Brand Protection through Trademarking for your Brand

Many producers spend a lot of time creating a marketable image for their products through innovative images, label designs and catch phrases.  As a producer you hope to stand out based on the sensation of taste.  However, to get the consumer to the point of enjoying what you have created, it is likely that you will need to convey your craft through images, designs and marketing tools that create a brand which represents your hard work – namely the wine, beer or distilled spirit that is the ultimate product you sell.

Since your brand image will represent the beverage you create, and ultimately your business, it is important to make sure that it is protected.  In some ways protecting your actual product is a bit easier than protecting your brand because you have the ability to set up procedures that are only known internally for production of your beverage.  Your graphic design, logo, or tagline is intentionally placed into public view.  As a matter of fact, you want it in front of as many people as possible! 

As you become more successful, there is a higher likelihood that an individual or business will seek to “borrow” some of your hard work to create their own success.  However, what you have created as your brand image is actually an intellectual property right that is protected under the law of the U.S. and many foreign countries.  When someone else uses this property without proper permission, which usually comes in the form of a license, they are basically stealing from you and subjecting themselves to liability.

In order to protect your brand, you need to properly register your trademark.  So, what is a trademark?  The U.S. government describes a trademark as a word, phrase, symbol, or design, or a combination of these, that identifies and distinguishes the sources of goods of one party from those of others.

Many may be surprised to learn that a trademark interest is not created when you register with the federal government.  The trademark is established by using the mark in commerce.  The longer that you use it, the stronger your claim to it becomes. However, if you are looking to establish the highest level of protection, then your goal should be to register the mark with the United States Patent and Trademark Office (USPTO). This registration will do the following:

  • Create a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • Put the public on notice of your claim of ownership of the mark;
  • Place a listing in the USPTO’s online databases;
  • Provide the ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods;
  • Provide you with the right to use the federal registration symbol “®”;
  • Create the ability to bring an action concerning the mark in federal court; and
  • Create the use of the U.S. registration as a basis to obtain registration in foreign countries.

You will want to begin the process of registering your mark as soon as you know what your mark is and how you want to use it.  It is not necessary for you to be using the mark in commerce at the time you begin the registration process.  As long as you know that you will be using the mark in commerce in the next few years, you will be able to take priority over any other person or entity that files after you, even if your basis for the mark is an intent, rather than actual use in commerce.

It is also important to work through your brand protection issues early because you may be infringing on the intellectual property rights of another business.  Proper registration of a trademark with the USPTO should start with a trademark search to determine if there are any immediate conflicts with your preferred mark.  The USPTO will only register unique marks.  The examining attorneys at the trademark office will not allow for registration unless your mark is unique.  Therefore, it is important to perform a search before submitting your request in case there is an immediate, identifiable conflict.

If in fact there is a conflict, it may still be possible to utilize the mark.  One of two things could happen.  Either you perceive a conflict and proceed to register your mark in the hopes it will be deemed unique and registered. Or, you approach the owner of the mark with a proposition to either purchase the mark from them if they no longer wish to use it, or you could purchase a license from them to use the mark in some manner while paying them a fee to do so.  Should you be able to purchase the mark from them, then you will want to properly record your “Assignment” of trademark with the USPTO.  There is a process for this and it will allow you to become the proper owner of the mark.

When you apply for your mark, it will be necessary for you to determine what good you are trademarking, as each good represents a separate mark. The USPTO will allow you to register one type of good, based on a description from the International Schedule of Classes of Goods and Services, for one fee.  However, the specific item of goods must be listed.  So, for example, you may want your logo to be a registered mark and use it on both your beverage container and also on an item of clothing – these would technically be two separate marks that carry two registration fees.  However, there is the possibility of listing multiple items of goods to be covered in any one class that will have a single fee.  So, if you intend to sell merchandise in your tasting room with your logo and that merchandise falls within the same class – such as shirts and ball caps do for clothing, then you will simply have one trademark to register.  It will be necessary to carefully describe the goods in which you intend to place your mark.

It should be refreshing to know that your business has the opportunity to grow and develop a recognizable brand image that can be protected in the marketplace.  It would be our pleasure to answer any questions you may have about trademarks, or assist you with proper protection of your brand. 

Buy-Sell Agreements

Any business that has more than one owner has an opportunity to use contract law to create expectations for how the business will operate in the event of major life transitions for its owners.  All businesses spend time planning how they will generate revenue to maintain their existence.  Most businesses even plan for catastrophe through the purchase of a variety of insurance products that can prevent the failure of the business if certain things occur.  Many businesses are missing the chance to address several lifetime events that could dramatically affect the operation of the ongoing business.  These events are many times a virtual certainty, such as death or retirement, and therefore taking the time to plan should not be perceived as being overly cautious, but rather simply an exercise in prudent long-term business planning.

 Many advisors will suggest that executing a buy-sell agreement to create mechanisms to deal with issues such as death, disability, retirement, bankruptcy, forced buy-out, etc. is best done as soon as the business is formed.  This advice certainly has credibility and yet is problematic.  It is best to draft at least some form of buy-sell agreement to address as many issues as possible early in business operations.  However, this document should not be set aside and forgotten until a triggering event occurs.  Rather, it would be most useful to review the agreement once a year in the first several years of business operations.  If the business is viable, it will grow rapidly in the first few years and decisions made at the outset of operations may make little sense as the business begins to function at a more complex level.  Ideally the agreement will be regularly reviewed by the business owners as long as the business continues to function.

 Drafting of a buy-sell agreement is essentially a game of “what if?” Discussions regarding what happens when a partner dies, wants to retire, wants to sell his or her ownership interest to an outside party, becomes disabled and cannot continue to contribute to the business in the same way, gets divorced, or files bankruptcy, can all be addressed in the buy-sell agreement.  There are endless options for how to deal with each situation and the partners in the business have the opportunity to come to a consensus of personal preference in the contract.

 Probably one of the most powerful aspects of the buy-sell agreement is the ability to address the practical issue of funding.  Many authorities will suggest that a buy-sell really only works if the instrument is “funded.” In other words, if a partner is required to sell because of certain triggering events, the other partners or the business itself may or may not be able to acquire lending to fund the transaction.  The buy-sell agreement creates the opportunity to address this situation by allowing the parties to draft the ability of the buying partner to utilize the selling partner as the lender.  The selling partner may be put in a position, either because the buying partner can’t get financing or simply because the agreement calls for the selling partner to providing the financing, to carry a note for payment of the value of the ownership interest.  Depending on the circumstance, the parties may not be able to come to an agreement of this sort at the time of the triggering event.  The buy-sell effectively acts as pre-nuptial agreement of sorts in that disagreeing owners have made decisions with “cool heads” at contract drafting time, rather than in the heat of a potentially problematic situation.  There is no doubt that this creates a beneficial situation for all concerned.

 Other funding options may involve the purchase of life or disability insurance that could provide the cash necessary to fund a buyout based on the triggering events of death or disability.  A variety of tax and legal issues are associated with the purchase of these insurance products, but all of  these issues can be addressed with legal and accounting counsel at the time of drafting to determine what is in the best interest of all contracting parties.

 The buy-sell agreement can also be an opportunity to set a value on the ownership interest at the death of an owner for estate tax purposes.  If sales of ownership interest will be to family members at death, there will be heightened scrutiny by the IRS of the valuation placed on the ownership interest.  Nevertheless, if planned properly, the valuation portion of the buy-sell agreement can have a beneficial effect for estate tax purposes.

 If you require a review of your existing agreement or would like to discuss the drafting of a buy-sell agreement for your business, please don’t hesitate to contact us.