From product development to marketplace delivery, the associated intellectual property involved in a product’s lifecycle is the differentiating competitive element companies active in food, beverage and agribusiness (FBA) must guard and cultivate. To do so requires a law firm steeped in the legal nuances specific to the market, with the ability to identify potential issues before they arise, and to respond swiftly when necessary.
McDermott Will & Emery’s intellectual property practice includes exceptional experience representing leading food, beverage and agribusiness companies in patent, trademark, copyright, unfair competition and false advertising matters. Our IP lawyers have played substantial roles in some of the largest corporate- and tax-driven projects in which IP assets are central to the transactions.
In fact, we are recognized by clients, peers and industry groups in Chambers USA, Chambers Global, Corporate Counsel, Intellectual Property Today, IAM Patent 1000 – The World’s Leading Patent Professionals, Legal 500, Managing IP and World Trademark Review 1000 – The World’s Leading Trademark Professionals.
Clients benefit from a coordinated team approach that brings together the skills and legal acumen of our intellectual property and regulatory lawyers to address the numerous associated issues involving labeling, packaging, advertising, brand and logos. In so doing, we help clients ensure compliance with the regulations of the many agencies that can impact the FBA industry, while also helping protect and cultivate clients’ IP assets.
Our team combines a wide array of technical backgrounds, including biotechnology, chemistry, industrial packaging and engineering, and practical work experience to provide pragmatic solutions to FBA clients’ needs. We can quickly identify, protect and maximize the value of proprietary technology, and provide patentability, infringement, validity and freedom to operate opinions. In addition, we can evaluate the value of IP portfolios in association with corporate transactions covering M&A, outsourcing and licensing agreements. The result of our combined technical and legal experience is an IP practice with the skills necessary to cover the full range of IP needs facing companies active in the FBA industry.
"Working in close cooperation with the firm’s potent alcohol and beverages regulatory group, ...[the team] has carved an impressive niche for itself in that space."
Mars, in multiple matters, including:
The successful settlement of a trademark infringement suit. Mars Inc. v. the Hershey Co. et al., Civil Action No. 1-14-cv-00399 (Eastern District of Virginia).
A patent case involving the processing of cocoa beans to extract flavanols (heart-healthy chemicals) which were then used as ingredients in Mars’ products such as Dove Dark Chocolate.
The Pernod Ricard Companies, including Absolut, Chivas, Ballantine, Kahlua, Malibu, Martell, Mumm, Perrier-Jouët and other top brands, in a full complement of trademark, copyright, advertising, counseling, patent and litigation matters, including:
In US district court trademark infringement and dilution cases in New York, California, Illinois and other jurisdictions.
In UK high court litigation against TIML Radio (a division of the Times of India), in relation to the rebranding of Virgin Radio (following its acquisition by TIML) as “Absolute Radio.”
Before the Venice Court of Appeal regarding the enforcement of the Absolut Community three-dimensional trademark in the shape of the famous Vodka Absolut bottle. The legal grounds of the defense in the appeal proceedings focused on the protection of Community three-dimensional trademarks such as the shape of the Absolut Vodka bottle and well-known trademarks.
Heineken brewing company in the successful defense arising from the painting over of a mural in Los Angeles with a “Newcastle” advertisement. The case involved claims under the Visual Artist Rights Act and the California Artists Protection Act. The case settled favorably with no monetary payment by Heineken. Annie Sperling v. Barry Mason Enterprises Inc. et al., Case No. 2-12-cv-10804 (Central District of California).
Sunny Delight, whose products include SunnyD, Fruit 2O, Veryfine, Elations, Boss Nova and Fruit Simple, in patent prosecution, counseling and litigation relating to its brands, product formulations, packaging and bottles.
Monsanto, a global agriculture company, in multiple matters, including:
Winning $1 billion patent verdict, which at the time was the fourth-largest patent jury award in history, against DuPont and involving Roundup Ready Soybeans.
As IP counsel related to the patent protection for genetically modified crops and crop chemicals.
NaturaLawn of America, an organic-based lawn care company, in multiple actions, including:
Claims of trademark infringement against a former franchisee, breach of the franchisee agreement and the violation of the Maryland Uniform Trade Secrets Act. We secured a default judgment on behalf of NaturaLawn, which included monetary damages and a permanent injunction. NaturaLawn of America, Inc. v. Safer Naturally Lawncare, Inc. et al., Case No. 1-13-cv-02609 (District of Maryland).
The infringement of NaturaLawn’s trademarks by a former franchisee, breach of the franchisee agreement and violation of the Maryland Uniform Trade Secrets Act. NaturaLawn of America, Inc. v. Gro-Bro, Inc. et al., Case No. 1-11-cv-03166 (District of Maryland).
Olam International, a leading global integrated supply chain manager and processor of agricultural products and food ingredients, in its acquisition of Con-Agra.
Scotts Miracle-Gro Company, in obtaining a significant settlement in a Lanham Act false advertising litigation brought against a major competitor, regarding various advertising claims that were arguably within the purview of federal agency regulations. The case settled favorably for Scotts as a result of the competitor’s complete agreement to stop all misleading advertising at issue. The Scotts Company v. Central Garden & Pet Company, Civil Action No. 2-09-cv-478 (Southern District of Ohio).
WKI Holding Co. Inc. and World Kitchen LLC as global intellectual property counsel, including in trademark matters and in patent freedom-to-operate evaluations and analyses, patent prosecution and litigation relating to bakeware, dinnerware, household tools, cookware and cutlery products manufactured and marketed, such as CorningWare®, Pyrex®, Corelle®, Revere® and EKCO®.
Secured wins in dozens of contested domain name disputes, including victories on behalf of Absolut, Dogfish Head, Papa John’s and Tyson Foods brands.