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Should I Protect My Company’s Colors?

Should I Protect My Company’s Colors?

by | Feb 6, 2023 | Brand Protection 101, US Registration, Office Actions, Infringement

Your former business partner is starting a competing business. He’s planning to use similar color schemes and a brand name that’s not that different from yours. You’re concerned that he will steal your clients. What can you do? If you’re Subway, you’d sue him for #trademark#infringement.

The test for trademark infringement is likelihood of confusion. The two primary factors are the similarity of the names, logos, etc. and the relatedness of the products or services sold under the brand. Today I’m focused on the first factor.

When trying to determine the similarity of brands, you need to look at the entirety of the brands. This means you should consider all of the elements of the brand that are unique to the brand. Most people think of looking at names to see if they are similar in sight, sound or meaning. It often makes sense to look at other elements such as the font used, the placement of the words and the color scheme. Looking at these additional elements can help you determine whether or not the public is likely to confuse two brands.

In a recent Subway case, a former franchisee decided to open a sandwich shop named Suberb. They used a similar green and yellow color scheme, had similar sandwich names, and even copied material from Subway’s web site. Subway sued and Suberb asked for some time to rebrand. They kept the name Suberb, but changed color scheme, sandwich names and the web site. The court held this rebrand was not infringing, that Subway could not own the letters “sub” for a sandwich, and that “erb” was not similar to “way.”

Subway relied on its rights in colors and other secondary branding elements to keep a competitor from confusing the public. I encourage my clients to start with registering rights in critical elements like their company name, but over time they should seek protection in color schemes, fonts, related designs and other items they use to help the public identify them in the marketplace.

And yes, this is yet another example of brand wars in the #foodandbeverage industry.

Not All Brand Protection Journeys Are the Same

Not All Brand Protection Journeys Are the Same

by | Feb 6, 2023 | Brand Protection 101, US Registration, Warning Signs, Education

A common question I get is “How much will it cost to protect my brand?” Unfortunately, the answer I have to give is, “It depends.” This answer changes once I conduct a brand health check.

Starting a brand protection journey is much like walking into a dark room. You really have no idea how much is in your way and what you might bump into as you explore the room. Fortunately, just like you can #turnonthelights in the dark room, I can run a brand health check to help you understand what obstacles you may face in your brand protection journey.

Three of the biggest obstacles I find are that the brand you want to use:
1. is very similar to an existing brand;
2. contains descriptive words in your industry; and
3. is not capable as functioning as a brand.

Finding any of these three risks greatly increases the cost of your specific journey. Determining the severity of these risks is very subjective. Onlya professional with a lot of experience in this area can measure this. I can give you an exact quote on your specific journey after I conduct a brand health check.

There are other factors which increase your cost. The primary factors are how many types of goods/services you plan to use in connection with your brand, and whether you have begun using your brand at the time you want to file for registration. The costs associated with these items are pure math. These and can be easily calculated by anyone even with a few years’ worth of experience.

Of course, you don’t have to conduct a brand health check. You can instead continue to wander the world of commerce using your brand in the dark. This exposes you to at least two big risks.
1. You have no idea whether or not someone with a similar brand may be capable of suing you for infringement.
2. If you are sued for infringement, you could be considered a bad faith user. This means you could be liable for additional damages (i.e., you would have to pay more).

A Monster of a Problem

A Monster of a Problem

by | Feb 6, 2023 | Brand Protection 101, US Registration, Office Actions, Cease & Desist, Infringement

You know I like to watch out for small and mid-sized businesses. I also dislike big businesses that act like bullies. This story does not make me happy.

Monster Energy has a well-deserved reputation for being a #trademark #bully. In a decision handed down yesterday, they stopped an ice parlor from registering the name ICE MONSTER. This 50-page decision comes down to 2 concepts: both parties use “Monster” as the primary element of their brands and (*get ready for this*) Monster Energy has a registration for MONSTER in connection with restaurant services, supported by use of this brand as an employee cafeteria.

Monster has an employee cafeteria named MONSTER BEASTRO, which only employees and visitors to Monster headquarters can visit. The very narrow rights Monster enjoys from this use is the reason that they prevented the registration for ICE MONSTER.

Technically, I agree with this decision. From a moral standpoint, this is further evidence that Monster is a trademark bully. If Ice Monster had come to me, I would’ve discovered this issue using a brand health check. In 2023, I am offering this brand health check to companies in the food and beverage space for only $250. Yes, that’s right, Ice Monster could’ve avoided over seven years of litigation by getting a $250 search done.

Again— this another example of brand issues in the #foodandbeverage industry. This time the victim was a restaurant owner. Hey #restaurant owners! Isn’t business hard enough? Don’t you want to avoid a major legal brand issue?

Suits Filed by the Infringer- Part 2

Suits Filed by the Infringer- Part 2

by | Feb 6, 2023 | Brand Protection 101, US Registration, Office Actions, Cease & Desist, Education

Last week I posted a story about Post cereal filing a suit against an indie rock band over the name OK GO! The strange twist in that story was that the indie rock band had accused Post of infringement, but Post was the party that filed suit.

Today brings another story with a similar twist. Pure Prairie Poultry is suing Poultry Farms Dairy over a trademark battle. The twist is that the dairy company is the one who originally claimed that the poultry company was the infringer.

These suits are called declaratory judgment actions. In the brand protection world, they are usually filed by companies who have been threatened with a lawsuit over trademark infringement. The threatened party is in essence requesting a decision from the courts that their brand is not infringing.

Of course the main reason for a declaratory judgment is to provide peace of mind that the company can build on its brand. This is similar to a quiet title action in real estate. Also, this allows the threatened party to decide which court they want to use for the legal action. The downside is that these frequently turn into full infringement suits as the other party typically will countersue.

Again— another example of brand issues in the #foodandbeverage industry. Please note that these parties are both producers. Where are my #farmers?

Can the Infringer Sue?

Can the Infringer Sue?

by | Jan 25, 2023 | Brand Protection 101, US Registration, Office Actions, Cease & Desist, Education

Yesterday I saw a story in which an indie rock band named OK Go has sent a cease-and-desist letter to cereal maker Post Consumer Brands. It seems that Post is developing a disposable cereal bowl under the name OK GO!, and the band is concerned that this will cause marketplace confusion.

Many people’s knee-jerk reaction is that cereal and rock bands are not related items, therefore, there is a very low chance for likelihood of confusion. This ignores the fact that #likelihoodofconfusion also covers confusion of #affiliation, #endorsement or #sponsorship. The band has promoted many products in the past, including Post’s own Honey Bunches of Oats. It appears that the band is concerned that the public will assume the band is endorsing this new disposable cereal bowl. In fact, the band purports to be disgusted by the concept of a pre-sweetened bowl to which you just add water.

The two sides can’t settle this issue on their own, so this matter is headed to court. The part of the story that may surprise most people is that Post is the party that has filed the lawsuit. They are seeking a #declaratoryjudgment from the court that there is no likelihood of confusion. This will allow them to move forward with their project without the threat of a lawsuit over their heads.

Food touches so many parts of our lives, and therefore brands used in connection with food are way more likely to be found to be confusingly similar with brands from other industries than would be expected. This is one reason our firm is offering special incentives to companies in the food and beverage industry in 2023.

Don’t let this happen to you. #Searching your name before you open your business can be one of the most valuable steps you take early on. I offer the service for $275, and I am providing this at a discount for anyone in the #foodandbeverage industry. Please arrange a free consultation with me to discuss this: https://lnkd.in/gzCeVivq