Trademark and Trade Dress Build a Product’s Branding – That Adds Protection and Value to Your Company!

By Marc A. Scaringi, Esq.

I recently had a discussion with a client who owns a food manufacturing facility. He would like to trademark his new food product. His marketing team came up with a beautiful logo along with some key words such as Flavor and Heritage.

However, when these key marketing words were presented to me, I had to advise that we would likely not be able to register those words as trademarks because they are generic or descriptive. I explained that he needed to come up with a unique word to describe his product and also come up with a unique logo or symbol for his product.

For example, the Nabisco food company has a chocolate chip cookie product known as “Chips Ahoy!®” Chips Ahoy!® is a registered trademark owned by Nabisco. People know Chips Ahoy!® means a certain type of chocolate chip cookie. Now, had Nabisco tried to trademark the words Chocolate Chip Cookie, it would been declined because those words are descriptive – they describe the product. But, because the words Chips Ahoy!® -- identify without describing the product, there application was accepted and the mark was registered. The registration put Nabisco in a very strong position to assert its rights to that phrase.

McDonald’s is of course a retail fast food restaurant that sells hamburgers. It sells the Big Mac® for which it obtained a registered trademark. McDonald’s has fought many trademark infringement cases over the years because the Big Mac® has become so popular around the world. It has made McDonald’s a lot of money so McDonald’s spends a lot of money defending its mark. Incidentally, a few months ago it lost a case against the Irish restaurant chain called Supermacs. McDonald’s – in a decision that shocked the trademark word – lost because it could not show sufficient evidence that it used the mark to identify its burgers and generate burger sales. So, the rule is you must use your marks to identify your goods and keep sufficient proof of same, in the event a competitor comes along and challenges your registration on grounds of nonuse.

But, back to the main point, if you have a food product, or any product, you need to come up with a word that is unique and identifies your products; this is how you will protect the identity of your product from being ripped off by your competitors; this will also increase the value of your company. The goal is to have the average consumer see your logo or your words or tag line and immediately identify those symbols or words with your product.

Another tip is to think about how you package your product for sale. If you design a unique package you are likely to receive what is referred to as “Trade Dress” protection. Although it is not a trademark and there is no registration process for trade dress, the law affords protection for trade dress that is similar to the protection it provides for registered trademarks.

Think about Maker’s Mark® whisky. That’s the whisky company that has faux candlewax dripping down the top of its bottles. It gives them a unique look. You can be sitting at a bar and scanning the shelves behind the bar, and if you know something about whisky you will see that candlewax bottle top and you will know that’s Maker’s Mark®. That may result in you ordering a glass of that whisky. That shows there is great value to the company that manufactures the whisky and presents its product in that unique bottle, which we call trade dress.

If you own a food or beverage company or any company that makes a product or provides a service, you are well-advised to consider registering your logos, symbols, tag words as trademarks and service marks, and also to consider trade dress. If you would like to talk to an attorney about trademark law or business law, give me a call at 717-657-7770.