Protecting IP Rights in the Food and Beverage Industry Leveraging Trademarks, Copyrights and Patents to Protect IP From Product Development to Marketplace Delivery Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1. TUESDAY, APRIL 9, 2019 Presenting a live 90-minute webinar with interactive Q&A Christopher M. King, Senior Counsel, Foley & Lardner, Milwaukee Sheila Fox Morrison, Partner, Davis Wright Tremaine, Portland, Ore. Abigail J. Remore, Counsel, Chiesa Shahinian & Giantomasi, West Orange, N.J.
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Protecting IP Rights in the Food and
Beverage IndustryLeveraging Trademarks, Copyrights and Patents to Protect IP From
The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1.
TUESDAY, APRIL 9, 2019
Presenting a live 90-minute webinar with interactive Q&A
Christopher M. King, Senior Counsel, Foley & Lardner, Milwaukee
Sheila Fox Morrison, Partner, Davis Wright Tremaine, Portland, Ore.
Abigail J. Remore, Counsel, Chiesa Shahinian & Giantomasi, West Orange, N.J.
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Protecting IP Rights in the Food & Beverage Industry
Innovations can be used to distinguish products from competitors
IP protections for innovations create effective barriers to competition
Functional Innovations – protected via Utility Patents and Trade Secrets
Ornamental, Non-Functional Innovations – protected via Design Patents, Trademarks, and Copyrights
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Basic Types of IP Rights
Patents
Trade Secrets
Trademarks
Copyrights
Inventions (patents)
Designs (patents & trade dress)
Confidential Information (trade secrets
Brands & Logos (trademarks)
Writings, Drawings, & Software (copyrights)
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Layers of IP Protection
New Product
Trade Secret
Copyright
Trademark
Design Patent & Trade Dress
Utility Patent
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Examples of IP Protection for Food & Beverage
Copyright
– Product photos
– Ad copy
Trade Secret
– Recipe
– Production Process
Utility Patent
– Product
– Production Process
Design Patent & Trade Dress
– Product Appearance
– Package Appearance
Trademark
– Brand name
– Logo
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Utility Patent & Design Patent
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Design Patent & Trade Dress
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Overlap of Design Patent and Trade Dress Protection
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Design & Trade Dress Protection Strategy
Step 1: Secure Design Patent Protection
Step 2: Enforce Design Patent
Step 3: Proactively Build TM Rights - Promote the Trade
Dress to Consumers
Step 4: File for Registration of Trade Dress
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Secure Design Patent
Hurdles:
– Novel
– Non-Obvious
Timing – file early, file often
– One year bar to US applications from disclosure
Contents of application remain secret until design patent issues
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Example Design Patent & Product
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Example Design Patent & Product
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Example Design Patent & Product
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Enforce Design Patent Right to exclude others from
making, using, selling or offering to sell product in US market for 15 years from issuance.
Test: An ordinary observer would think the accused design is substantially the same as the patented design when compared in the context of the prior art.
No need to prove consumer confusion, only substantial similarity of infringing product to patented design.
No surveys needed
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Design Patent Enforcement Strategies
Commercial Product Defensive Patent Filings
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Promote the Trade Dress to Consumers
Proactively build trademark rights in the trade dress
Use the 15 years of Design Patent exclusivity to build consumer recognition and goodwill in the product design.
Draw consumers’ attention to the unique ornamental features of the product as a way of identifying the source of the product.
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Sample Advertising
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Sample Advertising
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Sample Advertising
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File for Registration of Trade Dress
After years of active promotion and sale (typically 5), file for registration of trade dress as a trademark.
Evidence of promotion and use required.
Registration will last for as long as trade dress is used in marketplace, potentially well after expiration of Design Patent.
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Example Trade Dress & Product
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Example Trade Dress & Product
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Example Trade Dress & Product
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Example Trade Dress & Product
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Take Aways
Be Creative – Wide variety of IP protection is available for food and beverage products
Get Involved – Insert both Trademark and Patent legal teams early into new product development
Be Intentional – Proactively promote your trade dress to consumers
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Protecting IP Rights in the Food and Beverage Industry
Sheila Fox Morrison | Davis Wright Tremaine LLP
1300 SW Fifth Avenue, Suite 2400 | Portland, OR 97201Tel: (503) 778-5311 | Fax: (503) 276-5711
Real Foods Pty Ltd. v. Frito-Lay North America, Inc.906 F.3d 965 (Fed. Cir. 2018)
Opposition to registration of two marks:
CORN THINS for crispbread slices predominantly of corn, namelypopped corn cakes
RICE THINS for crispbread slices predominantly of rice, namely poppedrice cakes
“Our case law provides that ‘[w]here a mark sits on a sliding scaleof descriptiveness impacts the burden a proposed registrantmust bear with respect to its claim of acquireddistinctiveness.’... Rather than making it impossible for Real Foodsto establish secondary meaning, the TTAB found the marks ‘highlydescriptive,’ thereby properly placing a heavier burden on RealFoods to prove distinctiveness.”
Fifty-Six Hope Road, et al. v. Jammin Java CorporationNo. 16-05810, slip op. (C.D. Cal. May 30 ,2017)aff’d sub nom. Hope Road Merchandising LLC v. Jammin Java Corporation747 Fed. Appx. 622 (9th Cir. 2019)
In assessing profits under the Lanham Act: Plaintiff is only required to prove Defendant’s sales
Defendant then must prove all elements of cost or deduction claimed inorder to offset those sales
“Importantly, the Defendant must show that any deductions forbusiness expenses ‘[were] of actual assistance in theproduction, distribution or sale of the infringing product.’”