M. Kelly Tillery, a partner with Pepper Hamilton and a member of the firm’s Intellectual Property Litigation Practice Group, and Alva C. Mather, a partner in the firm's Health Sciences Department and chair of the firm’s Alcoholic Beverage Industry Practice Group and co-chair of the Food and Beverage Industry Practice Group, are quoted in the September 28, 2017 Project Nosh article "Takeaways From Pretzel Crisp’s 7-Year Trademark Battle."
“The lesson to be learned is when you select a mark, spend the time and effort to select a protectable mark in the first place rather than one that looks like you could get away with it,” Kelly Tillery, partner at Pepper Hamilton, told NOSH. “You could invest in something that becomes your baby, so to speak, and you won’t be able to protect it later on.”
What does help is having distinctive name from the start. An arbitrary name like Kodak or Xerox, Herzfeld said, is the strongest type of trademark. From there, it gets less black-and-white. For example, while Apple is generic when referring to the fruit, it is unique and protectable when referring to computers and technological devices, he said.
If your mark is weak, one way to make it stronger is through exercise, both Tillery and Alva Mather, also a partner at Pepper Hamilton, noted. Mather said brands should always use their trademark in any and all communication. Mathers added that this one of Princeton Vanguard’s main downfalls; the company itself did not use the phrase “Pretzel Crisps” in a trademarked fashion in numerous emails and company literature.
“You’re talking about emerging companies and an environment where advertising and marketing within social media is playing a little more fast and loose with language,” she said. “Your people have to understand the stakes. At the end of the day, the brand for food and beverage companies, that is their main source of revenue.”
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The nature of this trademark case in particular has been unusual, mostly because of its length and legal budget, Tillery told NOSH, adding that normally trademark cases such as this settle out of court because they don’t have the capital to fight and run a business simultaneously. However, because these players are backed by two of the world’s largest food conglomerates, they have the funds to fuel seven years — and counting — of legal fees. Those bills are expected to continue to climb.