Page 9 - Beverage MasterOct Nov 2020
P. 9
Legal & Marketing
shoes with a certain famous “swoosh” image on the all unnecessary disclosure. Trade secrets can be
side, they should be reasonably able to assume that just about anything that is confidential to your busi-
pair of shoes was manufactured by Nike, Inc. and ness and gives you a competitive advantage. Some
was made with the same degree of workmanship examples, include recipes, client lists, manufac-
and quality that they have come to expect from that turing processes, marketing plans, and client lists.
company. That “swoosh” symbol, therefore, acts as These are things that, if publicly disclosed, would
a source identifier to tell the public that the product harm the competitive position of the company and,
was made by Nike, Inc. therefore, must be vigorously protected.
What may function as a trademark can be quite One of the most famous trade secrets is the for-
broad, including: the name of the business (e.g., mula for Coca-Cola. This formula has been protect-
Triple Nickle Distillery®), a logo (e.g., the “swoosh”), ed for more than 130 years, sometimes through
a color (e.g., the Home Depot orange or the UPS extraordinary measures. In 1977, The Coca Cola
brown), even a scent (e.g., Verizon owns a trade- Company withdrew its product from India, because
mark on a “flowery musk scent” it pumps into its in order to sell there, they would have had to dis-
stores to help distinguish them from competitors’ close the formula to the government. They decided
environments). Not everything can be trade- it was more prudent to forego sales to one of the
marked, however. Slogans, words, and images biggest populations on earth rather than risk disclo-
that appear merely as decoration as opposed to a sure of their secret recipe.
means of identifying the supplier will not qualify for
protection unless the applicant can demonstrate Protecting trade secrets requires constant vigilance
that the item has achieved “secondary meaning,” in two ways. First, the information should only be
i.e., that the public has come to associate that disseminated to people within the company, or
item with the manufacturer. As an example, in the outside consultants, who need the information in
1970’s McDonalds used the slogan, “You deserve order to perform their duties for the company. In
a break today” in its commercials and other adver- other words, the information is on a strictly “need-
tising. People came to associate this phrase with to-know” basis. Second, those few people who are
McDonalds and in 1973 they were granted a trade- given access, should sign non-disclosure agreements
mark registration. Incidentally, McDonalds briefly with harsh penalties for breach of their duty of
let this trademark go abandoned in 2014, but quick- confidentiality. Once the information gets out, it’s
ly re-filed and the mark is still active today, more nearly impossible to un-ring that bell, so there must
than 45 years after it first registered. be severe financial consequences to someone who
leaks the information.
In general, marks also cannot be descriptive of the
product or geographically descriptive of the source Brian Kaider is a principal of KaiderLaw, a law
in order to be registered as a trademark. For exam- firm with extensive experience in the craft beverage
ple, one could not obtain a registration for just the industry. He has represented clients from the small-
words “India Pale Ale.,” because it simply describes est of start-up breweries to Fortune 500 corpora-
the product and does nothing to differentiate it tions in the navigation of regulatory requirements,
from every other IPA on the market. Similarly, an drafting and negotiating contracts, prosecuting
attempt in 2019 to register the name “Philly City trademark and patent applications, and complex
Brewery” was refused as “primarily geographical- commercial litigation.
ly descriptive,” because the applicant could not
demonstrate that people had come to associate For more information
that name with its business as opposed to the many please contact Brian Kaider at...
other breweries in Philadelphia. 240-308-8032
BKAIDER@KAIDERLAW.COM
Trade Secrets Protect Valuable www.KaiderLaw.com
Confidential Business Information
Unlike other forms of intellectual property, there
is no registration system for trade secrets, because,
by their very nature, they must be protected from
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