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A Craft Without a Brand Is a Recipe for Disaster. Is Your Brand Protected?

By Joseph S. Heino

At a recent Food & Beverage CEO Roundtable hosted by the Milwaukee Business Journal, Giacomo Fallucca of Palermo Villa, Inc. succinctly and effectively offered this advice to attendees: “Build your brand.” Say no more. In three words, he nailed it. To your company, its brand is its lifeblood. To everyone else, it is an indicator of source and quality. From either perspective, it needs to be protected. But how is this best accomplished?

Below are a few initial best practices to consider for building and protecting your brand, which can include trade names, trademarks and service marks, collectively “marks.” These best practices apply equally to house marks and to marks for specialty products. For example, Angelic Bakehouse, Inc. owns its house mark ANGELIC BAKEHOUSE. It also owns its specialty product mark FLATZZA. Without such brand ownership, any competitor could adopt these names or names that are “confusingly similar” to the name. This could result in business being diverted away from you or your brand being tarnished if inferior products or services are provided by the competitor.

Select a Strong Mark

The strongest marks are those that are fanciful names – SANKA for decaffeinated coffee. The word SANKA is “coined” – it does not exist in the English language. Next strongest are arbitrary names – APPLE for computers. The word APPLE exists in the English language, but is arbitrary when applied to computers. Both fanciful and arbitrary marks are strong. Weak marks are generally those that are descriptive – RAISIN-BRAN for cereal containing raisins and bran. Descriptive marks can, however, become stronger marks by continued use over a relatively long period of time, say 5 years or more. In selecting your brand, consider the image you want to convey about your craft, how best to distinguish it from your competitors and make it relatable to your target market without being descriptive.

Conduct Due Diligence

Prior to settling on a mark, you should clear the mine field. You do not want to select a mark and roll it out only to find that the mark is in use in some other part of the country for the same or similar product, or even in a related service that sells such products. Conducting such due diligence can cost a few dollars. However, it is far less expensive than investing in packaging, marketing and advertising only to find your company on the receiving end of a “nasty gram” telling you to “cease and desist” from using your mark and to “account for” past sales as part of the damages claim.

Use Your Mark Properly and Consider Federal Registration

Once you have picked a strong mark that no one else is using, you can go on your merry way and start using the mark with your products or services. When you use your mark, you should adhere to the rule of using the notation “TM” (for goods) or “SM” (for services) with your mark. By doing so, you are (i) establishing “common law” rights in your mark and (ii) putting the general public on notice of your claim to such rights. At any time prior to actual use or during use of your mark, you should give some thought to registering your mark at the federal level. Doing so has many advantages, not the least of which is garnering for your mark the privilege of using the “®” notation – the notation cannot be used absent such registration.

Be Aware of Other Labeling Regulations

Regulations in the food and beverage industry are vast and each craft has its own considerations. If you make or market a food product, at minimum, the rules of the Food and Drug Administration (or “FDA”) need to be considered. For example, branding assertions to the effect your product is “heart healthy” or that it is a “juice” might need to be substantiated. The FDA may also dictate where label statements should be placed. If you bottle a beer or a distilled spirit, the rules of the Alcohol and Tobacco Tax and Trade Bureau (or “TTB”) need to be factored as well. Creating a beer label (which presumably sports your mark) that is too “racy” for the average sensibilities of the average consumer, could run afoul of the TTB rules and you may find it intervening accordingly.

If you have any questions regarding this article, please contact your Davis & Kuelthau, s.c. attorney or Joseph S. Heino at 414.225.1452 /