Tuesday, May 25, 2010

Food Industry trademarks

Many of my recent trademark filings have been for food products. Certainly in this highly competitive industry, a memorable name (to go along with a great product) can mean the difference between success and failure. Some common isues that have arisen in registration include:

1. Is the name sufficiently unique? It may not be enough that there are no other food related products that are similarly named. The trademark examining attorneys at the U. S. Patent and Trademrk Office will often raise flags on the grounds that the holder of an existing trademark, in an arguably related field, may want to expand. I recently confronted this in a matter involving a nutrition drink and a chiropractor. Because the chiropractor had a previously registered trademark in a portion of the phrase our client sought to use for a nutrition drink, and he used the trademark in connection with nutritional services he provided, the trademark examining attorney raised the possibility that the doctor might move into providing goods and issued a provisional refusal. The matter is yet to be resolved.

2. Is the proposed trademark simply a foreign word or phrase for a common English word? If the answer to the question posed is "yes", no trademark will issue (when proposed as a trademark for a related product or service). The USPTO requies you to provide the English translation of foreign words. One could not get a trademark for "Coche" for motor vehicles, as it is simply the Spanish word for car.

3. Is the proposed trademark the surname of a living person? If you intend to use a surname as a trademark (even if it is your own), you will need the permission of the living person whose name you are using. Permission has to be in writing and filed with the application.

A little advance planning (and searching) can go along way to mimimize these and other issues.

Monday, May 3, 2010

Consent or Coexistence Agreements

Your Acme Motor Oil can coexist with Acme Burgers and Acme Bulldozers with little pushback from the U.S. Patent and Trademark Office and little likelihood that any of the other Acmes has a legitimate complaint. Registration should be allowed. What about Acme Antifreeze?

Here you run in to the "Likelihood of Confusion" argument that is the the ban of a trademark attorney's exisitence. While in your mind there is no way that anyone could mix up the source of Acme Motor Oil and the source of Acme Antifreeze, since both are in the sphere of automotive products (both are engine area additives), the USPTO and your fellow Acme supplier may things differently. To mimimize the possibility of rejection and to prepare for the inevitable office action (a note from the Trademark Examining Attorney explaining the probable rejection of the Acme Oil trademark in the face of the Acme Antifreeze mark). you may want to seek an agreement with the owner of the the Antifreeze mark to consent to your use.

A propertly drafted consetn or coexistence agreement can go a long wany to meeting"likelihood of confusion" issues, but it is not a total panacea. There really needs to be some distinguishing features between the two products. For example, I doubt that any consent agreement could handle the confusion issues arising if Hostess, a maker of snack Cakes, had an agreement with the holder of the Hostess Cupcakes trademark. In addition to some distinctions between the two products, the agreement should cover efforst that the companies will make to avoid confusion, cooperatin in the event of confusion and dispute resolutions.

In the even a coexistence agreement would not work, a license agreement may.