Intellectual Property Relevant to the Restaurant, Food and Beverage Industries

Welcome to www.restauranttrademarklaw.com, serving the Restaurant, Food and Beverage business, and protecting clients’ trademarks, service marks, domain names and the otherwise general conduct of fair competition.  Your familiarity with the appropriate terminology will wisely protect your intellectual property rights, including: 

Trademark (e.g., Heinz®, Hormel®, General Foods,® etc.) includes any word, name, symbol, or device or any combination thereof used to identify the source of goods or services and distinguish them from other sources (competitors).  Trademarks and service marks serve to link a product or service to the source of the product/service in consumer's minds.  For example, consumers who encounter Wolfgang Puck® frozen entrees in the supermarket are likely to associate those products with the famous chef  and restaurateur having the same name.

Service Mark (e.g., Lawry’s®, Del Taco®, Denny’s® etc.) includes a mark used to identify and distinguish services of one person (company) from the services of others.  

Trade Dress protects the overall appearance of labels, wrappers and containers used in packaging a product, including the totality of elements in which a product or service is packaged or presented, e.g., the entire visual image presented to customers such as a Mexican themed restaurant.

Design patents may protect non-functional ornamental aspects of the appearance of food products, decor and product packaging.  Anyone who invents a new, original and ornamenal design may seek design patent protection.  A utility patent, on the other hand, may serve to protect, for example, novel methods to make food products (or related devices) and food-related articles of manufacture. Examples of patented food products include frozen toaster pastries, methods to make pizza crust and a novel process to manufacture pasta products. 

Copyrights protect "original works of authorship" that are fixed in a tangible medium of expression, such as labels, books, advertising materials, web pages, sound 
recordings and artwork.  Copyright law does not serve to protect information such as concepts, ideas, mere ingredient listings, processes or formulas.  For example, copyright protection is generally not available to protect recipes. Protection may be available, however, for substantial literal expression in the form of written or recorded explanations or directions or where there is a combination of recipes, as in a cookbook.

Trade Secrets protect, for example, methods, formulations and manufacturing processes.  Trade Secret Law will vary with the laws of each state, but there are some common requirements.  To qualify as a trade secret, the information must not be generally known to the public and it must have economic value for its owner. Also, the owner of the trade secret must take reasonable steps to keep the information secret. Famous trade secrets include the recipe for Kentucky Fried Chicken. Rumor has it that KFC's spice mix is made in parts at separate locations in the United States, which are later mixed together to protect the trade secret. Also, it is reported that there is only a single copy of the complete KFC recipe, which is kept under tight security at KFC's headquarters.    

 

FAQs

Trademarks

  1. How do I know if a mark is already taken?  Although not a requirement, an applicant may choose to conduct either a preliminary scan or a full U.S. availability search for conflicting marks prior to applying with the USPTO.
  2. Is a trademark search necessary?  A trademark search is recommended to identify potential prior users, so you will not have to incur the time and expense associated with changing a name you have invested time and money in at a later date and to avoid potential liability from a claim of trademark infringement if your mark is the same and/or confusingly similar to another mark.  In addition to having a proper search conducted, it is also wise to obtain a trademark search opinion from a competent trademark attorney. Such an opinion can be used as a defense in a trademark infringement suit, which can potentially shield the subsequent user of a registered mark from liability for "willful infringement" as opposed to "innocent infringement." A finding of willful infringement may result in treble damages (that is three times the awarded amount of actual damages) and an award of attorney fees and costs.
  3. Do I have to begin using a trademark before I can apply for federal registration?  No. An applicant may apply for federal registration in three principal ways: (1) an applicant who has already commenced using a mark in commerce may file based on that use (a "use" application); (2) an applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application).  The applicant will have to lawfully use the mark in commerce and submit an allegation of use to the Trademark Office before the Trademark Office will register the mark; and (3) under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
  4. I live outside the United States; can I file for federal registration?  Yes. Applicants not living in the United States must designate in writing the name and address of a domestic representative – i.e., a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." This person will receive all communications from the USPTO unless the applicant is represented by an attorney in the United States.
  5. I went online to buy the domain for my name and it was already taken. How can somebody else own my personal name? Do I have any recourse if my name is well known?  Someone else can legally own the domain name for your personal name or your company's name. You may have recourse if your name is well-known, especially in California, which has expanded rights for likenesses and names of well-known persons. You also may be able to get the domain name transferred to you by negotiating with the domain owner through your attorney.
  6. What are trademark licensing agreements?  Trademark licensing agreements are one of the most common IP transactions in the fashion industry, for example. Often a licensor (owner of a trademark) will contract with a licensee (another company) to manufacture and market products using the licensor’s trademark. This benefits a licensor by increasing profits and expanding its brand into new markets, while giving the licensee a pre-existing customer base.  There are many important terms to a licensing agreement, including products covered, exclusivity, specific trademarks, duration and geographic region, compensation, marketing and sales requirements, and quality control. It is important to speak with an experienced IP attorney to find out how to protect your assets.
  7. Someone is infringing my trademark. Is there any danger if I ignore them?  There are several reasons to immediately seek legal counsel regarding infringers. If you wait too long to sue, you may lose your right to sue because your delay will be seen as a contributing factor in increasing the amount of harm. Courts may also find that you abandoned your trademark by not enforcing its use. Delay can also harm your brand by allowing an inferior product damage the reputation of your trademark and to compete with your sales.
  8. Will my U.S. trademark registration protect me in other countries?  No. Trademark protection is region specific. For each country you wish to enforce your trademark, you will need to apply for a trademark under their laws.
  9. My company never formally trademarked our name, but we’ve been using it for 50 years and everybody knows us by it. Now somebody else trademarked it and is using our reputation to build his business. Do we have any recourse or are we out of luck?  You have acquired rights in the geographic area that your trademark has been used in. For instance, if you've operated David’s Designs in the Los Angeles area, you may be able to prevent someone else from opening a David’s Designs in Hollywood, but not a David’s Designs in New York City. It would be a good idea to file a federal trademark showing the date of your first use. One possibility may be an agreement between the two parties where you cannot expand your business outside of the geographic area that you are in and they agree not to infringe within that area.

Copyright

  1. Why should I register my copyright?  There are three (3) key reasons why you should get a copyright registration: to establish a public record; to be able to file an infringement lawsuit in federal court; and to simplify enforcing your copyright and obtaining higher damages.
  2. He stole my idea! Can I sue him?  Ideas are not copyrightable. Only the tangible expression of ideas can be copyrighted. For example, the concept of a “unicorn” is not copyrightable, but a unicorn print design for t-shirts is copyrightable.
  3. Is my copyright good in other countries?  The United States has copyright relations with most countries throughout the world, and as a result of these agreements, each country honors each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country.  For a listing of countries and the nature of their copyright relations with the United States please either contact us or view the U.S. Copyright Office for Circular 38a, International Copyright Relations of the United States.
  4. If I live outside the United States, can I register my works with the U.S. Copyright Office?  Any work that is protected by U.S. copyright law can be registered. This includes many works of foreign origin. All works that are unpublished, regardless of the nationality of the author, are protected in the United States. Works that are first published in the United States or in a country with which we have a copyright treaty (see Circular 38a for the status of specific countries), or that are created by a citizen or legal resident of a country with which we have a copyright treaty, are also protected and may therefore be registered with the U.S. Copyright Office. 

Design Patents

  1. What is the difference between a utility patent and a design patent?  A utility patent protects the idea or function of an invention.  In contrast, a design patent protects the overall ornamental appearance of an innovative design of a product.  The utility patent is, generally speaking, what most people think of as a patent, and a design patent instead affords its owner rights that can often fill an important gap in and around his or her trade dress rights and copyrights in a commercial product. 
  2. Should I apply for a design patent?  Design patents are growing in prominence and effect across many fields of commercial goods.  A design patent, wisely drafted, can be a very effective way to protect an inventor’s innovation – not just the ornamental design itself.  That is, carefully drafted, a design patent can be very difficult for a competitor to design around, possibly leaving the competitor with no real way to put a competing product on the market.

Trade Secrets

  1. What is the difference between trade secret protection and patent protection?  Both trade secrets and patents are forms of IP that can be used to protect innovation.  Although the overall subject matter that can be protected by trade secrets is broader than that which can be protected by patents. Trade secret protection is available for both technical information and information that does not relate to technical innovations. Non-technical information for which trade secret protection can exist includes: business and marketing plans and customer lists. Patent protection is generally available for technical innovations, including a new and useful process, machine, manufacture or composition of matter. Software and software-implemented business methods have the potential of being protected by both patents and trade secrets.  Another significant difference is that patent protection requires the protected information become available to the public (through the publication of the patent application and/or patent), However, because patents and patent applications are made public, a third party is barred from duplicating and using the invention until the term of the patent is expired.  Additionally, unlike trade secrets, patents can be enforced against someone who independently develops or "reverse engineers" an invention.  A trade secret has its own advantages. One significant advantage is that the term of protection for a trade secret has the potential to last forever - as long as the invention is kept a secret - whereas patents are only protected for a limited number of years (20 years from filing). Also, trade secrets can be less expensive to protect and to enforce.  In sum, the choice between patent protection and trade secret protection requires careful consideration of several factors. In particular, it is important to consider the nature of the subject matter being protected. Questions relevant to this decision include: Can it be independently developed? Can it be reverse engineered? Can it be maintained as a secret?  How long will the subject matter have market value? Does the market value support investment in patent protection/enforcement?
  2. How long does trade secret protection last?  Contrary to other types of IP, trade secrets are protected by non-disclosure; the information must be kept confidential.  Thus, an advantage of trade secrets is that they can be protected for an unlimited amount of time.  However, trade secrets also have their disadvantages over other forms of IP protection. Unlike patents and copyrights, which grant a monopoly for a fixed period of time, there is no guaranteed monopoly for trade secrets.
  3. How do I protect my trade secrets?  No special registration of government filing is necessary to create trade secrets.  The critical requirement for trade secret protection lies in maintaining the secret.  Under the Uniform Trade Secret Act (UTSA), information must meet the following three basic criteria to qualify as a trade secret:  1.) the information must not be generally known or readily ascertainable through proper means; 2.) the information must have “independent economical value due to its secrecy”; and 3.) the trade secret holder must use “reasonable measures under the circumstances” to protect the secrecy of the information.  “Reasonable measures” may include: Have employees, contractors and third parties sign non-disclosure, confidentiality and/or non-compete agreements; Stamp secret documents “confidential” or “trade secret”; Enforce physical security. Put up "No Trespassing" signs and put locks on doors and file cabinets; Use employee and visitor identification badges to control access to your business; Establish rules requiring people to sign sensitive documents in and out; Set up passwords. Use them to access computers, copiers, fax machines and other machines that could be used to copy or transmit secrets; When employees leave, take measures to ensure that secrets don't leave with them; Collect sensitive materials from the offices of terminated employees before allowing them to return to their desks. And before they go, remind them of the nondisclosure documents they signed and the stiff financial penalties if they are breached; As you may find it necessary to take additional steps in specific areas, or with respect to specific kinds of information to limit access to a “need to know” basis, you may wish to consult a lawyer in your area for guidance into the types of measures and agreements outlined above.
  4. Can I sell or license my trade secrets?  Yes. As long as all parties maintain the secrecy of the invention, trade secrets can be sold or licensed. You may wish to consult an IP lawyer for guidance in writing the agreements in licensing or selling any trade secrets.