Nicole D. Galli, Law Offices of N.D. Galli LLC

While everyone understands the importance of creativity and branding in the food and beverage industry, how often do people actually think about how to protect those brands and creative ideas? Each form of intellectual property (IP) protection—trademarks, trade dress, copyrights, design and utility patents and trade secrets—has an important role to play in protecting brands and innovation in the food and beverage industry. In fact, the industry serves as an excellent case study for how many of these protections are related and should be used in conjunction with one another to maximize IP protection.

Let’s start by thinking about what needs to be protected. Like most businesses, food and beverage companies need to think about branding—this includes a company’s name, product names, logos and slogans. Next, the company must think about the products themselves—this includes recipes, the look and feel of the products, the process or methods for making them, as well as things such key ingredients or the sources of supplies. Packaging, including individual products as well as collections of them, such as shelf displays or shipping cartons, is also important. And finally, for many companies in the industry, especially those with retail stores or even kiosks, the entire look and feel of the business or retail establishment may provide opportunities for protection. This can include menus, floor layout, décor, and, perhaps, even plating or presentation of the food in restaurants.

What are the tools available to protect each of these aspects of a food and beverage business?  Branding is relatively easy to understand. Company and product names can be protected through trademarks, as can logos and slogans. Logos can be particularly powerful— think about Tony the Tiger or the Golden Arches. You know the products those logos represent (a cereal and a restaurant, respectively) without any words being used. That’s the power of good trademarks.

Logos can also be protected by copyright, although registering a logo with the Copyright Office has become more difficult than it used to be. An example outside of the food industry illustrates this. American Airlines recently tried to register a copyright on its new logo but the Copyright Office rejected the registration several times on the grounds that the logo was not sufficiently creative to merit copyright protection. After American Airlines filed a lawsuit to object to that determination, the Copyright Office reconsidered and finally agreed to register it. The effort and resources American Airlines put into this effort demonstrates the value of multiple layers of IP protection.

A company can also use “trade dress,” a type of trademark in which the overall look or design of a product or its packaging functions as a source identifier and thus is able to be registered under the Trademark Act. The key questions to be addressed in determining whether something can be a trade dress is whether it is functional (functional elements cannot be part of trade dress) and whether it is distinctive. If a design is functional, it can potentially be subject to a utility patent and, for this reason, having a utility patent on a product or package design can weigh against being able to get a trade dress on it (or at least one that covers the features that are subject to a utility patent). In contrast, having a design patent on a product or package design can weigh in favor of a determination that the design is nonfunctional. This is because design patents only protect new and novel ornamental and nonfunctional designs of articles of manufacture.

As for the second trade dress consideration regarding distinctiveness, the design of a product cannot be “inherently” distinctive, and thus “secondary meaning” (i.e., the commercial association of the product design with a specific source) must be shown. In contrast, product packaging—because consumers understand that packaging is often used to identify a product—can be “inherently” distinctive. In other words, although it isn’t true in every case, certain packaging can be so unique and readily identifiable with a particular source that further evidence of consumer recognition of the association between the packaging and the source does not need to be shown.

There are numerous examples of how trade dress comes up in the food and beverage world. For example, think about the Toblerone chocolate bar. The bar itself is the subject of several U.S. trademark registrations and had been the subject of a design patent. The classic Coca-Cola bottle shape is another example of packaging that can be the subject of both trade dress and design patent protections. In fact, sometimes companies choose to concentrate on protecting their packaging instead of the product itself. Recent examples include the candy maker, Sugarfina, which protects its bento-box like packaging, rather than its candies. Further, protectable packaging is not just limited to the outer protection of an individual item, but some shelf displays and cartons can also be subject to IP protection. For example, cardboard display cartons for candy bars and other products can be subject to both utility and design patents.  Packaging may also be subject to copyright protection. Think about the beautiful designs of some beer or wine labels for instance.

The look and feel of a store, including menus, floor layout, décor and other items, can also be subject to trade dress protection, among other things. The famous Two Pesos v. Taco Cabana, 505 U.S. 763 (1992) decision, which upheld the finding that those aforementioned design elements were part of a restaurant’s protectable trade dress, is a perfect example of this. Under the overarching umbrella of a store’s look and design, there may be other individual items, such as menus, that are worthy of their own protection. For example, some restaurants have obtained trademark rights to the names of some of their dishes, and copyright protection for the overall design and wording of a menu, including the description of particular dishes.

IP protection for recipes (both the ingredients and the processes/methods for making food products) can be more difficult. A typical recipe will usually be considered a compilation of facts and thus not a creative work subject to copyright (although a cookbook—like a menu—can be subject to copyright protection). Recipes are also often not able to be the subject of a utility patent, although there are exceptions. For example, a number of years ago, a patent was issued on a substitute for fat and egg yolks in baked goods and today inventors are exploring engineered foods like beef and milk. While there are serious questions about whether these inventions would survive a patent eligibility analysis under 35 U.S.C. Section 101, these are the kinds of food inventions that might get within the ballpark. Indeed, the U.S. Patent and Trademark Office (USPTO) recently observed that recipes that have received utility patent protection tend to emanate more from a chemistry lab than a kitchen.

The classic form of protection for recipes is trade secrets—think about the formula for Coca-Cola or the KFC chicken recipe. A common consideration when it comes to recipes is who owns them—the individual chef who created them or the business that employs the chef? This is a fact-specific question. As with all IP, ownership of recipes is an important but often overlooked consideration and should be addressed up front when a chef is hired.

The newest “frontier” of IP protection in the food and beverage industry is the copying of food designs, especially in restaurants. This relates to the look and feel of the food product itself or even the “plating” or presentation. A recent well-publicized example of this is pastry chef Caitlin Freeman’s modern art inspired deserts at Blue Bottle Coffee in the San Francisco Museum of Modern Art. The café lost its contract during a construction period, and a new, unrelated cafe took its place and started carrying similar looking cakes. Although Freeman did not pursue legal redress, some scholars and commentators have considered whether food designs like Freeman’s or Thomas Keller of the French Laundry’s “salmon coronet” could be subject to protection under copyright, trade dress or even design patent theories. While some find these analyses far fetched (for example, someone seeking copyright protection for a food dish may find it challenging to meet copyright’s “fixation” requirement), the fact that these issues are under debate acknowledges the inherent creativity of the chef’s work that is appreciated by many, as well as the fact that food and beverages are big business (and thus have important assets worth protecting).

As noted at the outset, the food and beverage industry is a prime example of how various kinds of IP protection can be woven together to maximize their effect. But that begs the question, why would we want to do this? For a number of reasons. Some protections, such as patents, are of short duration (only 20 years), whereas others, like trade secrets or trademarks, are forever (at least in theory). Also, in case one theory fails, there is another, with separate proofs required, to fall back on (i.e., the “belt and suspenders” approach). Finally, some theories fit better at different times. For example, in the case of trade dress that is not inherently distinctive, having design patent protection to fall back on while you are establishing secondary meaning is a good idea. As is the case in so many industries, IP is ultimately a big part of the value in the food and beverage industry, which is why one should ensure that the most comprehensive and sustainable protections are in place to defend that value.

Nicole D. Galli is the founder and managing partner of the Law Offices of N.D. Galli, a business litigation and intellectual property law firm with offices in Philadelphia and New York. Galli’s practice focuses on commercial and IP litigation, strategic IP counseling and trade secret protection. She is also the founder and president of Women Owned Law (WOL), the first national networking organization dedicated to empowering and supporting women entrepreneurs in the law. She can be reached at ndgalli@ndgallilaw.com or 215-525-9583.