Naturesweet v. Mastronardi: The New Procacci Bros. v. Chu Farms

The trademark suit filed by Naturesweet, Ltd. against Mastronardi Produce Ltd.  is merely the latest battle over intellectual property rights involving grape tomatoes, which were only introduced to the worldwide produce market in the 1990s.  

The first legal skirmish involved the right to use the term “grape tomatoes” and offers a valuable lesson on how to protect the brand image of an innovative product.

In the United States, the first “grape” tomatoes were grown in 1994 by Andrew Chu in Florida.  Chu received some “Santa F1” tomato seeds from a friend in Taiwan that were ultimately turned into the first commercially significant “grape tomatoes” – a term that Chu coined for the grape-sized tomato that distinguished the variety from cherry tomatoes.  Grape tomatoes are sweet and small with thicker skins than cherry tomatoes, which makes them more durable and, some argue, more flavorful.

In 1998, Chu filed a trademark application with the U.S. Patent & Trademark office for the term “grape tomatoes.”  In hindsight, this might appear misguided because that term presently describes an entire class of tomato and is thus not capable of trademark protection.  At the time, however, it was a new term coined by Chu that he wanted applied only to his “Santa F1” tomatoes.  In fact, the trademark office agreed and issued Chu a trademark registration in March 2000 for “small fresh tomatoes shaped like grapes.”  This meant that Chu had the exclusive right to use this term in the United States in connection with his tomatoes.

Almost immediately, however, Procacci Brothers Sales Corp. challenged Chu’s trademark rights in federal court, arguing that the registration should be cancelled because “grape tomatoes” was a generic or merely descriptive term and thus did not identify the source of the produce.  After a relatively brief court battle, Chu Farms surrendered or otherwise lost any claim it may have had to an exclusive right to use the term “grape tomatoes,” which allowed anyone else to use this term to describe tomatoes of similar size and shape.  

The take away here is that there is significant value in exclusivity and protecting innovation should be of paramount concern to the produce industry.  As we all know, the produce industry is fairly unique in that many of the products look very similar.  The key differences are found in the taste, quality, safety, appearance and other similar factors that may not be readily identifiable pre-sale.  Therefore, the importance of packaging and related marketing innovations are vital to produce companies and they should be protected.  Protecting your intellectual property not only helps define a produce company in a competitive marketplace, but it also ensures that the company receives the benefits of its investments in innovation, quality and food safety. 

NatureSweet v. Mastronardi Produce

Creativity + Innovation = Goodwill

On May 8, 2012, NatureSweet filed a civil action against Mastronardi Produce alleging trademark infringement.  Specifically, NatureSweet alleges that Mastronardi’s “Angel Sweet” mark and its winged tomato design mark infringes upon and otherwise trades upon NatureSweet’s “Nature Sweet Cherubs” brand tomatoes. 

At its core, the complaint alleges that Mastronardi’s packaging causes confusion in the marketplace and allows Mastronardi to trade on NatureSweet’s goodwill, which is a result of NatureSweet’s brand recognition in the retail segment.  In support of this claim, NatureSweet’s complaint discusses NatureSweet’s portfolio of patents and trademarks.  As a matter of fact, NatureSweet reported to the Packer that its Cherubs brand generates about $300 million in annual sales.    The Packer

 As this case unfolds, the take away here is that branding in the produce industry is critical because it is such a fast paced and highly competitive industry.  And, as NatureSweet intends to show, there are ways to distinguish produce in the marketplace that go beyond taste and quality.  Boasting $300 million in sales from the Cherub brand alone, it is clear that a proper intellectual property portfolio is capable of generating significant revenues that are capable of protection. 

Genetically Modified Food (GMO) Labeling… will it be required?

Tom Karst of The Packer recently published an interesting opinion article on GMO labeling.  Tom’s article reported that “the group ‘Just Label it’ has a reported 990,000 signatures in its petition to FDA calling on the agency to label genetically engineered foods…” organizations in favor of this petition want the “FDA to take notice and act on this “right to know” issue.”  GMO food labeling: Resistance is useless – The Packer

Tom’s article raises an important issue that cannot be understated.  The consumers in today’s marketplace are more savvy than ever before and they are proactively asserting their “right to know” about the origins of the food they purchase and consume.  This is a critical point because perception is often more important that reality.

For a recent example of this we turn to the meat industry.  On March 26, 2012, Beef Products, Inc. reported that it suspended operations at three of its processing plants, which processes about 900,000 lbs. of meat at each facility daily.  Why did Beef Products, Inc. suspend its operations?

The decision to halt operations at the three plants comes shortly after retailers began stating they would no longer carry the company’s products due to customer concerns.

Beef Products suspends operations at three plants, FoodONE Article (Division of SeaFax, Inc.) published on March 27, 2012.

Specifically, grocery store operators revealed they would no longer carry the “lean finely textured beef,” or “pink slime,” produced by Beef Products Inc. Ironically, food industry experts agree the “lean finely textured beef” is safe, but recent media reports have caused considerable consumer concern about the product and retailers have bowed to this pressure.  The take away here is that consumer perceptions are stronger than reality when safe products are removed from our stores simply because they are perceived to be unsafe.

Apply this recent event to “Just Label It’s” pending petition to the FDA to require food companies to label GMO food products… rightly or wrongly, I must agree with Tom Karst and say “resistance is useless.”