Hot Pockets, Strategy and the Right-Sizing of Trademark Protection?

We’ve covered many trademark and brand management themes over the last eleven years, this falls in the category: The Right-Sizing of Trademark Protection?

As reports emerge about the recent Coronavirus fear driving people to clear store shelves to stock their home pantries and freezers, a Hot Pockets TV ad hit me.

Clearly consumer packaged goods and non-perishable or frozen food products, like Hot Pockets, are likely to enjoy an uptick in demand, at least in the short term.

The Hot Pockets package provides yet another example of the common practice of adding the word “brand” on packaging to help address any fear of genericide.

Even the logo used on packaging during the early 2000s, according to Wikipedia, reminded of the “brand,” generically calling the products “stuffed sandwiches”:

Loyal DuetsBlog followers appreciate our theme that calling something a brand doesn’t necessarily make it so, or keep it so, but it can help to influence meaning.

Yet, noticing that theme in this current example isn’t the point today, except to say it led to today’s unwrapping of existing Hot Pockets trademark protection.

We are fully mindful, of course, that there is no one-size-fits-all approach to trademark protection, but what is true for all, is the need to craft a strategy.

For some brands that might mean a robust portfolio of registered marks, with robust trademark watching/policing, for others it might mean quite a bit less.

There is more and more discussion of “right-sizing” trademark portfolios to help control cost, right-sizing will mean different things, depending on the strategy.

So, as we unwrap what is left of the trademark portfolio for the Hot Pockets brand, we fully appreciate we can’t know the strategy, but assume there to be one.

Hot Pockets has enjoyed great commercial success over the years, leading Nestle to purchase Chef America, then brand owner, for $2.6 Billion in cash, back in 2002.

Nestle still describes the importance of the brand this way:

“What started as a sandwich 30 years ago has evolved into an iconic American brand that’s become a staple in American pop culture!”

While it has been the butt-of-jokes in some comedic circles, it also has enjoyed enormous favorable film mentions, both typical signs of a pretty famous brand.

For example, in Austin Powers: The Spy Who Shagged Me, released in 1999 (video here), Dr. Evil, lovingly inquires: “Mini Me, You Hungry? Not even a Hot Pocket?

Given the enormous value of the brand, I admit surprise to find only four live U.S. trademark registrations for Hot Pocket(s); and just two being owned by Nestle:

  • HOT-POCKETS for “pre-cooked, ready-to eat, frozen bread having a fruit, meat, cheese and/or vegetable filling;” (owned by Nestle)
  • HOT POCKETS for a variety of merchandise items, now spanning four classes of goods (originally seven classes of goods); (record owner is Nestle)
  • HOT POCKETS for “Warmer pads for medical purposes;” (record owner is an individual in California); and
  • HOT POCKET HAND WARMERS for “Non-electric pocket warmers, namely, chemically-activated heating packets for warming hands.” (record owner is a company in Tempe, Arizona).

Another question worth asking may be why Nestle’s multi-class HOT POCKETS registration never has been asserted in a TTAB case, despite fifteen such Nestle oppositions over the past 20 years. It may be that Nestle is strategically trying to streamline opposition proceedings and narrow the scope of discovery; most of the oppositions involve the proposed registration of “POCKET(S)” for food items. Or, for skeptics, it might be avoidance of a deadwood challenge.

If deadwood – we won’t likely know until the 2022 renewal is due – but, after cancellation the USPTO won’t be able to conduct non-food product enforcement for HOT POCKETS (without Nestle lifting a finger), as it did in 2011, refusing registration of HotPocket for panties, based on Nestle’s multi-class registration.

Another question perhaps worth pondering is what the strategy might have been to allow a 1984 registration to expire in 2004, instead of attempting amendment to an updated stylization, contending the commercial impression is the same:

We admittedly don’t know why this early registration was allowed to expire without the registrant attempting amendment, but let’s not assume it was impossible, as it looks more than possible, in fact, it looks probable to me.

A significant benefit of seeking amendment to keep an old stylized registration is hedging against the risk of a more rigorous USPTO examination of a new filing.

At one time the Hot Pockets brand was the center of an entire family of related Pocket-formative brands: Lean Pockets, Croissant Pockets, Deli Pockets, Lunch Pockets, Pocket Meals, Pocket Stix, Healthy Pockets, among others (not without controversy) — yet now it appears to be a pair: Hot Pockets and Lean Pockets.

Over the years, nearly a baker’s dozen of trademark registrations for Hot Pockets and marks containing Hot Pockets — all for the sandwich brand — have expired.

The description of goods chosen is a strategic decision too, and 20/20 hindsight is unfair, especially when all facts existing at the time are not available to us, yet many, including myself, advocate for the broadest description of goods possible. So why not register HOT POCKETS for “sandwiches” — without building into the description of goods details of their physical state, composition, or ingredients?

In fact, the USPTO has allowed applicants to broadly claim “sandwiches” without further description since August 2002; the Nestle description registered for the food mark is not only confusing, but more than a mouthful: “Pre-cooked, ready-to eat, frozen bread having a fruit, meat, cheese and/or vegetable filling.”

Let’s be clear, I’m not saying Nestle’s Hot Pockets brand is an empty shell devoid of any valuable legal trademark ingredients, or that the registration pantry is bare, but the quantity of tools for protecting it have declined over the years, begging the question of whether this has been a conscious decision, and if so, why?

There’s been great discussion of “trademark singularity” over at our friend Ron Coleman’s Likelihood of Confusion blog, a topic relevant to this discussion too.

While it is pretty clear now that Hot Pockets (just the words), is not singular in meaning, it would appear difficult to deny that the logo rendition of those words creates a singular trademark, with a meaning pointing to only one source:So, why has that singular depiction of the Hot Pockets brand not been federally-registered? Given the long delay in trying, it might relate to this Office Action, which initially refused the mark as merely descriptive, and for some reason, no attempt was made to overcome it, so the application was abandoned.

Perhaps this illustrates one of the challenges in seeking new registrations when the USPTO can view the original wording/content very differently decades later.

In the end, it’s about crafting an appropriate strategy to the brand in question, and while “right-sizing” should always be a goal, it is a conclusion, not a strategy.

Brand owners and managers, when is the last time you directed your trademark team to audit the appropriate level of your protection for an important brand?

Trademark types, when did you last recommend doing one, and how did it go?

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