One of our clients is a brand of chocolate that got themselves into a sticky situation. This situation might be familiar to all of us: The design packaging.
We helped them apply for trademarks for their logo and their product name in all the right trademark classes and countries. Every i was dotted, every t crossed.
So imagine our surprise when they called to tell us that they had been hit with a trademark infringement suit. They were also asked to withdraw all the products they had just shipped to stores for the first time.
It turned out that after the trademarks were registered, the company had hired a designer to design product packaging, store displays and marketing materials. This designer had taken the registered logo and then around it added some words to spruce up the message. It looked great and the company approved it and started printing. As soon as the products hit store shelves, they received a letter from a lawyer representing another chocolate-producing company. As it turned out, one of those words that the designer had added on the printed materials were a trademark belonging to this other company.
This is an example of the case. A fully registered and protected logo on the left and with an innocent word added on the right that happened to be a trademark belonging to someone else.
Our client called us and we said that in our opinion, the cheapest solution here is to recall and reprint. So they did.
What do we advise our clients?
We advice all our clients to run designs like this by us for us before printing. We are not designers and we do not claim to know how to make printed materials that pop, but we can search to see if you might infringe on someone else’s trademark.
Trademark agency is unfortunately full of coulda-woulda-shoulda.
So next time you are feeling adventurous about your design, make sure that you follow a branding plan so that you will be safe in the long-run.
Interested to know more about your trademark and worried that it might have infringed somebody else’s? Contact us via the form below!