Practical Trademark Tips for Food Companies

Date: Mar 17, 2003

Devising an effective branding strategy for food products can often take years and involve just as much effort as developing the products themselves. Trademarks are, of course, an integral part of any food company's branding strategy, but success at the United States Patent and Trademark Office (PTO) is not the only hurdle food companies must jump. Food trademarks, advertising slogans, and marketing campaigns may implicate Food and Drug Administration (FDA) labeling laws, the U.S. Department of Agriculture's National Organic Program(NOP) requirements (or related Environmental Protection Agency (EPA) rules on pesticides meeting the NOP criteria) , and Federal Trade Commission (FTC) rules on advertising and marketing. Food companies often have a few basic questions about how trademarks relate to other regulatory requirements. The following are some practical tips for companies involved in all aspects of the food industry - from seed companies, to growers, to food processors, to retailers - to consider when selecting trademarks and developing a branding strategy for new food products:

    • How do I select a trademark for my food product? Remember that a trademark is a combination of words, symbols or designs (like a logo) that identify the source or origin of goods and distinguish them from those of another. Unique and non-functional shapes, including the shape of a particular food product or package, may qualify for trademark protection. The best type of trademark is a name that is unique and memorable. Generic names (like "bananas") are not entitled to trademark protection. Descriptive names (like "chocolate stars" for a star-shaped chocolate candy) will likewise have limited or no protection with the PTO, but marketers often select descriptive terms as trademarks simply because they describe the look, taste or qualities of the product, and can sometimes easily fit in an initial marketing campaign. Ultimately, however, descriptive trademarks often have limited value in the marketplace. Because they are descriptive, you will have only a limited ability to prevent others from using that same name in a descriptive fashion. As a result, initial marketing success using a descriptive name will likely breed imitation, forcing you to go back to the drawing board to develop a new, more distinctive, name.

    • Can I use my corporate name? A corporate name can function as a trademark so long as it is used to identify the source or origin of your products, as opposed to simply identifying the company. Since so many food products are named in a descriptive fashion, some food companies heavily rely on the appearance of a "house" mark that consistently appears on all or a major portion of the product line. A house mark (like Kraft®) may appear on a variety of products, some with their own more fanciful trademarks, and some with more descriptive names.

    • Can I make a health or nutrition claim as part of a trademark without worrying about regulatory requirements?: Companies should be mindful that health claims such as "light" or "lite," "low fat," "fresh," or "builds strong bones" must be substantiated and may implicate FDA labeling rules or USDA requirements, as well as applicable false advertising rules, even when the claim appears within the trademark or tagline. Use of terms that are specifically regulated by relevant agencies, including use as part of a trademark or slogan, should be avoided unless the product on which it appears meets the relevant legal criteria.

    • Can I use "organic" as part of my mark?: Terms such as "organic" are subject to the USDA NOP requirements. Even the U.S. Environmental Protection Agency is getting involved in issues under the USDA's NOP program, with special labeling rules for pesticides. Due to the complexities of the pesticide issue, both at the grower level and in food processing facilities, special attention is needed to making "organic" claims.

    • Are there special rules if I use a geographic term in my mark?: Any product origin designation should be examined carefully to avoid a claim that the mark is geographically deceptively misdescriptive to consumers; this is especially important when the geographic region used is known for that particular product or related products. For example, a mark such as "Napa Excellence" for wine would lead a consumer to think the wine was grown or bottled in Napa Valley. If it was not, it may be deceptive.

While PTO examiners have the authority to refuse a mark if it is "misdescriptive," trademark examiners rarely have sufficient time or information to determine if a food product or trademark violates FDA or USDA requirements. More often, problems are identified by competitors and challenged before self-regulatory bodies like the National Advertising Division (NAD) of the Council of Better Business Bureaus, or investigated by the FTC, FDA or USDA.

Another important consideration for food companies relates to decisions about where the products will be marketed, either directly or through license agreements. The U.S. recently signed onto an international agreement, the Madrid Protocol, which should offer a convenient and cost-effective way to seek trademark protection in multiple jurisdictions. Some 53 countries have now ratified the Madrid Protocol, including many countries in the EU, Japan and Australia, although, notably, Mexico and Canada have not yet ratified the Protocol. U.S. accession is significant, since Madrid applications must be made by companies based in a Madrid Protocol country. The first Madrid applications could be available as early as November, 2003, and Madrid registrations are well worth considering for food companies likely to enter different markets.

By being mindful of the above tips, food companies can limit potential pitfalls in selecting trademarks for use with new products while increasing brand value in the marketplace.

For additional information about how we can help your food company select trademarks or if you have other trademark questions, please contact Sheila A. Millar at (202) 434-4143 or via e-mail at Millar@khlaw.com.