BRATTLEBORO -- A trademark infringement lawsuit filed by a company that specializes in gluten-free products was settled amicably and out of court.

"They are changing their name and that's what we wanted," said Tom Cain, who, with his wife, Nancy, founded Against The Grain Gourmet Foods in Brattleboro's Book Press in 2006. "Against The Grain belongs to us."

In October 2013, Against The Grain filed a lawsuit against Against all Grain, alleging the use of the name "is likely to cause confusion, cause mistake or to deceive and therefore constitutes infringement ..."

In court filings, Downs Rachlin Martin, which represents the Cains, contended Danielle Walker and her California company, Against all Grain, had infringed on the Cains' trademark, which was issued in 2008. Walker has a popular blog where she posts gluten-free recipes and is the author "Against all Grain," a cookbook of "paleo" recipes.

"They are changing the name on her blog to Danielle Walker's Against all Grain," said Peter Kunin, a deputy managing partner of Downs Rachlin Martin. "They also agreed going forward not to use Against all Grain as a trademark on food products and to withdraw their federal trademark application for Against all Grain."

Kunin said he and the Cains were grateful they were able to resolve the dispute in a cordial fashion.

"We're very pleased that we were able to work constructively with Ms. Walker and her company to achieve an out-of-court settlement," said Kunin.


Advertisement

Against The Grain started from an idea the Cains had in 2005 in response to their family's needs for gluten-free foods.

"Would we have imagined what this would become and where we are likely going? Not in a million years," said Tom Cain. "We never intended to build an empire out of this."

In late 2006, Against The Grain shipped its first gluten-free breads and it's been non-stop growth ever since.

"We did a five-year projection when we started and blew past that in pretty short order," said Cain, adding after he and his younger son were diagnosed with celiac disease he realized how hard it was to obtain good-tasting and healthy gluten-free baked goods.

"It wasn't hard for us to imagine people wanted something like this," he said.

When they filed for a trademark, Cain said he was surprised no one already had the rights to Against The Grain for baked goods.

"It's a common phrase that's used all over the place," he said.

The Cains moved to Vermont after 11 years on Wall Street and, with the help of the Brattleboro Development Credit Corporation, realized their dream of starting their own company. But along with the idealistic vision that spawned Against The Grain came the realization that they had to protect their brand.

Cain, who characterized himself as "conflict aversive," said he and Nancy don't like having to threaten people with lawsuits over trademark infringement.

"But you can't let people degrade the value of the brand," he said.

"Unfortunately, there are disputes like this that arise," said Kunin. "We try to work in a collaborative manner with the infringer to resolve it in a friendly way. Most often we are able to do so and avoid the high cost of litigation."

The Cains became aware of Against all Grain after they received inquiries from people wanting to know about the cookbook.

"Those folks believed Danielle Walker's cookbook was produced by Against The Grain in Brattleboro," said Kunin. "That level of confusion can be very damaging to a company's brand."

He said any trademark or brand name is a vital asset for a consumer products company.

"When you look back at the history of Against The Grain, they've been working for more than eight years and working exceptionally hard and created some outstanding products," said Kunin. "What they've done is build a reputation for quality products and that reputation is symbolized by their trademark."

The Cains were extremely thoughtful in filing their trademark application, he said, which served them well in this case.

"The power of their registered trademark is what enabled them to achieve this out-of-court settlement."

Kunin recommended that anyone starting a company in Vermont do their homework, just as the Cains did.

"Do the legal research and analysis and make sure the name, before you roll it out, is available to be used and registered," he said. "The last thing you want is to receive a cease-and-desist letter ordering you to change the name."

But along with growing the company, a business also has to monitor what other people are doing, said Kunin.

"If someone is copying your trademark in a related business you can't sit back on your hands and wait. You've got to take action and get them to stop."

Against The Grain is a "suggestive" trademark, explained Kunin, rather than a "descriptive" trademark, for which it is almost impossible to receive legal protection.

As an example, he said, Die Hard and Chicken of the Sea are two very successful suggestive trademarks that don't say what the product actually is.

He said if Against The Grain had attempted to trademark, say, "Best Gluten Free Bakery," they would not have received legal protection, because it's descriptive rather than suggestive, and it's not fair to other gluten-free bakers.

"Trademark law is a really complex part of doing business," said Tom Cain, and it's not what he and his wife want to focus on, which is continuing to grow their company, right here in Brattleboro.

"We don't want to be anywhere else," he said. However, there might come a time when they will have to find a bigger space than what the Book Press offers, he added.

"The building has met our needs and BDCC has accommodated us well. But we just doubled our footprint in the last six months. We're now the biggest tenant."

Against The Grain now employs 50 people, including bakers, in the warehouse, in inventory control, and in the front office.

"This could not have happened anywhere else," said Cain. "We weren't rubes to business, but we were rubes to manufacturing. The key to making this work was the location and BDCC."

According to its website, the Brattleboro Development Credit Corporation "is a private, non-profit economic development organization dedicated to creating and retaining a flourishing business community ..."

BDCC offers business mentoring, which includes guidance in applying for grants and revolving loan funds and assistance with employee training. It operates both the Book Press and the Cotton Mill buildings and was officially incorporated in 1954.

Bob Audette can be reached at raudette@reformer.com, or at 802-254-2311, ext. 160. Follow Bob on Twitter @audette.reformer.