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While trademarks and trade dress are important for protecting General Mills’ many food products, brand value itself goes deeper than just a legal registration. Josh Burke, senior IP counsel, talks to Ed Conlon about protecting rights and keeping consumers happy.
Since 1949, tens of thousands of Americans have donned their aprons, headed for their kitchens, and submitted recipes for the PILLSBURY BAKE-OFF CONTEST. In October 2016, The Charlotte Observer dubbed it the “biggest cooking contest in the country.”
Pillsbury is just one of many brands owned by General Mills, and the PILLSBURY BAKE-OFF CONTEST itself is trademarked in the United States. But while legal protection is clearly important for General Mills, there is much more value tied up in the cooking contest brand, even if it is hard to measure.
“People are very passionate about it and think, ‘this is something I want to do before I die.’ There is really no way to measure the value there,” says Josh Burke, Senior Intellectual Property Counsel at General Mills.
General Mills is home to many other household-name food brands, including HÄAGEN-DAZS ice cream, OLD EL PASO, a range of Mexican-themed meal ingredients, and baking brandBETTY CROCKER. Burke says these have become “part of people’s lives.”
“For Thanksgiving, having PILLSBURY CRESCENTSrolls is a tradition in many families, and going out for HÄAGEN-DAZS ice cream is a celebration.
“Because we make food, our brands are products that are being put into consumers’ bodies, and we feel responsibility because of that,” he says.
“General Mills is very much a company of brands,” he adds, and while IP registration strategy is heavily weighted towards trademarks, trade dress must be considered too.
“One of the challenges, particularly with trade dress package design, is that brands stay the same, year to year, but there is a lot of interest from marketers to keep the packaging looking fresh, so trade dress can change more frequently than our brand,” he says.
A further consideration is the impact a new trademark registration can have on trade dress. General Mills might run a promotional campaign in the spring but want a different one in the summer, thus requiring a new mark.
“But the fact that you have made the change could eviscerate the trade dress based on the registration,” says Burke.
“Despite this we are, hopefully, using the same trade dress across many varieties of the same brand of products,” he adds.
“With the OLD EL PASO meal brand, for example, there are many, many products in the range but hopefully they all have a very similar look and feel.”
Whether General Mills is seeking trademark or trade dress protection, different jurisdictions can have different requirements for registration.
“We see that especially as it relates to product shape and product design. Even with respect to brands, it can vary as well.”
In some countries, China in particular, the law requires the trademark to be registered exactly as it appears on the packaging, says Burke.
“In most places you can register the brand in the abstract, but in China they are very tight with that—you have to register the specific look and feel of how that brand is used on the package.
“So if you change fonts or make other changes that in most countries would not be relevant, it can impact whether your registration still covers the brand itself,” he explains.
“This can be tricky to contend with, but on the other hand, trademark law generally favors consistency, and from a consumer and marketing perspective, the brand itself shouldn't change that often.”
Trademarks and trade dress are both important to the company, but the latter is particularly important for attracting people’s attention in the marketplace.
“HÄAGEN-DAZS ice cream or PILLSBURYmeals, for example, are well known to consumers and have strong visual identities that help consumers find our products in stores.
“We know that the look and feel is very important to consumers—if they are in a hurry and not carefully looking at the goods in store they may grab a different product by mistake.”
The interaction between trademarks as a legal right and the more holistic brand is of increasing importance, particularly from a brand protection standpoint as consumers seek greater interaction with their favorite companies.
“From a classical brand protection strategy, you can’t let consumers do things commercially with your brands, but I think they want to be able to have some ownership stake, and we as companies need to figure out a way to let them do that, whether through user-generated content, tweeting with them, or other creative ways to play with the brand,” says Burke.
“It is important to find the right line between brand protection and being appropriate.
“We live in a world where social media is ever present and constant, and consumers have an increasing desire for transparency and authenticity from the brands they choose to trust.
“You can see consumers who have a sense of ownership and stewardship for their favorite brands and want to be part of the conversation with them, and I think brands have struggled with how they interact with their consumers appropriately.”
The philosophical shift from trademarks to brands has been an evolution, says Burke, but not all trademark professionals have the privilege of close interaction with marketing specialists.
For those lawyers without such experience, Burke advises, “One of the best things someone taught me is to put myself in someone else’s shoes, whether they are a marketer or consumer, and to think about ‘how does this play out in the real world?’
“You have to get past technical trademark rules—you have to think about what makes sense for customers too.”
Josh Burke will be speaking in CM03 Trade Dress: Brands vs. Private Label—When Is It Too Close for Comfort? on Monday from 10:15am to 11:30am about trade dress and other IP rights in the food industry.
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HÄAGEN-DAZS, General Mills’, brands, household goods, trademarks, trade dress, INTA17