Michael Adams Green Mountain Mustard and Gredio

Michael Adams, Owner
Green Mountain Mustard & Gredio

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The Super Useful Guide to Protecting Recipes, Product Names, and Logos for Food Businesses

This post should be called “How to avoid spending $3,429 in legal fees”. Why? Because that’s what I just did. I spent my month’s earnings on legal fees. So much for paying rent.

It’s important you hear my story — and take action to protect your intellectual property. (skip the story and go right to learning how to protect your company)

Here’s the story (then I’ll get to how to protect your recipes, company name, etc.):

Back in July, we received a letter from a lawyer who represented a food company (who’s going to remain anonymous because my lawyer said so) asking us to stop using the word “Atomic” on our (now) Ragin’ Rooster mustard — it used to be called “Atomic Rooster”, (RIP).

My initial reaction? Oh, sh*t.

My second reaction? This is crap. They’ve got nothing on me.

There are a handful of products using “Atomic” in their product name: bbq sauce, hot sauce, restaurants, and even the classic Atomic fireball candy. But, my product was the only mustard.

They wanted me to stop using “Atomic” immediately.

I called my lawyer. Well, he wasn’t my lawyer at the time (you know, had to sign the engagement letter and stuff). But, he was one of the only guys I knew who would have my back – and my company’s interest at heart. Not to mention, he represented one of the best law firms in the state.

Our first meeting cost $367.50.

During that meeting, we reviewed the case and concluded Green Mountain Mustard had a case against the anonymous company. Our lawyer drafter up a letter explaining the relative size of our company, it’s limited distribution, and the fact their trademark wasn’t well protected. Oh, and a list of “not-too-strong” evidence of other companies using the word Atomic. Even though I found smaller companies (including another in Vermont), no national chains or producers were using the term. While evidence, it wasn’t strong.

Regardless, I pushed on.

About a week later, I received another letter from the other company’s lawyer. He wasn’t happy.

The letter stated that we should discontinue use immediately. If we didn’t, the company was prepared to take whatever actions necessary to stop us.

Side note: This company is a multi-million dollar business with distribution across North America. And me? Well, I could barely pay the legal fees to handle this. You get the idea.

I called my lawyer again. He proposed three options:

What would you do to get out of a legal situation

1. Keep fighting and take it to court

Yes, we could have kept on writing letters back and forth – each letter costing me several hundred dollars. And yes, we could have been sued. But, I wasn’t willing to risk it.

2. Ignore the letter

This would have probably resulted in going to court anyone, and we would have had to pay to get out of the suit. Yeah – apparently you can’t just “put your hands up” for free. I love you, legal system. Love. you.

3. Change the name and be done with this

It was the easiest solution. I had to print new labels anyway. And getting rid of old labels is a secret past time of mine – see the labeling your food product post. I couldn’t pay my lawyers another $3,000. And I couldn’t afford the chance of going to court just to save a flavor that, while popular, wasn’t widely distributed.

I chose the 3rd option. That meant:

  • throwing out the 3,000 old labels (a cost of about $240)
  • selling off our current inventory (roughly 600 units)
  • changing the name
  • ordering new labels

Not a big deal. But still a pain. I signed a binding contract with the other company basically agreeing to the above terms. I had to provide a picture of the new product name on the jar, too (oh, and print new business cards and sell sheets…). Part of me wanted to send them all of my old labels. But, I’m better than that :p

Anyway……now to the useful stuff. The information you can use to protect your company from the same thing I experienced last month.

How to build legal assets for your food business

Note: I’m not a lawyer. I never intend to be. And this shouldn’t be taken as legal advice. That’s why I paid my lawyer $245 an hour. This is simply what I learned through the above legal process.

Building legal assets for your food business

1. Why protect anything at all?

I’ve owned my mustard company for over 4 years. I never put thought into protecting anything, until my lawyer gave me three good reasons to start protecting what I’ve created:

  • It’s defensive – protect yourself against any legal threats (like the one I got above)
  • It’s offensive – building a legal portfolio is an asset – not a liability – to your company
  • Prepare for sale – while I’m not sure this’ll ever happen, you can use your legal assets to increase the sale of your business

2. What can you protect?

While I thought I’d protect everything under the sun, it just doesn’t make sense financially. I don’t have $25,000 laying around. You might, but I’m sure you could think of a million better things to do with the money. But, legal protection should be on the list because there’s a lot to protect:

  • Your company name
  • Your company logo
  • Unique product names
  • Slogans and taglines
  • Brandmarks
  • Characters
  • Unique packaging (limited, but possible)
  • Made-up words (those are fun, but I don’t have any) ex: apple for electronics.

Now, you obviously don’t have to protect everything. I mean, money doesn’t grow on trees. That’s why there’s this next question.

3. What should you protect first?

I was advised to protect my company name first. Seeing as it’s plastered all over everything – labels, cards, banners, etc. I’d never want anyone else to use Green Mountain Mustard (rumor has it in the 1980’s there used to be another Green Mountain Mustard, but they never protected the name). Next, my legal team would look at protecting each flavor name.

Side note again: I have “cute” names for all of my products – my customers love them – but they’re unique to my company. Things like “horseradish mustard” and “black currant vinaigrette” are common place and can’t be protected.

I was advised not to protect my logo – the visual part. It’s not like the apple “apple” or the nike “swoosh”. It’s 6 lines that form a mountain. Nothing terribly unique to warrant protection from impostors.

4. Do you really need to protect your logo?

Yes – if you have a distinguishable brand-mark, like I mentioned above in question 3. If it’s just text and a couple lines – or clip art you found online – don’t bother. It’s a waste of money. But, if another company’s logo looks suspiciously like yours, you may want think about protection.

5. How do you go about protecting anything?

The United States Patent & Trademark Office (USPTO) is your friend. There, you’re able to search for any trademark, copyright, or protection a company or individual has ever filed for. If you’re a data nerd like me, it’s pretty cool. So, before you trademark “Jumpin’ Jack’s Crazy Jalapeno Sauce” someone might already have protected it (Blast!). Search here first before you invest any money.

You can do this yourself. However, to make sure it’s done correctly, I’d advise partnering with a trusted law firm that specializes in intellectual property law. The process is rather simple to file copyrights and trademarks – just a couple pages – but there’s a reason people go to law school – to do it right.

You’ll get a piece of paper in the mail asking for the filing fee (it honestly looks like junk mail) to be paid within a few weeks. Speaking of filing fees…..

6. What does it cost to protect everything?

To file a trademark or copyright will cost you $375/trademark. In addition to the fee, my lawyer charged me $800 to take care of everything. Again, you can do this yourself, and just pay the $375. This only protects you in the United States. Country specific – or even global filing – is much more expensive and only makes sense if you’re exporting products to other countries. Or, if you’re just an enormous multi-national corporation.

What I protected with Green Mountain Mustard

I chose to protect my company name – not the logo. Just the word mark. That means, no matter how anyone styles Green Mountain Mustard – colors, fonts, size, etc – I can take legal action. While I believe it will never happen, it’s nice to start building my legal portfolio.

When I get a little bit more cash into the company, I’ll protect my flavor names. At $325 a piece (if I do the work myself), it gets pricey quick. Guess that means I’ve got to stop making new flavors, huh?

So, that’s all the legal advice I’m going to dole out for now. While I’d love to answer your questions, I’d recommended talking to your lawyer first. They’re a lot smarter than me 🙂


Your turn: Do you have any crazy legal experiences with your food business? I’m sure the community would benefit from reading about them – that is, if you can share them.

 

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12 Comments on this post

  1. AUTHORElaine

    on November 7, 2014 at 1:49 am - Reply

    I am sorry about your troubles, your article is very important for small business owners (and I am one too). One thing I will add as a suggestion if you get a trademark is to set up a google search for your trademark to see everything that shows up on the web related to the business name because you have to be proactive if anything comes up that is close to what you own (as intellectual property) or you can lose your rights to it.

    • AUTHORmichael

      on November 12, 2014 at 2:13 pm - Reply

      Great point, Elaine — thanks for sharing. I’m a constant Googler — especially with our new flavor launches.

  2. AUTHORErik Z.

    on November 7, 2014 at 2:13 am - Reply

    Hi Michael, Interesting read. Sorry to hear about this. It is to bad that the large national brands always think every small business is out the get them. Good tips above as well. I too would suggest using the lawyer to process any paperwork. Without naming names; can you narrow down the category of the company that bullied you? Condiment company? Thanks for posting!

    • AUTHORmichael

      on November 12, 2014 at 2:14 pm - Reply

      Thanks, Erik — it was a large condiment manufacturer. Tiny GMM didn’t have a glimmer of hope. It wasn’t worth pursuing further.

  3. AUTHORRocky DeCarlo

    on November 11, 2014 at 9:34 pm - Reply

    we used legal zoom to trademark The Best Tasting Hot Sauce… Period. We thought very inexpensive, didn’t have to go back & forth with lawyers running up a legal tab. It was quick,inexpensive and thorough. Next we are going to tackle our name. Rocky.

    • AUTHORmichael

      on November 12, 2014 at 2:15 pm - Reply

      Glad to know LegalZoom didn’t give you much trouble, Rocky. Best of luck with all your legal adventures.

  4. AUTHORTimothy Fitzgerald Young

    on November 12, 2014 at 1:08 pm - Reply

    Great advice. I awoke a little over a year ago to discover that The Huffington Post and Chipotle Mexican Grill had joined forces to launch a blog using my trademarked company and blog name, Food For Thought, to launch a blog covering the same topics as mine. What a nightmare! The lesson for me is trademark does not protect you if you are the little guy unless you have more money. And they know it. The burden of protection falls upon the trademark holder. The U.S. Patent and Trademark Office does not come to your defense. So what does a little guy do? I pulled my kids from school and we traveled to over 10 states picketing Chipotle restaurants and the corporate headquarters in Denver. One year later, Chipotle dropped their association with the blog, but Huffpost (Time/Warner) forges ahead ignoring this small organic farmer in northern Michigan. I don’t have the money to sue them and they could tie me up and drain my funds for years. So I will continue my public relations campaign, though I suspect Time/Warner has some pretty stout armor and are a much more hardened target when it comes to the court of public opinion. You can read about my campaign here: http://www.chipotlewatch.com.

    • AUTHORmichael

      on November 12, 2014 at 2:19 pm - Reply

      Hey Timothy,

      Interesting how the battle is going the other way with you. So awesome that you took to the streets with your family. That must have been an amazing experience for your kids. Best of luck man — it’s almost always an uphill battle.

      Michael

  5. AUTHOREllen Freedman

    on November 15, 2014 at 1:09 pm - Reply

    We are Food Package Designers and have seen this happen repeatedly over the years. The more successful smaller companies become the more they are targeted by the big brands.
    Word to the wise: Factor it into your cost of doing business. They do.

    • AUTHORmichael

      on November 21, 2014 at 3:43 pm - Reply

      Great point, Ellen. You should factor legal into your startup costs — even if you never dip into that money. Thanks for reading!

  6. AUTHORSara Lancaster

    on January 1, 2015 at 8:42 pm - Reply

    GOOD advice all around. Sorry about your struggles, though. Wish the big guys could give the little guys a break sometimes.

    • AUTHORmichael

      on January 1, 2015 at 9:04 pm - Reply

      Thanks, Sara — guess it quite literally is a growing “pain”…

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