Between international markets, the vast online marketplace and the rapid emergence of new cannabis products, it can feel impossible to protect a candy brand name these days.
However, those challenges only make it more important for companies to remain vigilant about doing just that, according to Shayon T. Smith, chief counsel, global intellectual property and litigation, The Hershey Co.
Smith, along with Elizabeth J. Rest, principal and co-founder, Crown LLP, recently shared tips and insights about trademark and brand protections as part of their presentation during the Western Candy Conference, held virtually March 18-19 and available OnDemand for attendees.
“The success of a company is built on strong brand names, because consumers turn to brands they trust,” Smith said. “Your brands are the core of your business.”
Beyond consumer confidence, though, companies also have an obligation to protect trademarks or they risk losing them, she explained. So it’s important to monitor for potential misuse and respond with things like cease and desist orders, requests to social media sites to take down third-party posts and legal action.
The online marketplace, in particular, has presented a particularly challenging environment for companies looking to protect brand names, and the global pandemic has only heightened those issues.
“Whether it's counterfeit goods, look-alike products or phishing scams, it's becoming easier and easier for businesses to become targets of infringing activity,” Smith said. “And with the global pandemic, more consumers have shifted to online shopping in greater frequency, making the digital space something you need to actively monitor.”
One thing companies can do is register their brands with Amazon, which makes it easier to enforce intellectual property rights. And companies with a presence in Asia should also consider setting up a protection platform with Alibaba, an online marketplace popular on the continent.
The online marketplace has also created another issue for candy brands — online recipes. While branded products are legally allowed to be included in the ingredient lists, many online recipes also include them in the title, which is illegal without a prior agreement with the owner of the brand. For example, a recipe writer is not allowed to post a “Reese’s Milkshake” recipe without permission from the brand’s owner, The Hershey Co.. But they would be able to list “Reese’s Peanut Butter Cups” in the ingredient list.
Alcohol, cannabis, CBD, vape markets present challenges
The emergence of new markets like cannabis, CBD and vaping, as well as the growing small brewery sector, has also created a new array of challenges for candy company brands.
“We have faced these issues before the pandemic, but since the pandemic we've had a lot more third parties getting more and more creative in trying to imitate or replicate our products, our trademarks, and our trade dress,” Smith said. “Inspired by well-known brands, unauthorized third-party breweries and other alcohol-related companies are creating beverages intended to incorporate our popular flavors and candies, while illegally using our trademarks and trade dress to promote and sell their beverages.”
For a company like Hershey, breweries using the company’s brand name is especially problematic because they already have a licensing agreement with Yuengling for Hershey’s Chocolate Porter beer. That agreement could suffer when other breweries use their brand names without authorization.
However, enforcing intellectual property rights has to be balanced with that fact that many of these infringements are committed by small companies.
“We have to be mindful and sensitive in our approach,” Smith said. “Some of these infringing companies have taken their stories and our cease and desist orders to the press, comparing us to David and Goliath. This can become a huge public relations issue and we could also lose the trust of our customers, who may side with these small, local breweries... And yet, we must still continue to enforce our trademarks or we will lose them.”
There's also a growing trend among the makers of edible cannabis and vaping products to copy the trademarks, packaging and logos of popular candy companies.
“As with the alcohol examples, many of these small enterprises think they're being creative and don't understand that they don't have the legal rights to do these things,” Smith explained.
She showed an example of a cannabis company copying Sour Patch Kids packaging for a product called Stony Patch and another company copying Almond Joy and Mounds packaging for products called Canna Joy and Pounds.
“This is a disturbing trend and we must remain vigilant,” Smith said. “This is not only an [Intellectual Property] concern, but because they are making products that resemble popular candies, they can be appealing to children and unknowingly consumed by them. Which is troubling and a public health danger.”
Prioritizing helps companies combat trademark issues
It's impossible for most candy companies to monitor all potential trademark issues, so Smith recommends prioritizing what's most important.
"Ask yourself what you really need to protect or go after and where you can best allocate your resources," Smith said.
Trademark rights also can be lost through improper use, such as when the owner allows the mark, often unknowingly, to become the generic term for the product itself. This has happened to words like pilates and escalator.
It is also important to be consistent in order to send a clear message.
“Infringers may be deterred from your brands if they see how aggressively you protect your brands and trademarks,” Smith said.
Employees and even consumers can also help companies protect trademarks.
“I can't tell you how many tips we get in our business from friends and family members. We have consumers calling to our 1-800 number, emailing our consumer relations team to tell us about infringements they see,” Smith said. “We can't be everywhere and find everything so we really rely on our village to help us.”
Western Candy Conference Sessions still available OnDemand
The full trademark presentation by Smith and Rest, as well all of the others from the event, are available OnDemand for anyone who registered for the conference, which was organized by the Western Candy Association.
Elizabeth Clair, national confectionery sales manager for Barry Callebaut, served as the chairman of the 2021 Western Candy Conference. She helped spearhead efforts to create the virtual event in light of the ongoing pandemic, with planning starting in Fall 2020.
Clair worked with a team that included:
- A.J. Khoury, director of technical sales, Capol LLC, and Western Candy Conference supplier coordinator
- Brad Smith, director of business development with Utah Paperbox Company
- Anthony Trani, V.P. global marketing and innovation at Bazooka Candy Brands
- Tessa Porter, president of Sprinkk
- And others
“I was honored to have this opportunity to represent Western Candy Association and produce the virtual-format conference celebrating our member companies and building the two-day program of experts sharing their valuable insights on brand creating, brand promotion and brand protection,” Clair said.
The group worked for months to coordinate multiple presentations, as well as member videos. They also arranged to send out sample boxes to all of the show’s attendees with candy and products from member companies to help give the virtual event more elements from an in-person conference.
Other sessions at the event covered a range of topics, including eCommerce solutions, cyber risk, retail and industry outlooks, team building, scaling up and more.
The 2022 Western Candy Conference is slated to be held March 16-20 in Scottsdale, Arizona. Christie Rowland, Jelly Belly Candy Co., will chair the 2022 event.
The Western Candy Association is an 88-year-old association of confectionery manufacturers and suppliers and member companies are located across North America.
BNP Media, Candy Industry’s parent company, provided the hosting platform for the virtual conference, which allowed for live chat from attendees during all of the presentations as well as OnDemand viewings after the event.
The full list of WCC 2021 sessions included:
Hot Topics Across the Food Industry
Vice President Industry Development
Cyber Security – Protecting your Company in a Work from Home World
Pierson Clair IV
Kroll Cyber Risk & Global Incident Response
Flexing with Current Assets to meet Consumer Needs
Global Confectionery Outlook and Strategies
Building Championship Teams
Sports Journalist and Author
Intangibles: Unlocking the Science and Soul of Team Chemistry
Vice President, Global Marketing and Innovation
Bazooka Candy Brands
Regional Sales Director
Retail Acceleration and Consumer Behavior
Vice President Merchandise and Brand Strategy
Senior Vice President, Public Policy
National Confectioners Association
Intellectual Property & Brand Protection: Brands in Crisis
Shayon T. Smith
Chief Counsel, Global Intellectual Property and Litigation
The Hershey Company
Elizabeth J. Rest
Co-founder of Crown LLP