As a Phoenix business lawyer that represents more than a few clients in the food industry, I’m often asked by restauranteurs, craft brewers, and aspiring sauce/dressing tycoons how to best protect their secret recipe for…well, you name it. As with most things in the law, the answer is rarely one-size-fits-all and depends on a variety of factors and the client’s objectives and business strategy. This article summarizes a few of the most common questions I’m asked on the subject, as well as my general answers:
Why not patent my recipe?
Patent laws are commonly used to protect inventions and processes and usually are not the best approach for protecting your secret recipe.
First off, as there are really only so many ways you can formulate spaghetti sauce or brew a beer, it is probably going to be difficult for your prized recipe to meet the requirements of being novel or nonobvious–two essential elements for patentability.
Next, the patent process is neither easy nor cheap (if you use a lawyer, which is highly recommended) and can take a year or even longer to work through the process.
However, the biggest reason not to file for a patent for your recipe is that the process of patenting something itself requires that you fully describe your invention and do so as part of the public record (the records of the United States Patent and Trademark Office, to be exact). Therefore, that recipe of yours that was once a secret won’t be as soon as you apply for patent protection.
Lastly, even assuming you are granted a patent for your recipe, you would enjoy at the very most 20 years of a monopoly to prevent everyone else from making your recipe, after which time your rights would expire. It would then be open season for your competitors to copy and sell your dish as their own.
Can I trademark my recipe?
It depends. Trademark law generally applies to brand names, logos, and other identifiers that help consumers distinguish your product or service from that of your competitors.
While your recipe itself (that is, the listing of ingredients) could probably not be trademarked, it is entirely possible that the name you give to the dish created from that recipe could be under the right circumstances. For example, you would have to be able to prove that the name is currently or will shortly be used “in commerce” and is not in conflict or confusingly similar with any existing names, goods, or services. Think of the name “KFC”, its famous “Finger Lickin’ Good” slogan, the popular “Colonel Sanders” imagery, as well as the distinctive red and white trade dress of the bucket and other packaging used with KFC’s offerings. All of these things have been registered as trademarks, even though the actual listing of ingredients to their food items has not.
OK, I can at least copyright my recipe, right?
Maybe. Our nation’s copyright laws give certain exclusive rights to creators of original works (which includes literary creations) of authorship.
Individual recipes can be rather difficult to protect because they are usually more about a functional recitation of ingredients and measurements, and less about the creative expression necessary for something to be deemed a protectable work.
On the other hand, a collection of recipes, for example in the form of a cookbook, could be protectable under copyright law, particularly if its author can show some minimal level of creativity was used in the selection and presentation of the recipes, accompanying commentary, photographs, borders, typefaces, etc.
Under U.S. law, copyrights attach immediately upon fixing your work in a tangible medium. In plain English, this means that even though the expression of your recipe might not be protectable, you should still put it to paper (or word processor, or audio, or video, or some other fixed medium) anyway and sooner rather than later. Doing that does not cost anything other than your effort and, from the legal standpoint, it will make it easier to apply for registration of your recipe if it does take off and you later need to enforce your copyrights against a third-party infringer.
The makeup and underlying policy behind the intellectual property options discussed above make it rather challenging to protect a favorite or potentially valuable recipe. However, all is not lost. In the next article, we will look at a final and more effective method of protecting your proprietary recipe from competitors and others with bad intentions, one that has been used by billion-dollar companies like Coca-Cola and KFC to safeguard the ingredients behind their products from becoming public or exploited by competitors. The best part is, you don’t have to be a billion-dollar company to utilize these protections!
Ben Bhandhusavee is the Managing Attorney for BhandLaw, PLLC, a Phoenix business and technology law firm working with start-up companies, creative intellectual property, Internet and digital media matters, and complex corporate M&A and technology transactions. Ben can be reached at (602) 678-2970 or by e-mail at firstname.lastname@example.org