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Signing With a Co-Packer? The Trademark Steps Between Small Batch and the First Real Run

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Before you sign the co-packer agreement and commit to the minimum order, get the name searched and a federal application filed in your company's name. Selling small batch for two years gives you something, but not what most founders think, and the co-packer's minimum is the first bet big enough to lose. At Citrus Legal that's Grove, $2,600 flat for the search, the written opinion and the application, plus $350 per class to the USPTO.

Here's what your small-batch history does and doesn't give you, and what to do in the weeks before the first run.

What two years at the farmers' market actually bought you

Selling under a name creates rights, but they come from use, and they reach as far as your use does. If you've sold at markets in one county and shipped a few online orders, your rights are real but local. Someone selling under a similar name in another state may have rights of their own, and until one of you files, nobody has a nationwide claim.

Filing changes that. Under 15 U.S.C. 1057(c), filing the application "shall constitute constructive use of the mark," and once the registration issues you have nationwide priority from your filing date against anyone who hasn't already used or filed. The statute carves out people who used the name before your filing date and haven't abandoned it, so an earlier local user keeps what they have. The article on prior user rights explains how that plays out from both sides. The practical point: the day you move from small batch to a co-packer is the day you stop being local, and your filing date should be before that, not after.

Why the search comes before the minimum order

A co-packer's minimum is usually your first order that can't be eaten by friends or sold through at one market. If the name has a problem, you find out the expensive way: after the run, when a letter arrives or the USPTO cites someone else's registration.

The USPTO doesn't need the other product to be identical. Its manual says the goods "do not have to be identical or even competitive to find a likelihood of confusion," they "need only be related in some manner." A jam brand can collide with a registered name for syrups or baking mixes. And when the other registration doesn't limit its channels, the USPTO presumes the goods "move in all normal channels of trade" and "are available to all classes of purchasers." Being small, or local, or online only, isn't a carve-out.

Seed is a $650 clearance search with a written opinion. Measured against a co-packer deposit and a label print run, it's the cheap step. It's also the only one that can tell you to stop before you spend. The article on how different a name has to be walks through what "related" means in practice.

Use-based or intent-to-use: which one you file

Because you've been selling, you can usually file on actual use, with a specimen showing the name on the product as sold today. That's the simplest path when the small-batch label and the co-packed label will carry the same name.

If the co-packer run is a new product, a new flavor line or a new category you haven't sold yet, file that part on intent to use. The USPTO's own page explains the sequence: after the application is approved and a Notice of Allowance issues, you have six months to file a Statement of Use, with six-month extensions available up to five times, so three years in all. Each extension is $125 per class and the Statement of Use is $150 per class. The article on filing before launch lays out the timeline. The thing to avoid is claiming use on goods you haven't actually sold yet. File what's true today, and file intent-to-use for what's coming.

The co-packer makes it. You still own it.

Founders sometimes worry that handing production to a co-packer weakens their claim to the name. It doesn't, as long as the deal is set up as yours. The USPTO manual says an applicant can claim ownership of a mark "when the mark is applied on the applicant's instruction," including where "the applicant contracts with another party to have goods produced for the applicant." You pick the recipe, approve the quality and sell under the name. That's ownership.

Two things protect it. First, the application has to be filed by the owner. The manual is blunt: "If the applicant does not own the mark on the application filing date, the application is void," and "this defect cannot be cured by amendment or assignment." So the applicant is your company, not you personally if the company sells the product, and never the co-packer. Second, the co-packing agreement should say in plain words that you own the brand and the artwork and that the co-packer can't sell product under your name to anyone else. The manufacturing article goes deeper on the ownership clauses.

Your new label is your specimen, so get it right before printing

The co-packer run usually comes with a new label: a barcode, a nutrition panel, a net weight, a commercial look. That label is also the specimen you'll file to prove use. The statute counts a mark as used on goods when it's "placed in any manner on the goods or their containers or the displays associated therewith, or on the tags or labels affixed thereto," and the goods "are sold or transported in commerce."

It has to be real. The USPTO manual says "labels or tags that appear to be a mockup, illustration, or other rendering are unacceptable." The designer's proof won't do. A photo of the printed label on the finished jar will, and the manual notes that a label showing the ordinary retail information, like net weight, a UPC code or an ingredient list, reads as a real label even when it isn't photographed on the goods.

So before the label order goes to print, check that the name on it matches what you filed. If you filed the words, any styling works. If you filed a logo and the new label redesigns it, that's a mismatch to fix now, not after ten thousand labels arrive.

Cottage food rules and trademark rules are different checklists

If you've been selling under a cottage food law, moving to a co-packer usually means leaving that framework, and the co-packer carries the food safety compliance for the facility. None of that touches the name. A compliant label can still carry a name someone else owns, and a registered name doesn't make a label compliant. The bakeries and cottage food article covers the food side of the name question, and the food and beverage page covers how I work with food brands.

The order of operations

Search the name against the whole shelf, not just your product. Put the ownership language in the co-packer agreement. File in your company's name, on actual use for what you sell today and intent-to-use for the new lines. Lock the new label to the mark you filed. Then sign the minimum order. When the run ships, file the Statement of Use for the new lines with a photo of the real product.

Seed is a $650 clearance search with a written opinion. Grove is $2,600: the search, the opinion and the federal application, with procedural Office Actions included. USPTO fees are separate, $350 per class.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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