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Protecting the marks from the mountain

Vice-President and Associate General Counsel of Del Monte Corporation Timothy Ernst tells Fionn O’Raghallaigh how the company’s licensing structure affects trademark strategy, especially given the variety of products the company is involved with.

Tell us about Del Monte’s history
Del Monte has been in California since the gold rush, when farmers started canning fruits and vegetables for the miners to take up to the hills. The DEL MONTE brand started back in the late 1800s and became the flagship brand of the company.

The company was originally named California Packing Corporation, but in 1967 it changed its name to Del Monte Foods in recognition of its flagship brands.

What are your key brands?
Del Monte has two main businesses. We have the consumer or human food business and then we have the pet food business, which a lot of people don’t associate with Del Monte. On the human side, the principal brands are the DEL MONTE brand, which is fruits and vegetables mainly. We also have a brand CONTADINA, which is primarily tomato products, particularly Italian-themed tomato products. Another brand is COLLEGE INN, which is a broth, like a chicken broth. Then we have another brand called S&W, which is a large brand on the west coast of the U.S. It has some following in the Middle East.

So that is the human side. We have a pet food business. Roughly we generate half of our revenues from pet. On the pet food side, some of our more well-known brands are MILK BONE, MEOW MIX for cat food, KIBBLES ‘N BITS dog food, 9 LIVES cat food and a number of other smaller brands.

Does having a human and animal side affect your trademark strategy?

The answer is yes. Del Monte is somewhat unique. Up until 1989, the company had global operations. In 1989 the company was split into a number of different pieces. Parts of the business were sold off, and the company that I work for (Del Monte Corp) kept the U.S. and South American business.

The Europe, Asia, India, Mexico, Canada sections were all sold to different companies. We retain ownership of the trademarks and granted licenses to these other companies, so because of that we maintain the trademarks. We have registrations in 172 countries, but we largely operate in the U.S. and South America. Because of this licensing arrangement we don’t sell into Europe, for example, because we have given an exclusive license to companies there.

So our strategy on the human side is to maintain the trademarks throughout the world, again focusing mainly on our business in the U.S. The other brands S&W, CONTADINA, and COLLEGE INN are mainly U.S. focused. We do sell into Mexico and Canada, but it’s small.

On the pet food side it is mostly US based. We do do some business in Europe, the Middle East, and South America. We do a lot of business in Canada and some in Mexico. So our registration strategy is based on where we conduct business, although we do a lot of defensive filing in a lot of the major countries of the world to protect the brand.

Del Monte is famous for ‘the man from Del Monte' ad campaign in the UK. Are you aware of that?
It was not in the U.S. and if you ask most people from the U.S. they will never have heard of the ‘man from Del Monte’. But for someone from the UK, if I mention I work for Del Monte, they always mention ‘it’s the man from Del Monte’, always. It was a big part of Del Monte in the UK. I think that the campaign started when the company was one company.

What is your role in the company?
My title is Vice-President and Associate General Counsel. So I have a number of areas I am responsible for, including intellectual property, which covers trademarks and patents. I am also responsible for the commercial area, such as contracts and supply agreements. Regulation of food products, advertising, and Customs are my areas too, so a broad portfolio. The trademark work is probably 20% to 25% of my time.

What is your background?
I graduated from the University of Wisconsin, with a degree in history and economics. I went to law school at University of California Los Angeles. During law school I spent a year in the University of Cardiff, where I studied law.

After graduating from law school I worked at two law firms in San Francisco, one named Pettit and Martin, for a couple of years. And then I was at the firm now called Bingham McCutchen. I was there for about three years. While at Bingham, one of my clients was called California and Hawaiian Sugar Company, also known as C&H Sugar. Ultimately they asked me to come in-house at C&H Sugar; I was there for five years doing similar things to what I do here, the general corporate, IP and regulatory work.

C&H was interesting. It was a cooperative of Hawaiian sugar growers. They would put sugar on a ship to California, where it would be refined. I came to Del Monte in 1995.

What kind of trademark problems does the company face?
We are sort of a unique food product. We don’t have a lot of counterfeiting. We do have some in China. Interestingly, corn seems to be the counterfeit item of choice. You’ll see fake DEL MONTE labels, as well as labels that are derivative of the DEL MONTE label, but still infringing labels. It’s an irritant, particularly for our licensee in China, Kikkoman.

The biggest issues involve our licensing structure, so the flow of products from one territory to another. So for example Del Monte Europe has the trademark rights to the DEL MONTE brand in Europe. Products may flow from the Philippines, let’s say, into Europe and from the U.S. into Europe. How to control or police that is difficult. In almost all cases the product is not sent there by the manufacturer. It’s bought and through the chain of distribution ends up in another licensee’s territory.

So, Canada may complain about U.S. Del Monte products in Canada. We will not sell our products to Canada without the licensee’s consent, but somebody may go down to COSTCO and buy several products and ship them into Canada. Policing that is difficult, but it is an ongoing struggle.
Do you face any trademark problems online?

We get it a little bit. Del Monte is a little below the radar. It’s not the cybersquatters’ first choice. But we do get it, and we do go after cybersquatters in cases where we think it creates a problem. We don’t register every domain name in every country—it’s just not worth it to do that for us. So we do have some DEL MONTE countrycode domains, but we don’t go after all of those. We’d spend all of our time and money doing that, if we did.

Do you face any issues specific to your industry?
On the pet food side it is very difficult to export pet food products, particularly pet food products with beef into Europe, for example, or Asia, mainly because of mad cow disease concerns. So that is a hindrance to the development of our international pet food business. That is a nut we are trying to crack; how to expand our international pet food business. Probably partnering with a company in Europe or Asia would be the best way. We’ve got the brands ready to go.

It is a challenge maintaining and registering in all the countries of the world. We are obligated do to that under our licensing agreements, but it is difficult to do when we are not operating the businesses in those areas.

So for example we have the cost of maintaining the marks in Asia, but for the most part we don’t do business in Asia, so we don’t see the benefits of those registrations. We don’t get a royalty, so it’s an ongoing cost without the obvious benefit of royalty or sales.

Does the name DEL MONTE cause any difficulty?
Del Monte means from the mountain. It’s a common phrase in Spanish-speaking countries. Sometimes it’s hard to get and maintain registrations in Spanish-speaking countries. They might argue that it’s descriptive, so you might have a company that grows wine and wants to use ‘from the mountain.’ It can be difficult to convince registrars sometimes that ‘from the mountain’ is something we own and should be protected.

What would you recommend to do in San Francisco?

San Francisco is famous for its restaurants, so definitely try the restaurants. The natural beauty of San Francisco is great. There is a place called the Marin Headlands, which is just across the Golden Gate Bridge and west. There are some beautiful wild spots there to look back and see the city and bridge from. It’s very historic. Crissy Field is nice place for a walk and there are some great museums in Golden Gate Park too.

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