um, you know, somebody can definitely raise their hand and say I want to oppose your mark and if that happens, if you have counsel, your lawyer's gonna inform you like, OK, your mark got opposed, here's what we do and it's a new fight you have, but it's not necessarily the end of the road. But just so you know, it's there, it exists. What to remember? Most trademarks make their way through with no issues. So then we get through publication and we arrive at the last stage before registration called the notice of allowance phase. So as we were kind of talking about and alluding to before, um, use in the United States for trademarks is king, and this is really what separates the United States from basically trademarks in the entire rest of the world. In the United States, you really can't get a trademark under most circumstances unless you're using the mark first and unless you prove to the PTO that you're actually using the mark. OK. So what does it look like to prove to the PTO that you're actually using the mark? Well, we have to submit a specimen. So we have to submit, um, an example of exactly what your mark looks like in commerce, like how are you using it? how are you selling it? The most common example, especially in the beverage industry, is to go on a website and your website and take a screenshot of your website and it should show the product so we know it's a beverage. It should show the mark and it should show an add to cart button. That's a pretty perfect example of, um. What a good specimen for use purposes looks like we also have to let the patent and Trademark Office know like this is when we started using the mark and when is a little tricky. Like they want to know when you first sold your first product so you know you sold it at you know your local uh beverage store. Um, you know, two doors down from your house, but then they also need to know when you started selling it for our purposes across state lines, across lines that are controlled by Congress. So we basically asked our clients, OK, when did you guys start selling it across state lines? So we give them the specimen, we give them the date of that first sale across state lines, and you're done. So what happens if you're like, oh my God, Amanda, I don't have use yet, we're not launching for another 1 year, we have this deadline. What am I gonna do? Don't panic. We have 3 years to do this. You can actually extend this deadline for up to 3 years. So yeah, it's, it's a long game, but then again, you do have time in order to kind of get your ducks in a row and make sure you're really ready to sell your product, um, and then once you do that and once it's accepted.

Speaker 3 [24:25] All right, you get through all those steps and congratulations, you've got your registration certificate. You can use the circle R. So end of the story, happy ending? No. Uh, the trademark office does require maintenance filings, renewals. You have to continually give examples of use to show the trademark office your trademark registration should be maintained. The first one is at 6 years, the second one's at 10 years, and then every 10 years after that. Um, but remember what I said at the top, trademarks can last forever. So as long as you are using that trademark, that registration will endure. But, uh, yeah, you can also lose a trademark. Uh, the biggest way is to stop using it. Uh, don't, you don't use it, you lose it. Uh, and this can also happen by failure to enforce the trademark. Like if you're letting your competitors rip off your brand or, uh, you know, mimic what you're doing, you're gonna diminish your trademark rights over time. So it's important not only to protect your marks, but also to enforce them. You can also lose your trademark by, you know, not being careful with how you license it. If there's not appropriate quality control, you're just letting folks use it left and right, you can lose that trademark. Same with assignments. If you do not do the assignment correctly, that trademark can die. Uh, and then the most fun way to lose a trademark, not fun for the brand owners, but, uh, sometimes a trademark can become so ubiquitous that it becomes the generic name for the trademark itself, or, or for the product itself. Uh, so linoleum, trampoline, kerosene, all of these used to be registered trademarks, and of course, now they're just the name we use for those things. Uh, obviously that's not something that's going to immediately be on your radar as you're launching a brand, but, uh, you know, you can bet that Xerox, Kleenex, Band-Aid, uh, those are all companies that are very carefully paying attention to this issue. So yes, you want your name to take off, become so popular that everyone's using it, but you don't want it to become generic.

Amanda Roach [26:49] My son actually came up to me the other day and he's like, Mom, I need a band-aid. I was like, No, no, no, no, you don't. You need a Band-Aid brand bandage. I mean, as the nerdy trademark attorney that I am.

Speaker 3 [27:02] Uh And then with our last couple of minutes, we just want to talk about the rest of the world because you know we have a global economy, you need to file your trademarks overseas may come a lot sooner than you realize. And the really important, uh, takeaway here is that, like Amanda said earlier, use is king when it comes to trademark law in the US. That is not the case in almost the entire rest of the world. The rest of the world follows a first to file system. So the first company to file for that trademark gets it, whether or not they're actually using it, whether or not you were using it first. So, Really important to consider international markets as early as possible because it's better to secure a trademark there, make sure you have it, and make sure it's not a competitor or an infringer or a counterfeiter who gets to that trademark office first. And there are, uh, a variety, a variety of, uh, international treaties and strategies that we recommend when you're trying to figure out where to start with global expansion. But again, like, come talk to us at the round tables, we'll be happy to go in-depth a little bit more about that.

Amanda Roach [28:17] OK, so final thoughts. I mean, the basic thing to take away from here is that no one size fits all. I mean, every company has its different needs, um, it's different growth, it's different needs for expansion, but, um, you know, bottom line is it really really is smart to find competent trademark counsel in order to walk you through this process, um. And that's really it. Um, I mean, I hope you guys have enjoyed our, our presentation and if you need to get in touch, there's our QRs, we're going to be at the round tables later. I think we have two round tables, which is a little funny, but like, so we're both available to talk if you guys want to talk. So thanks so much.