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The Food and Beverage Industry is Brewing with Innovation: Tips on How to Protect Your Intellectual Property

The food and beverage industry has experienced incredible growth and diversity in the past several years, especially as food and beverage makers create new and exciting products or take new twists on existing products (e.g. hard seltzer, various plant-based foods).  But as new food and beverage products become popular, they attract imitators. We checked in with Eugene Pak on what food and beverage companies can do to protect against competitors to deter copying and stand out in the market.  

1 . What is the most common form of intellectual property protection?

There are basically four forms of intellectual property protection:  patents, trademarks, copyright, and trade secrets.  Each protects a different aspect of a work or product, or an invention or idea.  Utility patents protect methods and inventions, while design patents protect product designs.  Trademarks protect brands from being infringed upon, and copyright refers to how an idea or concept is expressed.  Copyright law protects against the intentional copying of a particular expression of an idea or concept.  And trade secrets can be virtually anything that a company takes efforts to protect from disclosure which gives the company an economic or competitive advantage, like a “secret recipe.”

In some cases, a recipe or method of producing a food or beverage could be protected with a utility patent, though it is not common for recipes.  For a recipe or method to be protected via a patent, it must be useful, novel, and non-obvious.  Recipes often can’t be characterized as non-obvious and novel, unless they are truly new and inventive.  Beyond Meat, a public company that makes plant-based meat substitute products has obtained patents for plant-based meat structured protein products, namely, products having structures, textures, and other properties like those of animal meat. But many other food and beverage recipes are variations on existing recipes which might not qualify as being novel and non-obvious because a USPTO Patent Examiner could find that it was “obvious” to try a twist on a recipe or substitute an ingredient on a recipe.

            Novel and non-obvious inventions and methods of production of a food or beverage could be protected by patent law (one must file for and obtain a patent registration from the USPTO of course).  By obtaining a patent, creators can prevent others from using, selling, or making the same invention or method.  Sometimes just having a patent pending can also deter copycats.  One thing to keep in mind is that if you want to patent an invention, you need to file a patent application within one year of the first public use of the invention, a sale of or offer to sell the invention, or any publication describing the invention.  And once registered, the method or invention become publicly disclosed.  Utility patents expire 20 years after the filing date of the patent application for patents filed after June 8, 1995.

2. Can trade secrets effectively protect food and beverage innovations?

            Yes, trade secrets are the most typical and effective way to protect recipes.  A trade secret can be any practice or process (like a recipe) of a company that is generally not known outside of the company, and which gives the company a competitive advantage over its competitors.  So, whether or not something is a trade secret depends on the company making reasonable efforts to protect it from disclosure.  A “secret recipe,” such as the formula for Coca-Cola, is a trade secret.

Unlike a patent, a trade secret is not publicly known, and there is no government office that issues trade secret registrations, unlike the US Patent & Trademark Office (USPTO) for trademarks and the Copyright Office for copyrights. 

It is essential to have strict confidentiality measures in place and to enforce them  to ensure that company trade secrets are not disclosed to the public.. This may include limiting access to recipe books or digital files, using non-disclosure agreements for employees and contractors, and implementing secure storage and backup systems.

3. Can you summarize how to navigate the legal landscape to adopting, protecting trademarks?

A trademark is any word, symbol, or even device that is used to represent a business and its products and services.  It must be a “source identifier,” meaning that when consumers see the mark, they think of a particular company.  For example, the Starbucks green ‘siren’ on a paper cup identifies a cup of coffee as being from Starbucks even if one does not see the term “Starbucks.” 

  Selecting a trademark requires careful consideration and research. It is important to search existing trademarks to ensure that your chosen name, logo, or packaging is not already in use.  Similarly, if the mark is a merely descriptive term for the product ( IPA for wine) then it may not be registerable, or a generic term (BEER for beer) then it cannot be registered.  Conversely a term like APPLE could be a trademark for computers, but not for apples. 

Once the availability of the desired trademark is confirmed, you start gaining common law rights in the mark by using it in public in connection with goods or services.  But it is advisable, though not required, to also file an application to register the mark with the USPTO to obtain legal rights that could be helpful in a legal dispute, and to deter others from adopting a confusingly similar mark.  In addition, investors also like to see that a company has registered its most important trademarks.  

4. Do copyrights make sense in the food and beverage world?

Finally, copyrights protect the original expression of an idea, but not the idea itself, from being copied.  For example, a food company might decide to create a cookbook featuring recipes using it products.  The idea of such a cookbook and even the recipes themselves are not likely protected by copyright law, but how these are expressed is, just like the idea of a novel where two strangers meet in a brewpub and fall in love is not copyrightable, but how the novel is written, and the phrases used could be protected.  In a recipe book, the “romance” text which accompanies a recipe, the photographs, or illustrations, and even the layout and design of a cookbook, could be protected under copyright law.

Copyright rights exist in a work as soon as it is original and is “fixed in a tangible medium” which means it must be on paper or even a hard drive, and not simply something expressed verbally. While copyright automatically attaches to the work as soon as it is created and is put in a tangible medium, obtaining official registration provides additional benefits, such as the ability to obtain statutory damages and attorney’s fees in a copyright infringement action. Unlike in patent and trademark infringement, to succeed in a copyright infringement claim one must prove that the other party intentionally copied your work and did not independently create an original work.

5.  What if an innovator believes that their creation has been stolen? 

Consulting with an experienced intellectual property attorney can provide invaluable guidance in enforcing and defending intellectual property rights. Enforcement involves monitoring the market for infringement or unauthorized use. It is a good idea to regularly conduct searches or audits, both online and offline, to identify any potential violations. If any unauthorized use of your intellectual property rights is discovered, promptly take action to stop the infringement and if necessary to seek appropriate legal remedies, such as an injunction or  damages. Legal experts can assist  in navigating the complexities of the legal landscape, drafting cease and desist letters, negotiating settlements, and represent you in court if required.

Whether you are protecting the humorous name of your new IPA  or using your Nonna’s secret recipe for Bolognese sauce on a bigger scale, it is vital to safeguard your intellectual property.  By utilizing patents, trademarks, copyrights, and trade secrets, legal protection can be established and deter or prevent others from profiting from your hard work and innovation. And it is equally important to be proactive in enforcing and defending your rights. By actively monitoring the market for any instances of infringement and promptly taking legal action, when necessary, you can ensure that your creations remain protected.

Eugene regularly advises companies in the food and beverage industry. He serves as outside general counsel to many of his clients, advising them on a wide range of issues from entity formation, trademarks and copyrights, distribution and other contracts, employment issues, alcohol beverage (ABC) and labeling regulations, as well as trade regulation issues (marketing and advertising, social media).  Eugene frequently speaks on such issues, including at the Brewers Association and California Craft Brewers Association’s annual conferences, and has been quoted in Brewbound, All About Beer, The Daily Journal, and other media outlets. He ‘tweets’ on legal and business issues facing alcohol beverage companies as @beerattorney.

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