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  • Writer's pictureMatt Melancon

Developing a Holistic Brand Portfolio: Fitting the (IP)ieces Together

There are many times when I have had to advise a client on what type of IP would work best for (a) specific goal(s) (e.g., offense, defense, brand expansion, parallel branding, product line expansion, brand pivots, etc.), and thereby distinguish the use of certain forms of IP for clients’ brand portfolios.

Sometimes, clients (even more sophisticated ones) do not know where to start and require guidance on the basics. Other times, clients believe they know what they need and want to zealously pursue that path without fully appreciating the risks and future ramifications. The latter is otherwise known as trying to fit a square peg in a round hole.

A good IP attorney, however, can modify that square peg to fit the round hole and serve to protect your company’s valuable IP and brand portfolio. When it comes to creating your brand strategy and protecting your brand’s portfolio, an IP attorney is a multi-purpose tool. One can sand a little (or a lot!) here. Chisel a little there. Rotate. Swivel. Shift perspective and see problems (i) from different angles or (ii) further down the line. This process can then be simultaneously performed depending on your business’ needs, direction, future growth plans, and any necessary pivots along the way.

Thinking Outside the Box: Trade Dress for Websites and/or Goods

In Tiff’s Treats Holdings, Inc. v. Ryan Rich dba Hot Box Cookies, et al., No. 6:20-cv-1075 (W.D. TX 2020), Plaintiff (Tiff’s Treats, a baked goods and delivery service, specifically regarding cookies) brought trademark infringement claims against Defendants but a significant portion of their complaint revolved around the defendant’s cookie boxes (Image 2) allegedly infringing Tiff’s Treats’ trade dress registration (Image 1).

Image 1: Tiff’s Treat’s Trade Dress Drawing

Specifically, Tiff’s Treat’s trade dress registration states the mark “consists of a three-dimension configuration of a rectangular box with silver interior and white exterior. A blue ribbon is tied around the box. The wording “TIFF’S TREATS COOKIEDELIVERY.COM” stylized in blue appear on upper center of the box. The rectangular-shaped box appears in dotted lines is not claimed as part of the mark.” (See below for the as-filed registration).

Image 2: Tiff’s Treats Trade Dress Registration

Image 3: Defendant(s) Allegedly Infringing Boxes

The case was eventually settled out of court, so we do not know the exact terms of how things ended, but it does appear that Hot Box Cookies is no longer using a silver interior on the box (see Image 4 below).

Image 4: Hot Box Cookies Facebook Post on Dec. 2, 2022

This case highlights several key points:

  1. When the rubber meets the road for protecting your brand and IP, you want to have carefully and strategically thought through your options in order to have the necessary protection in place.

  2. By only focusing on trademarks (that is, word or design marks) as opposed to considering alternative and/or supplemental IP protection (such as trade dress), could be a costly error down the road.

  3. Even if a potential infringer ignores cease-and-desist letters for infringing IP rights, a strong complaint supported by multiple forms of IP protection may drive the infringing party to settling a potential action earlier, thereby saving your company on potential future/unnecessary litigation costs and allowing you to focus your energy on your business.

Conceptualizing an IP attorney as the figurative hammer that will fit a square peg of a business goal into the round hole of IP law (or a dozen round cookies into a baker’s box) is a gross oversimplification and underutilizes the full breadth of flexibility, dexterity, and nuance that a good IP attorney possesses. Although an IP attorney can be that hammer to get it done — most likely, at great expense and with disappointing results — this view unnecessarily limits the full breadth of your IP attorneys’ capabilities that can put your company in a great defensive position and can save you from future headaches and heartburn of costly and unnecessary litigation.

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