Date: Sep 02, 2014
Magazine:
September 2014 -- WG Annual Meeting to be Held in Vegas

By Robert Payne

Why would a grower register a trademark for RED COACH for fresh vegetables, or another grower register FAST & FRESH for fresh vegetables?  Two words:  origin and trust.  Each wants consumers to begin associating that branded vegetable with only one origin or source: them.  Each wants consumers to trust in the quality and consistency of the vegetables they produce, bearing that trademark.  Each wants consumers to seek out and look for their brand.

Trademarks provide a consistent pledge from a company and a symbol of the company.  It is a bridge to a relationship and customer loyalty.  Trademarks come in several forms.  It would be a simple word or collection of words, such as the above.  It could be a slogan (McDonald’s “I’m lovin’ it®”).  There could be a logo or design, alone or with words.  There could be product shape and even sounds and colors.

OK.  You believe in trademarks.  Now what?  There are two main things, for starters: selecting the mark and seeking necessary legal protection for the trademark.

 

SELECTING THE MARK

In selecting the trademark, there are certain commercial instincts and realities that may guide you.  You may be tempted to pick a mark that describes its best feature.  Logically, this may make sense, in calling out what you want consumers to notice first.  However, legally, that does not make the strongest trademark.

Trademarks have varying “strengths.”  The point of trademarks is to indicate your origin and build trust.  One thing you don’t want is for another to play off that trust by picking a mark too close to yours.  How close they can get depends on the strength of your mark.  If your mark is weak, a competitor can get pretty close without infringing your rights.  Thus, for example, a mark of ALL ORGANIC describes both the owner’s product and many other organic products.  Without additional burdens of proof, it does not prevent others from using “All” or “Organic” in their own marks, and may not even qualify for trademark protection at all.  A totally arbitrary mark that does not describe or suggest qualities of the product, like UNICORN for strawberries, would have much greater legal strength.  It would likely prevent others from using the same word formatives or plays off the word.

In trademark law, we classify the strength of marks along a gradient.  “Generic” marks (like APPLE for an apple) are not protectable — it is the thing itself, not an adjective describing a source of products.  “Descriptive marks” like ALL ORGANIC are legally suspect.  We say there is no inherent right to protection from use of such marks, because they are not inherently distinctive.  Without distinctiveness — distinguishing the source of your products from that of another — there can be no recognized trademark protection.  Thus, using a weak, descriptive mark puts the owner in the position of having to prove that distinctive meaning was developed through the owners use, i.e., secondarily over time.

Inherently distinctive marks, on the other hand, require no such proof.  From the trademark lawyer’s point of view, therefore, this is more easily enforced.  Trademarks which merely suggest or hint at qualities (Coppertone for tanning) are good.  Better than “suggestive marks” along this gradient are marks which are “fanciful” or “arbitrary.”  These are the gold standard.

 

SEEKING LEGAL PROTECTION

There’s not too much point in selecting a trademark unless you want to protect it from other’s misuse or infringement.  The whole point is to preserve the distinctiveness of the mark, to avoid confusion in the marketplace with the competition, to establish origin (it came from you) and trust (they can rely on its quality).  On the front end, that should involve seeking a trademark registration with the U.S. Patent and Trademark Office.  While registration is not legally required to acquire some lesser trademark rights, it serves several important functions:  it puts all on notice — on a nationally published register — that you claim exclusive rights to your mark for the goods involved.  It deters potential infringers.  It gives you national protection, not simply in portion of your state or states where you currently sell.  It provides important evidentiary presumptions of your superior rights if you need to challenge someone who adopts a confusingly similar trademark down the road.

The process for applying for trademark registration is often done with intellectual property lawyers.  It involves clearance efforts to ensure the mark is available for registration and gathering the necessary specimens and information to file a trademark application.

That’s the front end of the legal process.  However, your goal is to protect your trademark from infringers: To preserve the distinctiveness of the mark, to avoid confusion in the marketplace, and to maintain that hard-earned consumer trust and indication of origin.  That means you need to monitor the marketplace, taking note of anyone who starts using confusingly similar trademarks — wittingly or unwittingly — to products like yours.  When you find something of concern, the careful thing to do is to bring it to the attention of your trademark attorney.  You want to be sure, for example, that the other party (somehow) doesn’t have priority over your mark, before you start complaining!  The typical next step, if there is no such priority problem, is to have your attorney write a letter asking the other party to stop using the mark.

With vigilance and firmness, that generally should be all you have to worry about.  And if your goal is to preserve the distinctiveness of the mark, develop consumer awareness that you are the source, avoid confusion and to maintain consumer trust, it’s the least you should do.

 

Robert Payne is a partner at the intellectual property law firm of LaRiviere, Grubman & Payne, LLP (www.lgpatlaw.com), in Monterey, California.  Email: rpayne@lgpatlaw.com

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