Over the last year I have received numerous inquires from farms, agri-businesses and food entrepreneurs about the importance of trademarks and the application process. This post seeks to give a cursory overview of a few common questions that come my way.
Trademarks vs. Service Marks
Put simply, a trademark is an identifying mark for consumers in connection with particular goods or services. A trademark can take place in many forms including a word, name, symbol, device, sound, fragrance or “trade dress” of a food product packaging. When this mark is used in commerce, it helps distinguish the origin of the goods or services. On the other hand, a servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms, “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks. The purpose of the trademark or service mark is to inform the public about the source of goods or services.
State vs. Federal Trademarks
Trademark registration can take place at the federal level with the U.S. Patent and Trademark Office (“USPTO” or “PTO”) under the Latham Act or the state level with the NYS Department of State (“DOS” or “NYSDOS”). If the good or service is used in interstate commerce, then it may be registered with the USPTO. Although registration is not essential to trademark protection in this country, if eligible, trademark registration with the USPTO greatly enhances legal protections to the trademark owner.
Common Law Trademark Rights
A person or business does not have to register a trademark in order to have intellectual property rights. This is referred to as a “common law” trademark claim. Before registering a mark with the USPTO or NYSDOS, a business can usually use the small ℠ (service mark) or ™ (trademark) symbol. Once a farm or food business has a registered mark, it can use the ® symbol.
Starting a Food/Agri-Business
When starting an agriculture or food business, it is important to run a public record search to make sure the company is not infringing on somebody’s intellectual property rights for similar goods or services. If the mark is confusingly similar to another brand or mark, you may be infringing on somebody else’s trademark. With common law (unregistered trademarks), it’s typically “first in time, first in right.” Whoever is using a mark in a particular market for a class of goods or services, wins. In some cases, I recommend that client’s hire a professional trademark searcher who will look at USTPO trademarks (both dead and active), state trademark registrations in all 50 states, Internet searches, ownership of website domains (even if inactive), and other public records.
The “Principal Registry”
Although a farm or food entrepreneur does not have to have a federal trademark or service mark to have enforcement rights under common law, admission to the USTPO principal registry offers several advantages. First, in a trademark infringement lawsuit, the fact that a trademark is on the Principal Registry is evidence that the mark is valid and owned by the registrant in connection with the goods or services. Second, even if the USPTO ultimately denies an application to the principal registry, it will give the mark priority over someone who has not applied for a mark. Third, once a mark is on the Principal Registry for five year, it is incontestable under 15 U.S.C. § 1065. Fourth, under 15 U.S.C. § 1124 it strengths the ability to block the importation of an infringing good.
Distinctiveness
In order to be accepted onto the USPTO principal registry, the mark must be distinctive. Categories of protectable marks are (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Marks that are arbitrary, fanciful or suggestive are considered “distinctive” and protectable. Generic terms (e.g. “agriculture” “food” “farm”) are so highly descriptive that they are incapable of acquiring distinctiveness. If a mark is deemed to be “merely descriptive”, then the USPTO will allow the applicatnt to apply for the Supplemental Register. The owner of the mark will still enforcement rights of the mark. After showing exclusive, continuous use of the mark for five years, the applicant than then apply to the Principal Registry.
Take Home Points
Trademarks and service marks are important to protect. If practicable, a farm, agri-business or food entreprenuer should register all eligible marks with the USPTO (if used in interstate commerce) or NYSDOS (if used only in the state of New York) for both standard character marks (e.g., “eSaleBarn) or design marks (i.e., the logo). While the trademark application is pending (or before the application is made), farms and agri/food businesses should use the ℠ (for service marks) or ™ (for trademarks) putting the world on notice that you claim the mark for your business. If you are a business start-up, run a thorough Google search and USPTO search (and if appropriate, hire a professional searcher) to see if there are any trademarks that you might infringe on within a particular class of goods or services. Once you have a trademark or service mark, it is important to protect your intellectual property rights through potential enforcement.
This is just a general overview of a few major bullet points. I highly encourage my readers to seek the counsel of an attorney for an assistance with the trademark application process. An attorney may also be helpful when starting a business to help discern whether there is an issue with the proposed brand name.